Orrick reached a favorable settlement for its client Tekmira Pharmaceuticals Corp. against Tekmira’s former collaborator Alnylam Pharmaceuticals, Inc. that resolves all litigation between the companies, including a trade secret and contract action in Massachusetts state court, U.S. and Canadian patent infringement actions, and a U.S. Patent and Trademark Office interference proceeding. The parties signed a new licensing agreement that restructures the relationship and provides clarity on all intellectual property and licensing issues between the companies.
As a result of the restructuring and new agreements, Tekmira received $65 million cash, and is eligible to receive $10 million in near-term milestone payments expected to be received in 2013. Alnylam will also transfer all agreed-upon patents and patent applications related to LNP technology for the systemic delivery of RNAi therapeutic products to Tekmira, who will own and control prosecution of this intellectual property portfolio. Tekmira is the only company able to sublicense LNP intellectual property in future platform-type relationships.
A Daily Journal article reporting on the case is available here
Alnylam was represented by William Lee, Robert Cultice and John Butts of WilmerHale.
The Orrick team was led by Silicon Valley intellectual property partner Elizabeth Howard, and included Silicon Valley intellectual property partners Michael Spillner and Vickie Feeman; New York litigation partner Morton Dubin; Silicon Valley intellectual property senior associates Diana Rutowski and Sid Venkatesan; Silicon Valley intellectual property managing associates Jesse Cheng, Misasha Suzuki and Scott Lonardo; San Francisco intellectual property managing associates Bryce Baker and Derek Knerr; Silicon Valley intellectual property associates Sally Lee, Cam Phan and Sonia Valdez; and Silicon Valley law clerk Sophie Yu.