University of Utah - RNAi Case

Hagens Berman represents the University of Utah in a lawsuit alleging that Dr. Brenda Bass, a University of Utah researcher, discovered the central features of a set of patents that offer the hope for curing many diseases, but was not given credit for the discovery. The suit seeks to correct inventorship under 35 U.S.C. § 256 of U.S. Patents 7,078,196 (the “196” patent) and 7,056,704 (the “704 patent”) and seeks damages and other equitable relief under state law.

The patents are currently assigned to Defendants University of Massachusetts, the Whitehead Institute for Biomedical Research, Massachusetts Institute of Technology (MIT) and the Max Planck Society, a German pharmaceutical and research organization. The technology is licensed to defendant Alnylam Pharmaceuticals Inc.

The patents relate to the creation and use of short strands of double-stranded RNA molecules (dsRNA) to create RNA interference (RNAi), a process that may be used to prevent the development of proteins that cause certain diseases. This process has become more commonly known as “gene silencing.”

According to the Complaint, Dr. Bass was the first to identify and describe the key enzyme in the RNAi process, known as Dicer II. She also was the first to note that Dicer would leave structures at the end of the dsRNA molecules having staggered 3-prime overhangs of 2 nucleotides, crucial features that made development of the technology possible.

The complaint also alleges that through multiple interactions with Dr. Bass, the Defendants became aware of Dr. Bass’s discoveries on Dicer and claimed her inventions in their patent applications, without naming Dr. Bass as an inventor.

The case requests that Dr. Bass be named the sole or joint inventor on the patents, and asks the court to award damages for profits from the ‘704 and ‘196 patents allegedly illegally withheld from Dr. Bass.

Defendants filed motions to dismiss in November 2011. The case was filed under Civil Action No. 1:11-cv-10484 (D. Mass. 2011).