National Institutes of Health Intervenes to End Patent Infringement Suit Against The Jackson Laboratory Concerning Mouse Models for Alzheimer’s Research
August 16, 2011By: Michael N. Rader and Chelsea A. Loughran
Intellectual property law firm Wolf, Greenfield & Sacks, P.C. announced today that its client The Jackson Laboratory, the largest repository of research mice in the world, has been dismissed from a patent infringement lawsuit concerning transgenic mice used for research on Alzheimer’s disease.
The dismissal follows a rare, direct intervention by the federal government to end a pending patent infringement lawsuit. The National Institutes of Health (NIH) granted Jackson retroactive “authorization and consent” to distribute the mouse models accused of infringement. By statute, activities that are authorized in this fashion can be targeted for patent infringement only by suing the government in the United States Court of Federal Claims.
The lawsuit, filed by Alzheimer’s Institute of America (AIA) alleged that, by distributing the mice in question, Jackson infringed AIA’s patent covering a DNA mutation linked to Alzheimer’s disease. Jackson's distribution of the mice has been funded by the NIH since 2003.
On June 17, 2011 Dr. Francis Collins, Director of the NIH, issued a letter granting Jackson “the permission … of the United States Government to use any inventions covered by United States patents” when making mice available for research on Alzheimer’s disease.
That letter ultimately led to dismissal of the case last week. On August 12, 2011 Dr. Collins released a statement explaining that the NIH acted not only to support Jackson, but to effectuate the NIH’s broader policy on access to research tools: “This is great news not only for those involved in Alzheimer’s disease research, but for the entire biomedical research community.” The statement continued, “At NIH, we believe that science advances most rapidly when new technologies and research tools resulting from federal funding are made available to others.”
AIA’s litigations against other parties, including University of Pennsylvania and several pharmaceutical companies, remain pending.
Jackson’s lead counsel, Michael Rader, co-chair of Wolf Greenfield’s litigation group, noted: “Jackson never wavered from its dedication to overcome this threat, fighting for its right to distribute these critical mouse models. We are proud to have helped Jackson resolve the case on favorable terms.”
Last week Jackson also finalized a settlement of another patent infringement suit filed by a Japanese research institute called The Central Institute for Experimental Animals (CIEA). That case, filed in December 2009, related to transgenic immunocompromised mice designed to accept transplanted human cells for research purposes.
Jackson secured a favorable interpretation of CIEA’s patent scope, including resolution by the court of novel questions concerning the role of mouse nomenclature in patent claims. The court then granted Jackson summary judgment of no infringement, which ultimately led to the settlement.
House Counsel for Jackson, David Einhorn, stated, “The Jackson Laboratory is an international resource for researchers seeking to cure human disease. We have only been involved in two patent infringement lawsuits and are pleased that both ended favorably not only for Jackson but for the global biomedical research community.”
Jackson is represented in both suits by Wolf Greenfield litigators Michael Rader and Chelsea Loughran.
