By Jim Shrine
Special To BioWorld Today
Aurora Biosciences Corp. and Acacia Biosciences Inc. settled their intellectual property dispute, leaving each firm with access to additional genomics tools, and their respective partners with greater freedom to operate.
The dispute was part of a larger picture, said Bruce Cohen, president and CEO of Richmond, Calif.-based Acacia.
"We think there is an issue facing our industry, which has to do with the confusion on the part of our collaborators on rights to various intellectual property," he said.
John Mendlein, general counsel and vice president of intellectual property for San Diego-based Aurora, said the area has become "very textured and complicated."
Aurora withdrew its patent infringement lawsuit against Acacia, which agreed not to challenge certain Aurora patents. Under the terms of the settlement, a cross-licensing deal provides Acacia with licenses to certain Aurora fluorescent protein technology and Aurora with access to parts of Acacia's Genome Reporter Matrix (GRM) technology.
Often, a pharmaceutical company dealing in genomics will have to get a series of licenses. Aurora's licensing and cross-licensing arrangements provide a sort of "one-stop shopping" situation for collaborators, decreasing their costs and their exposure to possible patent trouble down the road, Mendlein said.
Robert Olan, an analyst who covers Aurora in the New York offices of Hambrecht & Quist LLC, said everyone benefits from such amicable settlements: genomics companies, their collaborators and investors.
"I'm not sure who would have won out if we had to handicap the eventual outcome of a lawsuit," Olan said, "but this makes it a whole lot easier for everyone involved."
The Aurora patents in question were Nos. 5,625,048 and 5,777,079, which pertain to yeast and prokaryotes and include a certain mutant green fluorescent protein (GFP), having a single mutation of serine for threonine at position 65. It was licensed from the University of California at San Diego. Acacia's patents, Nos. 5,569,588 and 5,777,888 — licensed from University of California at Berkeley — pertain to profiling in mammalian cells using the GRM technology.
The GRM technology includes three elements. One is a micro-array that measures gene expression. The second is a database of expression profiles. The third involves software tools that help in the comparison of profiles and discovery of new genes and targets.
Drug-discovery applications of Aurora's GFP technology include functional genomics, screening assays and gene profiling. GFP mutants are widely used as research tools. The issued patents are directed toward nucleic acids encoding fluorescent proteins, the proteins themselves and related fusion proteins.
In addition to the new arrangement with Acacia, Aurora has licenses to certain gene transcription assay patents from Sibia Neurosciences Inc., of La Jolla, Calif., and OSI Pharmaceuticals Inc., of Uniondale, N.Y., and to certain gene expression methods from Xenometrix Inc., of Boulder, Colo.
Timothy Rink, Aurora's chairman, president and CEO, said the firm has a policy of acquiring licenses to key technologies and avoiding "serious risk of to having infringed patented technology in the process of building a major product." *