Fraser participation in Legal Suits up to 2015
[table th=”0″] 2015 – current[attr style=”width:100px”], Retained by Irell & Manella LLP as an expert in academic technology licensing for the Defendant in the case of Max-Planck\, Alnylam Pharmaceuticals\, Whitehead Institute\, MIT\, University of Massachusetts (Defendants) in the US District Court for the District of Massachusetts vs University of Idaho (Plaintiffs). After case ‘C’ was settled out of court\, the University of Utah sued the group claiming that one of its faculty members had been the sole inventor of the subject patents (or was at least a joint inventor). I wrote a Rebuttal Report and the case is awaiting further action in May 2015.
2011 – 2012, Retained by Keker & VanNast LLP as an expert in academic technology transfer for the Plantiff in the case of Genentech\, Inc. v. The Trustees of the University of Pennsylvania. I wrote an Expert Report. Subject Matter – UPenn technology claimed to be relevant to/infringing on a new indication of the Genentech drug Herceptin and its underlying Patents. Case settled prior to start of trial. Subject Matter – pharmaceutical drug\, life sciences.
2009 – 2010, Retained by Irell & Manella LLP as an expert in academic technology licensing for the Plaintiff in the case of Max-Planck\, Alnylam Pharmaceuticals (Plaintiff ) vs. Whitehead Institute\, MIT\, University of Massachusetts (Defendants) in the US District Court for the District of Massachusetts. I wrote an Expert Report\, a Rebuttal Report and was deposed in Boston. The case settled just before the trial date. A Nobel Prize was awarded to others who discovered the effect. The collective inventors together worked out the active molecules. One of the inventors moved back to Germany and while at Max Planck discovered and patented how to optimize the impact of the active molecules. Time was spent dissecting the scientific work at each step and who contributed. Very\, very exciting science. Subject matter – RNA-interference. Life Sciences.
2003 – 2004, A FSU Patent Licensee Trizen Inc. based in Florida\, sued SOFTWARE AG\, a large German software company. In the counter suit alleging patent invalidity\, the presiding judge ordered FSU to take standing as the Party in the suit. As Director of the OTL of FSU\, I was deposed for a full day. The case was settled out of court by granting a non-exclusive license to Software AG\, with costs reimbursed for both Trizen and FSU. Subject Matter – software.
2001, Interested Observer. United States District Court for the Northern District of Florida in an inventorship action brought by Plantiffs – the Board of Education (for and on behalf of the Board of Trustees of Florida State University)\, MDS Research\, Inc.\, and Taxolog\, Inc. (collectively\, “FSU”) vs. Defendant – American BioScience Inc (ABI). A case of Patent Inventorship and accusation of theft. Plaintiffs won. Appeal by ABI successful in United States Court of Appeals. Federal Circuit. 333F.3d 1330 (Fed. Cir. 2003). Subject Matter – Taxol analog created by former FSU employee hired by ABI.
1994, Served as an expert witness for Defendant – the owner of an issued patent covering an oil field drilling technology. The owner held the Patent personally. This asset was subject to distribution of assets in a divorce proceeding between the owner and his wife. I submitted an Expert Report providing a valuation of the patent which had not yet been commercialized. Civil Court in Saskatchewan Canada. Case settled before trial. Subject Matter – Mechanical device.