Regents of the University of Minnesota have filed an enforcement action against Gilead Sciences Inc., alleging direct and indirect infringement of a patent related to the drug sofosbuvir, a treatment for hepatitis C virus, under the brand names Sovaldi, Harvioni and Epclusa.
The action filed in U.S. District Court in Minneapolis alleges Gilead’s sale of medicines containing sofosbuvir infringe U.S. Patent Number 8,815,830, entitled “Nucleosides with Antiviral and Anticancer Activity.”
The university’s enforcement action against Gilead comes as other universities have filed enforcement actions and a few have won huge awards for patent infringement. In June, Cambridge, Massachusetts-based Harvard University filed an enforcement action against GlobalFoundries and Micron. That action came after Apple Inc.’s (APPL) decision to pay $24.9 million to settle an enforcement action brought by Marathon Patent Group Inc. (MARA) and its partner Rensselaer Polytechnic Institute over patents related to the Siri personal assistant feature on smartphones.
Apple’s decision to settle with Marathon and RPI came after the computer giant was hit with a $234 million award in an infringement action brought by the Wisconsin Alumni Research Foundation. Earlier this year, Marvell Technology Group agreed to pay Carnegie Mellon University $750 million to settle their dispute.
Officials for the university and for Foster City, California-based Gilead couldn’t be reached immediately for comment.
The ‘830 patent is directed to antiviral compounds and methods for using those compounds to treat viral infections, such as that caused by hepatitis C virus. It was invented by Dr. Carston R. Wagner.
D. Wagner has been a professor of medicinal chemistry in the College of Pharmacy since 1991. Since 2010, he has been the Endowed Chair in Medicinal Chemistry in the University’s College of Pharmacy.
He is a leader in the field of antiviral therapies, and he is a nationally and internationally recognized expert in phosphoramidate chemistry.
According to the complaint, sofosbuvir is one of the compounds included in the genus of compounds invented by Professor Wagner and claimed in the ’830 patent. The compound incorporates important and valuable technical innovations that Dr. Wagner and the University patented in the ’830 patent.
“Gilead has reaped tens of billions of dollars in sales of medicines containing sofosbuvir, including Sovaldi, Harvoni, and Epclusa, without the University’s authorization and without compensating the University.”
The university alleges that it provided notice of infringement to Gilead Sciences in June 2015 and that the company has continued to infringe the ‘830 patent.
“In August 2015, the University met in person with Gilead to discuss Gilead’s infringement of the ’830 patent,” the complaint said. “Notwithstanding its knowledge of the ’830 patent, Gilead has continued its infringing conduct. Gilead’s infringement of the ’830 patent was and remains willful and deliberate.”
The university is seeking an award of damages adequate to compensate it for Gilead’s infringement, “in no event less than a reasonable royalty, such damages to be determined by a jury, and additionally an accounting sufficient to adequately compensate the University, and that such damages be awarded the University, together with interest, including prejudgment and post judgment interest, and costs.
The university also is seeking a judgement that Gilead has willfully and deliberately infringed the ‘830 patent and that consequently the university is entitled to treble damages.
Finally, the university wants the case to be deemed an exceptional case and an award of reasonable legal fees, costs, and expenses that the University incurs in prosecuting this action.
—To reach the reporter responsible for this story please contact Dan Lonkevich at 707 318-7899 or at email@example.com