As reported in the Chicago Tribune by Christopher Yasiejko, the University of Wisconsin’s patent-licensing arm must pay Washington University in St. Louis, its former partner in medical research, $31.6 million for breaching a royalties contract related to the sale of an AbbVie kidney-disease drug.
The judgment, issued Monday alongside a sealed opinion in federal court in Wilmington, Delaware, marks the culmination of a rare legal fight involving two universities that had formed a patent-licensing deal with a corporation.
The dispute has its roots in the early 1990s, when researchers at Washington University and Wisconsin began collaborating on treatments of conditions associated with kidney disease. The scientists applied for a patent connected to one such treatment in 1995, and the schools signed an agreement allowing the Wisconsin Alumni Research Foundation, which handles licensing for the university, to take the lead in obtaining the patent and licensing it in return for a larger share of any royalties.
WARF licensed the patent to Abbott Laboratories in 1998 for use in connection with the drug Zemplar. AbbVie, based in North Chicago, was spun off from Abbott in 2013. Washington University claimed WARF breached their deal by undervaluing the patent, and that it was misled by WARF because it couldn’t accurately value the patent on its own.
Source: Chicago Tribune