Dispute Details

Primary Issue(s) Encountered

Emory University professors Dr. Dennis Liotta and post-doctorate researcher Woo-Baeg Choi developed the break-through HIV/AIDS treatment 3TC. Although not credited on the 3TC patents (466 & 166), Dr. Raymond Shinazi was actually the one who conceived the idea to synthesize BCH-189. Shinazi later became a hands-on collaborator with the development of FTC. These breakthrough discoveries, made in the early 1990s, are used by approximately 80% of all HIV/AIDS patients who are receiving treatment. Emory University, on their behalf, applied for and received patents for 3TC and FTC.

Both FTC and 3TC went through legal skirmishes to preserve the Emory inventors' rights in their work with Emory University supporting their researchers by financing millions of dollars of legal support required.

3TC Controversy

Both BioChem Pharmaceuticals and Emory University developed very similar technology, lamivudine, also known as 3TC, which was an improved synthesis of the BHC-189 compound. BioChem had won the international patent race for 3TC, based on being first to file, which is the determiner for international intellectual property ownership. In the U.S. however, based on first to invent rules, Emory was the rightful owner of domestic patent rights to 3TC. BioChem had licensed their international patents for 3TC to British drugmaker, Glaxo who then attempted to invalidate Emory's U.S. patent rights.

Importantly, during the litigation process, Emory did not seek an injunction to stop sales of the life-prolonging drug, not wanting to impact any HIV/AIDS sufferers while they pursued protection of the rights of their inventors.

FTC Controversy

FTC is actually a fluorinated version of 3TC and is less expensive to produce than other HIV/AIDS therapies.

FTC was another result of the improvement process of the BHC-189 compound and had initially been licensed to Burroughs Wellcome and Triangle Pharmaceuticals, a company founded by one of the inventors of FTC, both of whom commenced clinical trials of the drug. Shire Pharmaceuticals also later licensed FTC from Emory after it lost a patent dispute with the University.

Burroughs Wellcome was still in the clinical trial phase of FTC when the company was acquired by Glaxo. As part of the merger, Glaxo returned the license of FTC back to Emory, in favor of their pursuit of 3TC. During the trial period, prior to the merger, Burroughs Wellcome had filed patents to treat the Hepatitis B virus with FTC. Part of Glaxo's purpose in the merger was to acquire Wellcome's patent portfolio.

Emory had prior filed in the U.S. for the Hepatitis B treatment and filed suit against Glaxo, on the basis that Wellcome had misappropriated Emory's inventors' property and that the intellectual property that Burroughs Wellcome had used for their patent was not their own. Glaxo also was refusing to return to Emory the clinical trial data for studies conducted under the Wellcome license to FTC.