Eli Lilly And Company v. Emisphere Technologies, Inc.

408 F. Supp. 2d 668 (S.D. Ind. 2006)

Purchase the Printed Copy at bsmsphd.com

Nature of the Case

To access this section all you need to do is click here and register.

Facts

P and D agreed to collaborate in research on new chemical 'carrier' compounds. The relationship required them to share valuable information. The relationship required them to share valuable information. Research collaboration began and was sufficiently promising that P paid D $4 million in April 1998 to exercise an exclusive license to use D patents along with know-how. The rights for all the technology was to remain solely in D's hands. After receiving promising results from its secret research on D carriers, P began negotiating with D in January 2002 for a license to commercialize products containing D's carriers and GLP. The negotiations over a license for GLP eventually broke down in the late summer or fall of 2002 over intellectual property issues. Overall the relationship has broken down in a dispute over whether P breached the relevant contracts by pursuing its own secret research projects with D's proprietary carriers. On September 4, 2003, an international patent application by P was published for a carrier compound for the delivery of a particular glucagon-like peptide (GLP) known as 'GLP-1.' D notified P that it believed P had breached contract provisions restricting P's use of D's technology and giving D ownership of patent rights to P inventions derived from D's technology. P filed for a declaratory judgment. D notified P in August 2004 that it was terminating the relevant contracts. D's counterclaim for breach of contract was tried to the court in January and February 2005 to determine whether D is entitled to terminate the agreements and is free to pursue collaboration with another major pharmaceutical company. D contends that P breached the agreement from 2001 by carrying out secret, independent research projects on using D's carriers with proteins other than PTH. P contends that it might be liable for a breach of patent claim but that D had no right to terminate their agreements.