WARF vindicated by court’s denial of company’s appeal

The Court of Appeals for the Seventh Circuit on Jan. 5 affirmed the 2006 decision of U.S. District Court Judge Barbara Crabb’s award to the Wisconsin Alumni Research Foundation (WARF) for licensing fees from Xenon Pharmaceuticals, a Canadian biotechnology company.

The court denied Xenon’s appeal and held that it had breached its exclusive license agreement with WARF by failing to pay its share of fees collected by licensing technology developed at the University of Wisconsin–Madison.

As the private, nonprofit patenting and licensing organization for UW–Madison, WARF protects the interests of its inventors and the university, and benefits the public by moving important discoveries from the university laboratory to the marketplace. In this case, UW–Madison researchers Alan Attie, Mark Keller, Makato Miyazaki and James Ntambi discovered an assay and promising compounds related to the control of cholesterol, obesity and diabetes.

The court further granted WARF’s appeal for a declaration of its ownership interest in additional therapeutic compounds Xenon claims it was assigned by one of the inventors. In a clean sweep of the appellate issues, the court also reversed the U.S. District Court’s decision that WARF could not terminate its license agreement, which was executed in 2001, with Xenon.

“We are extremely pleased with this ruling. WARF now stands free and clear to move the technology forward commercially and intends to do so,” says Michael Falk, general counsel for WARF. “The case confirms that our agreements properly protect the intellectual property developed at the University of Wisconsin–Madison and that WARF will take the appropriate steps to protect those rights.”

WARF is represented in this case by Madison-based attorneys Tony Tomaselli and Kristin Graham Noel, among others, of Quarles & Brady LLP. Additional information on this case is available at http://warf.org/news/news.jsp?news_id=199.