GSK settles HIV drug licensing dispute
GSK subsidiary and Exavir Therapeutics end dispute over licensing rights for HIV-drug compounds | Resolution follows allegations that Exavir's actions disrupted ViiV Healthcare's research collaboration with a US university.
GSK subsidiary ViiV Healthcare and Exavir Therapeutics have settled their dispute over licensing rights for HIV drug compounds, bringing an end to a conflict that has been ongoing since October 2022.
The litigation between the two pharmaceutical companies arose from allegations that Exavir's patent licensing agreement with the University of Nebraska disrupted ViiV Healthcare's research collaboration with the university.
The case had been paused since January 2024 when the parties entered into settlement talks.
Case background
ViiV Healthcare filed a lawsuit against Exavir in October 2022, alleging “tortious interference” with a contract and unjust enrichment.
ViiV claimed that Exavir's actions, including obtaining an exclusive licence to certain patents, directly contradicted the ownership rights granted solely to ViiV in a research collaboration agreement with the University of Nebraska.
The British pharma company alleged that Exavir's actions led to the university breaching the terms of the agreement by improperly claiming ownership of the patents and granting Exavir an exclusive licence.
As a result, Exavir allegedly gained an improper benefit at ViiV's expense.
ViiV Healthcare has been engaged in more than 50 active collaborations worldwide with various pharmaceutical and biotechnology companies, government agencies, academic institutions, and not-for-profit organisations.
One of its collaborations was with the university of Nebraska, where ViiV provided certain compounds for the development of long-acting antiretroviral therapies, resulting in the creation of three patents—US patent numbers 11,117,904; 11,166,957; and 11,154,557.
“Improper” transfer of rights
Back in March 2013, ViiV Healthcare entered into an agreement with the University of Nebraska for a sponsored research program called ‘Cell-targeted long-acting nanoformulated antiretroviral therapy’.
According to the terms of the research collaboration agreement, all ‘compound inventions’ were to be owned solely by ViiV.
Each of the patents included at least one claim directed solely to a ‘compound invention’, making each patent the sole property of ViiV.
The complaint claimed that after the agreement between ViiV and the university ended in March 2017, the university improperly transferred the licensing rights for the patents to Exavir.
Additionally, Exavir falsely claimed ownership of these patents, according to the suit.
The university allegedly breached ViiV's rights by improperly claiming ownership of three patents and in 2021 informed ViiV that it had decided to license the patents to its start-up, Exavir.
ViiV Healthcare and Exavir Therapeutics requested the court to stay the case—this settlement was confirmed on April 23, 2024.
Judge Paul Fioravanti approved the proposed settlement and dismissed the case in an order issued in Delaware’s Court of Chancery.
ViiV Healthcare was represented by Patricia Enerio, Gillian Andrews and Brendan Patrick McDonnell from Heyman Enerio Gattuso & Hirzel, Joseph Reisman, Alistair McIntyre and William Zimmerman from Knobbe Martens, and Patrick Brookhouser, Mark Enenbach and Matthew Munro from McGrath North Mullin & Kratz.
Exavir Therapeutics was represented by Heather Burke, Kristen O'Shaughnessy and Kevin Adam from White & Case, and Susan Waesco and Rachel Tunney from Morris Nichols Arsht & Tunnell.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox
