Jury Finds Insmed Infringed
Patents Owned By Genentech And Exclusively Licensed to Tercica
December 6, 2006
Tercica, Inc. (Nasdaq:TRCA)
today announced that a jury in the US District Court for the
Northern District of California found that Insmed Incorporated
and Insmed Therapeutic Proteins, Inc. have infringed Genentech's
US Patent No. 5,258,287; willfully infringed US Patent No. 5,187,151;
and upheld the validity of Genentech's US Patent No. 6,331,414
(the '414 Patent). Tercica exclusively licensed these patents
in April 2002 for use in its manufacture and sale of, among other
things, Increlex(TM). Prior to the trial, the Court had ruled
that Insmed's process for making the IGF-1 in IPLEX(TM) literally
infringes three claims of the '414 Patent, and Insmed had stipulated
that it infringes on three additional claims.
Today's jury verdict
orders Insmed to pay $7.5 million and 15% royalties for damages
pertaining to IPLEX(TM) past sales of up
to $100 million, and 20% royalties for IPLEX(TM) past sales
greater than $100 million. If Insmed appeals the jury verdict,
these
damages would not be paid to Tercica until Insmed's last appeal
is decided upon by the Court of Appeals for the Federal Circuit,
but could be augmented by post-judgment interest charges. Because
Tercica was the lead plaintiff in the litigation, it will recover
a substantial portion of the damages paid by Insmed.
Stephen
N. Rosenfield, Tercica's Executive Vice President of Legal
Affairs
and General Counsel, stated, "We are pleased
with the jury's findings in this first phase of determining validity,
infringement and damages. After the court has ruled on the customary
post-trial motions, the next step will be for the Court to rule
on our requests for both an injunction against future sales of
IPLEX(TM) by Insmed and for additional damages remedies to Tercica
and Genentech."
About Tercica
Tercica is a biopharmaceutical
company committed to improving endocrine health by partnering
with the endocrine community to
develop and commercialize new therapeutics for short stature
and other metabolic disorders. For further information on Tercica,
please visit www.tercica.com.
Safe
Harbor Statement
Except for the historical statements contained
herein, this press release contains forward-looking statements
concerning
prospects and results, including statements that relate to: (1)
Insmed appealing the jury verdict; and, (2) the Court's ruling
on Tercica's request for an injunction against continuing sales
of IPLEX(TM) by Insmed and, potentially, future damages remedies
to Tercica and Genentech. Because Tercica's forward-looking statements
are subject to risks and uncertainties, there are important factors
that could cause actual results to differ materially from those
in the forward-looking statements. These factors include, without
limitation, that: (i) the Court could set aside the jury verdict
and not award Tercica any damages; (ii) the Court could reduce
the damages awarded by the jury and reduce the damages to be
awarded by the court; (iii) Insmed could appeal and, if successful,
Tercica may ultimately receive no award of damages or a reduced
award; (iv) the Court may not grant Tercica's request for an
injunction or for future damages remedies; and (v) the risks
and uncertainties disclosed from time to time in reports filed
by Tercica with the SEC, including most recently Tercica's Form
10-Q for the quarter ended September 30, 2006 filed with the
SEC on November 3, 2006.