Vanderbilt tells Chancery Court its partner has expired

Cancer treatment and Vanderbilt royalties are at stake, as university tries to regain control of marketable technology

Email | Print By Milt Capps

VU's Chris McKinney

UPDATED 2:15 P.M. Aug. 8 - See correction and clarification regarding DiaTech technology, midway through this story.

As originally reported:

Vanderbilt University is suing a technology-transfer partner in Chancery Court for not performing under their decade-old agreement.

Maryland-based entrepreneur Dave Hankins told NashvillePost.com yesterday he was not aware that Vanderbilt has asked Chancellor Richard Dinkins to declare that Hankins' company no longer has rights to use a cancer-fighting tool developed on the VU campus.

The invention at the heart of the dispute helps physicians personalize chemotherapies to take advantage of patients' drug sensitivities, in order to trigger death among cancer cells.

Vanderbilt insists Hankins has failed to deliver on promises made in a 1998 commercialization agreement, and asks the court to affirm that New Hope's rights to the breakthrough technology have reverted to the university.

Vanderbilt paints a picture of New Hope as hapless, if not hopeless.

In its July 26 request for declaratory judgment, Vanderbilt argues that Hankins' Bethesda-based New Hope Pharmaceuticals failed to bring the technology to market in the United States; failed to produce revenue and pay royalties to Vanderbilt; and, has failed to document and report its progress in commercializing the technology.

Hankins declined to comment on the case yesterday, citing his need to review the lawsuit with legal counsel. He acknowledged that, as Vanderbilt explained in court papers, the dispute has festered a long time.

At the center of all this is the "Automated Assay for Measuring Apoptosis in Cell Culture," which was developed by former Vanderbilt researcher Vladimir D. Kravtsov and others. Reached Friday in Nashville, Kravtsov declined comment on the ligitation.

Meanwhile, another Vanderbilt license-holder — Brentwood-based DiaTech Oncology — may be ready to step-in, if Hankins loses his grip on his VU deal.

In fact, DiaTech is already using the invention in Canada, having obtained a non-U.S. license from Vanderbilt. [Correction and clarification: Following publication, a Vanderbilt spokesperson advised that Vanderbilt has only issued a license to New Hope. DiaTech subsequently explained that Dr. Kravtsov, himself, has, as the inventor, "given DiaTech the license to use his invention internationally," i.e., outside the U.S.]

DiaTech CEO Garry Latimer told NashvillePost.com that his Canadian testing operations are thriving on the campus of Montreal's McGill University. Still, he said, his firm would welcome a chance to talk with Vanderbilt about the U.S. license, if it becomes available.

Latimer said his firm is already working with Vanderbilt Medical Center, Baptist Hospital and medical groups in Miami, North Carolina, Oregon and Atlanta on a variety of clinical trials. Testing for the trials is performed only at the company's Montreal facility.

Yesterday, Vanderbilt Technology Transfer and Enterprise Development Director Chris McKinney would not comment on Vanderbilt's relationship with DiaTech or other potential U.S. licensees, until after the New Hope matter is resolved.

In an earlier interview, McKinney was equally cautious, explaining, "I can say that it's Vanderbilt's goal that this technology be put into effective commercial use to help people" who have cancer.

Note: In 1998, Hankins' New Hope Pharmaceuticals was known as Oncohelp LLC. In December 2006, the name of the business was again changed, to NHP, Inc.