Case 1:17-cv-00050-UNA Document 1 Filed 01/13/17 Page 1 of 27 PageID #: 1

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE
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SUNESIS PHARMACEUTICALS, INC.,

Plaintiff,
v.
BIOGEN MA INC.,
Defendant.

C.A. No.
JURY TRIAL DEMANDED

COMPLAINT FOR DECLARATORY JUDGMENT, BREACH OF CONTRACT, AND

MISAPPROPRIATION OF TRADE SECRETS UNDER THE DELAWARE UNIFORM
TRADE SECRETS ACT
NATURE OF THE ACTION
1.

This dispute arises out of a joint pharmaceutical development agreement, directed

to a specific drug discovery and development collaboration between Sunesis and Biogen, and
Biogens secret pursuit of a drug development project intended to defeat the purpose of that
collaboration.
THE PARTIES
2.

Plaintiff Sunesis Pharmaceuticals, Inc. (Sunesis) is a corporation organized and

existing under the laws of Delaware, with its principal place of business and headquarters at 395
Oyster Point Boulevard, Suite 400, South San Francisco, California 94080.
3.

On information and belief, Defendant Biogen MA Inc. (f/k/a Biogen Idec MA,

Inc.) (Biogen) is a corporation organized and existing under the laws of Massachusetts, with its
principal place of business and headquarters at 250 Binney Street, Cambridge, Massachusetts
02142. Biogen is a wholly-owned subsidiary of Biogen, Inc.

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JURISDICTION AND VENUE

4.

This Court has subject matter jurisdiction in this case pursuant 28 U.S.C. 1332.

The matter in controversy exceeds the sum of seventy-five thousand dollars, exclusive of interest
and costs, and is between citizens of different States.
5.

This Court has personal jurisdiction over Biogen because Biogen consented to the

jurisdiction of this Court by executing the contracts at issue in this action. The contracts,
including the Second Amended and Restated Collaboration Agreement between Biogen and
Sunesis, provide that any dispute relating to the determination of validity of a Partys patents or
other issues relating solely to a Partys intellectual property and any dispute asserting breach of
this Agreement or of the representations and warranties made hereunder shall be submitted
exclusively to the federal court in Delaware, and the Parties hereby consent to the jurisdiction
and venue of such court.
6.

Venue is proper in this District under 28 U.S.C. 1391(b) and (c) because

Biogen consented to the jurisdiction and venue of this Court by executing the contracts at issue
in this action. On information and belief, Biogen at all times relevant to this dispute has been
doing business in this district.
FACTUAL BACKGROUND
The Parties Collaboration Agreements
7.

Sunesis and Biogen are pharmaceutical companies engaged in drug development

and commercialization. Sunesis is currently a clinical stage biopharmaceutical company focused

on development and commercialization of oncology therapeutics. Biogen is a pharmaceutical
company that, among other things, seeks to research, discover, develop and commercialize
medicines for inflammatory and other diseases.

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8.

Sunesis and Biogen have a multi-year history of collaboration in the use of

Sunesis intellectual property and trade secrets in the discovery and development of small
molecule therapeutics directed toward, inter alia, drugs that modulate Brutons Tyrosine
Kinase (BTK). BTK is an enzyme that has an important role in the growth of B-cells, which
are white blood cells that produce antibodies. BTK is a mediator of signaling pathways that
control both solid and hematologic (blood-related) malignancies. BTK is also a mediator of
signaling pathways involved in inflammatory cascades. Drugs that modulate or inhibit BTK are
also useful in immunology drugs, have been approved or are in clinical trials for the treatment of
certain blood cancers, and they are also in clinical trials for the treatment of several autoimmune
disorders.
9.

Sunesis and Biogen began their collaboration in 2004, when Sunesis and Biogen

(then known as Biogen Idec MA, Inc.) entered into a drug development agreement under which
the parties would collaborate in the discovery and development of small molecules that modulate
certain cancer targets, especially kinase targets. The Collaboration Agreement (CA) commenced
on August 27, 2004 and by its terms would remain in full force and effect until expiration of both
Parties royalty payment obligations. The CA acknowledged that Sunesis had developed
proprietary technology and know-how for the discovery and optimization of small molecules that
bind to enzyme targets and protein-protein interfaces, with special expertise towards kinases; . . .
. Such intellectual property is critical to the development of a BTK modulator for human use.
Sunesis brought extensive and unique kinase know-how and proprietary technology to the
collaboration, while Biogen possessed pharmaceutical research, development and
commercialization expertise. Pursuant to the terms of the CA, Sunesis and Biogen collaborated
to, among other things, develop small molecule drugs that would modulate BTK targets.

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10.

Sunesis and Biogen modified the CA by entering into a March 31, 2011 Amended

and Restated Collaboration Agreement (ARCA). Pursuant to the ARCA, Sunesis and Biogen
continued their collaboration, but limited that collaboration to the BTK target. The collaboration
pursuant to the ARCA resulted in, among other things, development of a small molecule BTK
modulator designated BIIB062.
11.

Sunesis and Biogen modified the ARCA on December 16, 2013, when they

entered into a Second Amended and Restated Collaboration Agreement (SARCA). The SARCA
specified a further continuation of the parties collaboration, allowed Sunesis to develop,
manufacture and commercialize BIIB062 in oncology, and granted Sunesis an exclusive license
to all of Biogens rights in BIIB062. Pursuant to the SARCA, Sunesis has actively conducted
efforts to commercialize BIIB062, now re-designated as SNS-062.
12.

The CA, the ARCA and the SARCA all contain protections of the parties

confidential information, including the parties intellectual property and trade secret information,
cross-licenses between Sunesis and Biogen to various rights, and express limitations on the
exercise of those rights.
Confidentiality, Non-Use and Notice Requirements
13.

Pursuant to the CA, Sunesis contributed its unique core technology, compounds

and know-how to the collaboration and the parties worked together to discover new compounds
with targeted activity and selectivity. The parties agreed as part of the CA (as well as part of the
ARCA and SARCA) to confidentiality, non-use and notice obligations to protect the
confidential, proprietary and intellectual property of the other party as well as the confidential,
proprietary and intellectual property jointly developed during the collaboration. The CA (as well

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as the ARCA and SARCA) also contained cross-licenses between Sunesis and Biogen of various
rights and placed express limitations on the exercise of those rights.
14.

Article 11.1 of the CA provides: During the Term of this Agreement and for a

period of five (5) years following the expiration or earlier termination hereof, each Party shall
maintain in confidence the Confidential Information of the other Party, shall not use or grant the
use of the Confidential Information of the other Party except as expressly permitted hereby, and
shall not disclose the Confidential Information of the other Party (in each case, irrespective of
whether such Confidential Information is also the Confidential Information of the receiving
Party), except (i) on a need-to-know basis to such Partys directors, officers and employees, (ii)
to such Party's consultants performing work contemplated by the Agreement, and to any bona
fide subcontractor performing work for such Party hereunder, or (iii) to the extent such
disclosure is reasonably necessary in connection with such Partys activities under rights and
licenses expressly authorized by this Agreement (including the permitted sub-licensees). To the
extent that disclosure to any person is authorized by this Agreement, prior to disclosure, a Party
shall obtain written agreement of such person to hold in confidence and not disclose, use or grant
the use of the Confidential Information of the other Party except as expressly permitted under
this Agreement. Each Party shall notify the other Party promptly upon discovery of any
unauthorized use or disclosure of the other Party's Confidential Information. (emphasis
added.)
15.

The confidentiality, non-use and notice requirements applied irrespective of

whether such Confidential Information is also the Confidential Information of the receiving
Party. The reason for that is simple. If a party uses or discloses the Confidential Information of
the other party, whether owned individually by the other party or jointly, the disclosure or use

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could undermine, weaken, or even destroy the other partys rights in that Confidential
Information resulting in significant harm. Thus, a party may not use and must maintain the
confidentiality of the information unless expressly permitted under the agreement.
16.

Article 1.11 of the CA defines Confidential Information to mean: with respect

to a Party, all information (and all tangible and intangible embodiments thereof), which is owned
or controlled by such Party, and is disclosed by such Party to the other Party pursuant to this
Agreement. . . . For clarity, except as otherwise expressly provided in this Agreement, Sunesis
Collaboration Technology, Joint Collaboration Technology and the Licensed Pre-Existing
Technology shall be deemed Confidential Information of both Biogen Idec and Sunesis. For
clarity, Biogen Idec Collaboration Technology shall be deemed Confidential Information solely
of Biogen Idec.
17.

Sunesis Collaboration Technology means all patents, patent applications,

invention disclosures and know-how that was conceived, made or developed solely by or under
authority of personnel of Sunesis in the course of performing the collaboration work under the
CA. =All right, title, and interest in and to the Sunesis Collaboration Technology shall be
owned by Sunesis. . . .
18.

Joint Collaboration Technology means all patents, patent applications,

invention disclosures and know-how that was conceived, made or developed jointly by or under
authority of both Parties in the course of performing the collaboration work under the CA. All
right, title and interest in the Joint Collaboration Technology shall be jointly owned by both
Sunesis and Biogen.
19.

Licensed Pre-Existing Technology means (i) all patents and patent applications

directed at or comprising compositions of matter that modulate Targets under the collaboration

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and/or methods of use thereof owned or controlled by Sunesis at any time after the Effective
Data but prior to three months after the Effective Date, and (ii) any know-how specifically
related to Licensed Pre-Existing Compounds owned or controlled by Sunesis at any time after
the Effective Data but prior to three months after the Effective Date. All right, title and interest
in the Licensed Pre-Existing Technology shall remain owned solely by Sunesis.
20.

Biogen Idec Collaboration Technology was likewise defined as all patents,

patent applications, invention disclosures and know-how that was conceived, made or developed
solely by or under authority of personnel of Biogen in the course of performing the collaboration
work under the CA. All right, title, and interest in and to the Biogen Idec Collaboration
Technology shall be owned by Biogen. . . .
21.

Sunesis Core Technology means all patents, patent applications, and invention

disclosures as described in Article 1.38 and as listed on Exhibit 1.38 to the CA. All right, title
and interest in and to the Sunesis Core Technology, and in any improvements to the Sunesis
Core Technology (i) made using or derived from Sunesis Core Technology, and (ii) made by or
under authority of either Party or its Affiliates during the Term of this Agreement, shall, as
between the Parties, be owned solely by Sunesis.
22.

Sunesis Confidential Information includes Sunesis Collaboration Technology,

Sunesis interest in the Joint Collaboration Technology, Sunesis Core Technology, and the
Licensed Pre-Existing Technology.
23.

In addition to the notice requirement under Article 11.1, Article 10.3.1 further

provides that [i]n the event a Party becomes aware of any actual or potential infringement or
misappropriation of the Sunesis Collaboration Technology or Joint Collaboration Technology (a
Subject Infringement), such Party shall notify the other Party.

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24.

Read together, the provisions meant that Biogen could not use, and must maintain

the confidentiality of, Sunesis Confidential Information unless expressly permitted under the CA.
Limited License Rights
25.

Article 11.1 outlines three permitted uses of Confidential Information: (i) on a

need-to-know basis to such Partys directors, officers and employees, (ii) to such Partys
consultants performing work contemplated by the Agreement, and to any bona fide subcontractor
performing work for such Party hereunder, or (iii) to the extent such disclosure is reasonably
necessary in connection with such Partys activities under rights and licenses expressly
authorized by this Agreement (including the permitted sub-licensees).
26.

Article 10.1.1(e) provides that all Joint Collaboration Technology that is jointly

owned pursuant to this Section 10.1.1(e) shall be subject to the licenses granted under Article 6.
In addition, all Sunesis Collaboration Technology, Biogen Collaboration Technology, Licensed
Pre-Existing Technology, and Sunesis Core Technology are also subject to the licenses granted
under Article 6.
27.

Pursuant to Article 6.1.1(c), Sunesis granted Biogen a worldwide, non-exclusive

license under the Sunesis Collaboration Technology and Sunesis interest in the Joint
Collaboration Technology to make, discover, research and/or develop Collaboration
Compounds, alone or as incorporated into Other Biogen Idec Products. (emphasis added.)
28.

Pursuant to Article 6.2.1, Sunesis further granted Biogen a worldwide, exclusive

license under the Sunesis Collaboration Technology and Sunesis interest in the Joint
Collaboration Technology, . . . , to research, develop, make, have made, use, import, offer for
sale, sell and otherwise exploit Target Selective Compounds for any purpose, without regard to

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the mechanism of action of such Target Selective Compound, alone or as incorporated into a
Product. (emphasis added.)
29.

Pursuant to Article 6.2.2, Sunesis granted Biogen a worldwide, non-exclusive

license under the Sunesis Core Technology to make, have made, use, import, offer for sale and
sell Target Selective Compounds, alone or as incorporated into a Product. It is understood that
the foregoing license to Sunesis Core Technology shall not include the right to practice Sunesis
Core Technology to discover novel compositions. (emphasis added.)
30.

Pursuant to Article 6.2.3, Sunesis granted Biogen a worldwide, non-exclusive

license under the Licensed Pre-Existing Technology, . . ., to research, develop, make, have made,
use, import, offer for sale, sell and otherwise exploit Licensed Pre-Existing Compounds for any
purpose, without regard to the mechanism of action of such Licensed Pre-Existing Compound,
alone or as incorporated into a Product. (emphasis added.)
31.

Each of the licenses above to Sunesis Confidential Information provided to

Biogen an authorization that is limited to uses directed to a Collaboration Compound.

32.

The licenses granted under Article 6.1.1(c) specifically refer to Collaboration

Compounds. The licenses granted under Articles 6.2.1 and 6.2.2 specifically refer to Target
Selective Compounds. Target Selective Compounds are any Collaboration Compound that is
Target Selective against a Target that is then a Collaboration Target, and thus, are a subset of
the defined Collaboration Compounds. The licenses granted under Article 6.2.3 specifically
refer to uses related to Licensed Pre-Existing Compounds, which is itself expressly included
within the definition of Collaboration Compound, and thus is another subset of Collaboration
Compounds.

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33.

Collaboration Compound was defined as: each compound that is: (i) a

Synthesized Compound, (ii) a Collaboration Derivative Synthesized by or under authority of

either Party or any of its Controlled Affiliates, after the Effective Date but prior to the third (3rd)
anniversary of the end of the Research Term, (iii) a Licensed Pre-Existing Compound, (iv)
Covered by a Valid Claim of a Joint Collaboration Patent or a Sunesis Collaboration Patent, or
(v) Covered by a Valid Claim of a patent within the Sunesis Core Technology as applied (A) to a
Collaboration Target by or under authority of either Party or any of its Controlled Affiliates, or
(B) to a Target other than a Collaboration Target by or under authority of Biogen Idec or any of
its Controlled Affiliates.
34.

Article 1.8 defines Collaboration Derivative as a chemical compound

Synthesized in the course of activities directed to a Target using as a starting point one or more:
(i) Synthesized Compound(s), (ii) Licensed Pre-Existing Compound(s), (iii) compound(s) that
are Covered by a Valid Claim of a Joint Collaboration Patent or Sunesis Collaboration Patent,
(iv) compound(s) that are Covered by a Valid Claim of a patent within the Sunesis Core
Technology as applied (A) to the Collaboration Target by or under authority of either Party or
any of its Controlled Affiliates, or (B) to a Target other than a Collaboration Target by or under
authority of Biogen Idec or any of its Controlled Affiliates, or (v) Kinase-Active Fragment(s).
35.

Collaboration Derivatives were included within the definition of Collaboration

Compound because development of small molecule therapeutics generally starts with the
identification of selected compounds and involves significant iterative refinement through
making analog or derivative compounds with improved properties. The parties wanted to ensure
that continued development of a selected compound, which could lead to derivative compounds,
would be covered under the collaboration. The CA confirms that Sunesis has rights to each of

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the starting points identified in Article 1.8 and any derivative compounds that are developed
from those starting points.
36.

Inclusion of derivatives was further important because compounds qualifying as

Collaboration Compounds were subject to royalty and milestone payments by Biogen to Sunesis
upon the occurrence of certain research and development milestones and based on the net sales
of any resulting products.
37.

Thus, Biogens right to use or disclose Sunesis Confidential Information was

limited to Biogens efforts to make, discover, research and/or develop compounds and their
derivatives for the joint benefit of Biogen and Sunesis.
Results of the Parties Collaboration under the CA
38.

Through the collaboration, the parties identified certain compounds that inhibit

the Raf Target, the PDK Target, and the BTK Target. They did this by using Sunesis Tethering
Technology (including among other things, libraries of hundreds to thousands of specially
modified compound fragments that are tested for affinity to target proteins). Sunesis had
developed expertise and significant intellectual property and know-how in tethering, a process of
temporarily binding molecules and a powerful research tool. The parties would first test the
fragments for affinity, causing some to bind covalently (tether) to the target, and then identify the
bound fragments. Then, selected fragments could be tested for combination with other
fragments, and again tested for affinity for the target. If binding activity to a target protein was
found, the Sunesis team would vary portions of the compounds to see if binding could be
improved. Initial compounds were selected and then further tested for liabilities and benefits.
Through medicinal chemistry testing, the compounds were evolved through classes of
derivatives, with changes being made along the way to enhance the benefits and decrease or

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remove the liabilities. The initial compounds discovered under the CA were the predecessors to
derivative compounds that ultimately entered into clinical trials, including SNS-062 (and later
BIIB068 as described below).
The First Amended And Restated Collaboration Agreement
39.

The Research Term under the CA ended on June 30, 2008. Although much of the

parties joint research work was completed by 2008, the collaboration continued as the parties
built upon the joint efforts to continue to discover and develop new compounds. On June 19,
2009, the parties amended CA Article 1.3.6s definition of Synthesized Compound to exclude
the three exceptions identified in the last sentence of the Article. The parties confirmed that they
intended that any compound synthesized by either Party in the course of performing research
activities under the Research Program be included as a Synthesized Compound.
40.

In 2011, the parties decided to focus their joint efforts on developing molecules

that modulate only the BTK Target and amended the CA. Pursuant to the March 31, 2011
ARCA, Sunesis and Biogen continued their collaboration, but limited that collaboration to the
BTK target.
41.

The ARCA revised the definition of Collaboration Compound to cover each

compound that is: (i) a Synthesized Compound, (ii) a Collaboration Derivative Synthesized by or
under authority of either Party or any of its Controlled Affiliates, after the Effective Date but
prior to the third (3rd) anniversary of the end of the Research Term after August 25, 2004, but
prior to June 30, 2011, (iii) a Licensed Pre-Existing Compound, (iv) Covered by a Valid Claim
of a Joint Collaboration Patent or a Sunesis Collaboration Patent , or (v) Covered by a Valid
Claim of a patent within the Sunesis Core Technology as applied (A) to a the Collaboration
Target by or under authority of either Party or any of its Controlled Affiliates, or (B) to a Target

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other than a the Collaboration Target by or under authority of Biogen Idec or any of its
Controlled Affiliates. (strikethrough and underlining added to show revisions).
42.

The parties revised subsection (ii) to clarify that all Collaboration Derivatives

synthesized from the start of the collaboration to the third anniversary of the Research Term
(which was June 30, 2011) were included because Sunesis was aware that Biogen had continued
to develop compounds and find derivatives during that period. Sunesis understood that all of
Biogens work with respect to BTK fell under the collaboration and the terms of the ARCA.
That understanding was based on representations and presentations by Biogen to Sunesis
identifying Biogens work under the collaboration.
43.

In the ARCA, the parties also narrowed the definition of Collaboration Target to

just the BTK Target.

44.

Articles 1.11, 1.37, 1.5, 1.5.1, 1.5.2, 1.6, 1.6.1, 1.6.2, 1.7, 1.7.1, 1.7.2, 1.8, 1.25,

1.25.1, 1.25.2, 1.38, 6.1.1(c), 6.2.1-6.2.3; 10.1.1(c), (d), & (e), 10.1.2, 10.1.3, 10.3.1, and 11.1
under the ARCA remained the same (relative to the CA) in all material respects.
The Second Amended And Restated Collaboration Agreement
45.

The collaboration pursuant to the ARCA resulted in, among other things,

development of a BTK modulator initially designated BIIB062, an orally available BTK

inhibitor in clinical trials for treating B-cell malignancies. The parties decided that Sunesis
would assume responsibility for development for oncology applications of the compound.
Biogen gained significant knowledge from the joint BIIB062 discovery and development work,
and had access to unique Sunesis Confidential Information regarding particularly promising
aspects of the BTK target. That allowed the parties to identify early hits, and conduct the
chemistry and biology work that led to BIIB062 as a lead candidate.

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46.

The parties then again amended the agreement. The December 16, 2013 SARCA

allowed Sunesis to develop, manufacture and commercialize BIIB062 in oncology, and granted
Sunesis an exclusive license to all of Biogens rights in BIIB062. Pursuant to the SARCA,
Sunesis has conducted efforts to commercialize BIIB062, now re-designated as SNS-062.
47.

Articles 1.11 (renumbered 1.24 under the SARCA); 1.7 (renumbered 1.73 under

the SARCA) 1.5, 1.5.1, 1.5.2 (renumbered 1.10-1.12 under the SARCA); 1.6, 1.6.1, 1.6.2
(renumbered 1.64-1.66 under the SARCA); 1.7, 1.7.1, 1.7.2 (renumbered 1.34-1.36 under the
SARCA); 1.8 (renumbered 1.17 under the SARCA); 1.25, 1.25.1, 1.25.2 (renumbered 1.41-1.43
under the SARCA); 1.38 (renumbered 1.67 under the ARCA); 6.1.1(c); 6.2.1-6.2.3; 10.1.1 (c),
(d), & (e); 10.1.2; 10.1.3; 10.3.1; and 11.1 under the ARCA remained the same in all material
respects.
Biogens Secret Decision to Conduct a Separate Drug Development Program Using the Same
Team and Sunesis Confidential Information
48.

Unknown to Sunesis, Biogen had secretly continued working on the BTK project

to develop the next generation of the BTK inhibitor. Relying on confidential and proprietary
information provided by Sunesis and developed in the collaboration with Sunesis, Biogen
discovered a class of compounds that includes BIIB068. BIIB068 is also a BTK inhibitor.
Biogen did not disclose to Sunesis its discovery of the new analog compounds, nor its decision to
use Sunesis Confidential Information for this purpose. Thus, at the same time that Biogen was
negotiating the SARCA with Sunesis, it was secretly working on a project using Sunesis
Confidential Information for Biogens sole benefit and to develop a competitor to SNS-062.
49.

BIIB068 and SNS-062 are closely related. Both compounds are BTK inhibitors

that operate through closely related mechanisms. The project resulting in SNS-062 developed a
genus of compounds having related characteristics and similar structures and purposes. As

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described in published patent applications, the genus resulting from the BIIB068 project is
closely related to the SNS-062 genus.
50.

Many of the Biogen employees who worked with Sunesis during the

collaboration, and had access to and used Sunesis Confidential Information, also worked on
BIIB068. For example, at the same time that Dr. Brian Hopkins was leading the secret BIIB068
chemistry effort for Biogen, he was also the chemistry lead for Biogen on the SNS-062 project,
attending meetings with Sunesis and presenting Biogens views on the SNS-062 project. Dr.
Hopkins is not only a named inventor in patents claiming compounds discovered and developed
during the collaboration, but is also a named inventor in the patent applications describing the
BIIB068 genus of compounds.
51.

The Biogen BIIB068 team learned from Sunesis and the collaboration significant

insights about chemistry to pursue and to avoid undesirable effects. The BIIB068 team further
gained significant crystallographic and biochemical knowledge from Sunesis about where to
direct binding in the ATP pocket of BTK as a result of Sunesis work under the collaboration
that led to the SNS-062 compound.
52.

As a result of the continuity of the programs and research teams, the chemical

structure of the BIIB068 class of compounds is the natural evolution of the parties work on the
SNS-062 class of compounds and the classes of BTK compounds that had come before. The
chemical structure of the BIIB068 genus is closely related to the genus described in the patents
8,785,440 B2 and 9,249,146 B2, which cover the SNS-062 compound.
53.

The timing of the patent filings on SNS-062 and BIIB068 further demonstrate that

BIIB068 was a derivative of the SNS-062 project. Biogen capitalized on the technology, trade
secrets, and know-how developed and shared during the collaboration to discover and develop

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BIIB068. The bulk of the patent filings for SNS-062 were submitted in the third quarter of 2009
through the second quarter of 2013. Biogens patent filings directed to BIIB068 began in the
fourth quarter of 2013 and continued through 2016.
54.

Biogen used Sunesis Confidential Information in the development of BIIB068.

The leadership of the BIIB068 research team substantially overlapped with the SNS-062 team,
including most importantly the lead chemist. Due to the access to Sunesis Confidential
Information, overlap of research terms, similarity of projects, and chemical similarities between
the resulting compounds and earlier compounds, Biogen misappropriated Sunesis Confidential
Information.
55.

As a result of Biogens use of Sunesis Confidential Information in the

development of BIIB068, Biogen disclosed Sunesis Confidential Information to Biogen

employees who had not been involved in the collaboration work with Sunesis and who were not
authorized to receive the information for use in further development of BKT inhibitors outside
the scope of the collaboration.
56.

Biogens development of BIIB068, the same teams involvement in that

development, and Biogens use of Sunesis Confidential Information in that development was not
known to Sunesis when the parties executed the SARCA. Biogen secretly filed two provisional
patent applications for BIIB068 on December 11, 2013, five days before Biogen signed the
SARCA. Biogen did not disclose the patent applications, the overlap in the project teams, or the
project itself. Biogen never sought permission from Sunesis to use or disclose Sunesis
Confidential Information outside the scope of the SARCA.
Sunesis Discovery of Biogens Secret Project

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57.

Sunesis did not learn of BIIB068 until informed of the provisional patent

applications on January 16, 2014, a month after it had signed the SARCA. Yet before, during
and after negotiation of the SARCA, the parties were actively engaged in the collaboration, with
Sunesis and Biogen scientists in continued communication. Had Sunesis known of the BIIB068
project during negotiation of the SARCA, it would have changed the positions Sunesis took and
ultimately agreed to during that negotiation, including regarding the definition of Collaboration
Compounds. At the time the parties were negotiating the SARCA, Sunesis agreed to not revise
the applicable period for Collaboration Derivatives to qualify as Collaboration Compounds
because, Biogen had led Sunesis to believe that Biogen had disclosed all of its work under the
collaboration and was not misusing Sunesis Confidential Information or secretly developing
Collaboration Derivatives outside of the collaboration.
58.

Choate, Hall & Stewart LLP (Choate) is patent prosecution counsel for Sunesis

and Biogen for intellectual property generated as part of the parties collaboration. Choate
represented both parties on patent applications related to the collaborations work on the BTK
Target and on SNS-062. Choate notified Sunesis on January 16, 2014 that Biogen had instructed
it to file U.S. applications 61/914,891 and 61/914,886 for the BIIB068 genus of compounds over
a month earlier on December 11, 2013. This was the first notice to Sunesis of the BIIB068
compound or Biogens related patent filings. Sunesis had no prior knowledge of that work or
those patent filings.
59.

Biogen, via Choate, provided notification to Sunesis because it was required to

under the SARCA. Article 10.1.4(a) required the parties to promptly disclose to the other, all
inventions relating to Sunesis Collaboration Technology, Joint Collaboration Technology and
Sunesis Core Technology conceived or reduced to practice (provided that such conception takes

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place after the ARCA Effective date [March 31, 2011]) in connection with this Agreement prior
to the third (3rd) anniversary of the ARCA Effective Date. Article 10.1.4(b) likewise required
the parties to disclose to the other all inventions relating to the SNS-062 technology.
60.

Biogens disclosure of the BIIB068 patent applications to Sunesis in compliance

with Articles 10.1.4(a) and (b) confirms that Biogen used Sunesis Confidential Information in
the development of BIIB068, that BIIB068 was related to SNS-062, and that BIIB068 was a
Collaboration Compound. Furthermore, the BIIB068 patent applications identified Sunesis as a
co-applicant. This is an additional admission that BIIB068 was developed using Sunesis
Confidential Information, that BIIB068 was related to SNS-062, and that BIIB068 was a
Collaboration Compound.
61.

As a result of the January 2014 notification from Choate, Sunesis immediately

contacted the in-house patent counsel at Biogen responsible for the parties collaboration and
asked why Sunesis had not been notified earlier of the BIIB068 program and patent filings.
Biogens corporate counsel apologized for failing to understand that Biogen needed to keep
Sunesis promptly apprised of Biogens work under the collaboration and for not notifying
Sunesis earlier. Biogens counsel promised that it would not happen again.
62.

Biogen gave a presentation to Sunesis on August 27, 2014, including a 44-page

slide deck, detailing the status of the BIIB068 program. The Biogen presentation was led by the
BIIB068 programs leads: Brian Hopkins, the Chemistry lead; Kevin Otipoby, the Immunology
lead; Tonika Bohnert, the DMPK lead; and David Peters, the Toxicology lead. All four had also
been involved in the SNS-062 program prior to the SARCA in 2013. Although Sunesis had
learned of Dr. Hopkins involvement in the BIIB068 program upon learning of the BIIB068
patent filings, this was the first time that Sunesis learned of the involvement of the other three

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Biogen scientists in the BIIB068 program. Biogen made additional statements that are material
admissions. The presentation did not suggest that Sunesis would have no rights in BIIB068.
63.

All of the information provided in the August 2014 presentation, including the

individuals presenting it, gave Sunesis comfort that BIIB068 was being treated as a
Collaboration Compound under the SARCA such that both Biogen and Sunesis had rights in, and
would benefit from, the drug.
64.

Biogen met again with Sunesis on December 15, 2014 to provide another

BIIB068 program update. Biogen provided Sunesis with another PowerPoint presentation
regarding BIIB068 at that meeting. It was at that time that Sunesis first learned that Biogen
believed that BIIB068 was not a Collaboration Compound.
65.

Between January 16, 2014, when Sunesis first learned of the BIIB068 program

and patent filings, and December 2014, Biogen never contended that the January 2014
notification by Choate was an error, that including Sunesis as a co-applicant on the patents was
an error, that Biogen was not obligated to apprise Sunesis of Biogens work on BIIB068, that
BIIB068 was outside of the SARCA or that BIIB068 was not a Collaboration Compound under
the SARCA. Instead, all of Biogens representations and presentations treated BIIB068 as a
Collaboration Compound subject to the rights and limitations outlined in the SARCA. These
representations were made multiple times by Biogen scientists and counsel.
66.

However, at the end of 2014 Sunesis learned for the first time that Biogen took

the position that BIIB068 fell outside of the collaboration. Immediately upon learning that,
Sunesis contacted Biogen on January 6, 2015 to find out if that was Biogens intended stance.
The parties met and had further communications in January wherein Biogen contended that
BIIB068 was a Collaboration Derivative under the agreements, not a Collaboration Compound,

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because BIIB068 was synthesized after June 30, 2011. Sunesis maintained that BIIB068
qualified as a Collaboration Compound under the SARCA giving Sunesis rights in the compound
and to milestone and royalty payments and was otherwise developed using Sunesis Confidential
Information entitling Sunesis to compensation. Biogen contended that it owned all rights in
BIIB068 and ultimately requested that Sunesis agree to the removal of the designation of Sunesis
as a co-applicant on the 2013 BIIB068 patent applications.
67.

Discussions between the parties continued throughout 2015 and 2016. Despite

Sunesis further attempts to resolve the dispute, the parties remained at an impasse. On
September 7, 2016, Sunesis submitted formal notice pursuant to Article 15.1 of the SARCA
requesting that the matter be escalated for in-person discussion among Senior Executives of the
parties. Those discussions, which occurred on November 29, 2016, were unsuccessful in
resolving the parties dispute.
68.

Because the parties remain at an impasse, Sunesis brings claims against Biogen

for declaratory judgment, breach of contract, and trade secret misappropriation in this Court
pursuant to Articles 15.1 and 15.4 of the SARCA.
FIRST CLAIM FOR RELIEF
Declaratory Judgment
69.

Sunesis incorporates by reference the allegations in the paragraphs above.

70.

Based on the allegations in this Complaint, there is bona fide, actual, and present

controversy between Sunesis and Biogen as to whether BIIB068 is a Collaboration Compound

within the meaning of the SARCA, and this controversy is ripe for a legal determination by this
Court.
71.

BIIB068 is a Collaboration Compound under the SARCA. BIIB068 resulted from

Biogens continued work on the BTK project to develop the next generation of SNS-062, a

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Case 1:17-cv-00050-UNA Document 1 Filed 01/13/17 Page 21 of 27 PageID #: 21

Collaboration Compound under the SARCA. Both compounds are in the same field, and are
BTK inhibitors. Biogens conduct and representations, including its naming of Sunesis as a coapplicant on the 2013 BIIB068 patent applications, were admissions by Biogen that BIIB068 is a
Collaboration Compound. Biogens use of Sunesis Confidential Information to discover and
develop BIIB068 was a further admission that BIIB068 is a Collaboration Compound.
72.

Pursuant to the Declaratory Judgment Act, 28 U.S.C. 2201, Sunesis is entitled to

and therefore seeks a judgment from this Court declaring that BIIB068 is a Collaboration
Compound within the meaning of the SARCA and that Biogen is thus subject to all applicable
milestone and royalty obligations set forth in the SARCA.
SECOND CLAIM FOR RELIEF
Breach of Contract
73.

Sunesis incorporates by reference the allegations in the paragraphs above.

74.

Biogen and Sunesis entered into the CA, the ARCA, and the SARCA, all of

which were valid and binding contracts.

75.

Biogen breached the contracts, including its obligations under the SARCA, by

failing to make required milestone payments to Sunesis; using and disclosing Sunesis
Confidential Information in violation of the contracts; and failing to notify Sunesis of Biogens
unauthorized use, disclosure and misappropriation of Sunesis Confidential Information.
Breach of Milestone Payment Obligations
76.

The contracts, including the SARCA, require Biogen to make milestone and

royalty payments to Sunesis when defined research and development milestone and sales
conditions are met.
77.

BIIB068 is a Collaboration Compound under the SARCA. BIIB068 resulted from

the parties development of SNS-062, a Collaboration Compound under the SARCA. Both

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compounds are in the same field, and are BTK inhibitors. Biogens conduct and representations,
including its naming of Sunesis as a co-applicant on the 2013 BIIB068 patent applications, were
admissions by Biogen that BIIB068 is a Collaboration Compound. Biogens use of Sunesis
Confidential Information to discover and develop BIIB068 was a further admission that BIIB068
is a Collaboration Compound.
78.

Because BIIB068 is Collaboration Compound, Biogen currently owes Sunesis the

research milestone payment under Article 7.3.3 of the SARCA and the development milestone
payment under Article 7.4.1.1 of the SARCA.
79.

Biogen breached the SARCA by failing to make these milestone payments.

80.

As a direct and proximate result of this breach, Sunesis has suffered damages in

an amount to be determined at trial.

Breach of Limitations on Use and Disclosure of Sunesis Confidential Information
81.

The contracts, including the SARCA, place limits on each partys use and

disclosure of confidential and proprietary information belonging to the other party. In particular,
Article 11.1 of the SARCA prohibits Biogen from using or disclosing Sunesis Confidential
Information except as expressly permitted by the SARCA, and subject to the licenses contained
in Article 6.1 of the SARCA. Article 6.1, including each of the licenses contained in Articles
6.1.1(c), 6.2.1, 6.2.2, and 6.2.3, grants Biogen rights to use the Sunesis Confidential Information
with respect to Collaboration Compounds. Thus, the SARCA prohibits Biogen from using
Sunesis Confidential Information to discover, develop, or make compounds other than
Collaboration Compounds.
82.

If BIIB068 does not qualify as a Collaboration Compound, then Biogen is in

breach of the SARCA because Biogen used and disclosed Sunesis Confidential Information in its

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discovery and development of BIIB068 in violation of Articles 6.1.1(c), 6.2.1, 6.2.2, 6.2.3, and
11.1. Biogen used several of the same SNS-062 team members, who had access to and used
Sunesis Confidential Information, on the Biogen BIIB068 team, including the lead chemist.
Some Biogen employees named as inventors on SNS-062 patents are also named inventors on
BIIB068 patents. Biogen disclosed Sunesis Confidential Information to Biogen employees that
worked on BIIB068, but that had not worked on SNS-062, and had no need to know the
information under the terms of the SARCA.
83.

Biogens conduct with respect to the BIIB068 patent applications further confirms

that Biogen used Sunesis Confidential Information in the development of BIIB068, in violation
of the SARCA. Biogens disclosure of the BIIB068 patent applications to Sunesis in compliance
with Articles 10.1.4(a) and (b) of the SARCA confirms that Biogen used Sunesis Confidential
Information in the development of BIIB068. That the BIIB068 patent applications identified
Sunesis as a co-applicant is an additional admission that BIIB068 was developed using Sunesis
Confidential Information.
84.

As a direct and proximate result of this breach, Sunesis has suffered damages in

an amount to be determined at trial.

Breach of Notice Requirements
85.

The contracts, including the SARCA, impose notice requirements on the parties.

Specifically, Article 11.1 of the SARCA provides that Each Party shall notify the other Party
promptly upon discovery of any unauthorized use or disclosure of the other Partys Confidential
Information. Article 10.3.1 of the SARCA further provides that [i]n the event a Party becomes
aware of any actual or potential infringement or misappropriation of the Sunesis Collaboration

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Case 1:17-cv-00050-UNA Document 1 Filed 01/13/17 Page 24 of 27 PageID #: 24

Technology or Joint Collaboration Technology (a Subject Infringement), such Party shall

notify the other Party.
86.

Biogen breached the notice requirements in Articles 11.1 and 10.3.1 of the

SARCA by failing to notify Sunesis of Biogens unauthorized use, disclosure and

misappropriation of Sunesis Confidential Information.
87.

As a direct and proximate result of this breach, Sunesis has suffered damages in

an amount to be determined at trial.

THIRD CLAIM FOR RELIEF
Misappropriation of Trade Secrets Under Delaware Law
88.

Sunesis incorporates by reference the allegations in the paragraphs above.

89.

Pursuant to the parties contracts, and subject to the confidentiality restrictions

therein, Sunesis shared its confidential and proprietary information and know-how with Biogen.
This information and know-how constitutes protectable trade secrets under the Delaware
Uniform Trade Secrets Act.
90.

Such information derives actual and potential economic value from not being

generally known to, and not being readily ascertainable by proper means by, other persons who
can obtain economic value from its disclosure or use.
91.

Sunesis took reasonable efforts to maintain the secrecy of the confidential

information in question, including by way of the confidentiality provisions in Sunesis contracts

with Biogen.
92.

Biogen improperly and without Sunesis consent used Sunesis trade secrets

beyond the authorization of the CA, ARCA and SARCA and contrary to the prohibitions in those
agreements. At the time of this improper use of Sunesis trade secrets, Biogen knew or had
reason to know that its knowledge of the trade secrets was acquired under circumstances giving

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rise to a duty to limit use of the trade secrets. Moreover, Biogen acquired knowledge of Sunesis
trade secrets by improper means, including through breach of its duty to maintain secrecy of
Sunesis trade secrets.
93.

As a result, Biogen has violated the Delaware Uniform Trade Secrets Act, Del.

Code Ann. Title 6 2001 et seq.

94.

As a direct and proximate result of Biogens violation, Sunesis has incurred and

will continue to incur substantial economic damages, including loss of milestone payments, loss
of rights to royalties, loss of confidentiality, and loss of exclusivity, in an amount to be proved at
trial.
95.

As a direct and proximate result of Biogens violation, Biogen has been and will

continue to be unjustly enriched in an amount to be proved at trial.

96.

In the alternative to damages based on the actual loss to Sunesis and unjust

enrichment to Biogen, and as a direct and proximate result of Biogens violation, Sunesis is
entitled to a reasonable royalty in an amount to be proved at trial for Biogens unauthorized use
and disclosure of Sunesis trade secrets.
97.

Biogens actions in misappropriating Sunesis trade secrets for Biogens own gain

were willful, wanton, malicious, and were taken with reckless disregard for Sunesis rights.
98.

Sunesis therefore seeks a judgment against Biogen for compensatory and

exemplary damages, prejudgment interest, an award of costs and reasonable attorneys fees
pursuant to Del. Code Ann. Title 6 2001 et seq, and such other relief as the Court deems just
and proper.

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Case 1:17-cv-00050-UNA Document 1 Filed 01/13/17 Page 26 of 27 PageID #: 26

REQUEST FOR RELIEF

Sunesis respectfully requests the Court to enter judgment in its favor and against Biogen
as follows:
A.

A declaration that BIIB068 is a Collaboration Compound within the meaning of

the SARCA and that Biogen is thus subject to the milestone and royalty obligations set forth in
the SARCA;
B.

Damages adequate to compensate Sunesis for the loss caused by Biogens

breaches of the SARCA;

C.

Damages adequate to compensate Sunesis for the actual loss to Sunesis and/or

unjust enrichment to Biogen caused by Biogens misappropriation of Sunesis trade secrets;

D.

In the alternative to damages for actual loss to Sunesis and/or unjust enrichment

to Biogen caused by Biogens misappropriation of Sunesis trade secrets, damages adequate to

provide Sunesis a reasonable royalty for Biogens misappropriation of Sunesis trade secrets;
E.

Exemplary and punitive damages for Biogens willful, wanton, and malicious

conduct;
F.

Pre-judgment and post-judgment interest on all damages awarded;

G.

Costs and reasonable attorneys fees incurred in connection with this action;

H.

A full accounting of the damages above, including for past damages and any

continuing or future damages; and

I.

Such other and further relief as the Court deems just and proper.
DEMAND FOR JURY TRIAL

Sunesis demands a trial by jury on all issues triable by a jury.

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OF COUNSEL:
Jerry A. Riedinger
Shylah R. Alfonso
PERKINS COIE LLP
1201 Third Avenue, Suite 4900
Seattle, WA 98101
(206) 359-8000
Dated: January 13, 2017

/s/ Karen E. Keller

Karen E. Keller (No. 4489)
Nathan R. Hoeschen (No. 6232)
SHAW KELLER LLP
300 Delaware Avenue, Suite 1120
Wilmington, DE 19801
(302) 298-0700
kkeller@shawkeller.com
nhoeschen@shawkeller.com
Attorneys for Plaintiff Sunesis Pharmaceuticals,
Inc.

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