Federal jury hands Genentech big patent win in SF

By Paul Elias The Associated Press
Monday September 09, 2002


SAN FRANCISCO – A unanimous jury has handed Genentech Inc. a complete win in its $1 billion patent fight with San Francisco Bay area rival Chiron Corp. 

After nearly two days of deliberations, a federal jury of 10 people on Friday said Chiron of Emeryville has no claim to any profits from Genentech’s blockbuster breast cancer drug, Herceptin. 

Chiron unsuccessfully claimed it was entitled to as much as 30 percent of Herceptin’s sales because Genentech illegally used technology patented by Chiron to develop the drug. 

After a 16-day trial, the jury found the U.S. Patent and Trademark Office improperly granted Chiron its patent to some genetically engineered antibodies, the cancer-fighting proteins that scientists turned into Herceptin. 

Using a process it patented in 1997, Genentech produces the antibody by splicing a human gene into Chinese hamster ovary cells, which it brews in giant batches in “bioreactors.” Genentech also received a patent on the antibody itself. 

Through a series of filters and chemical reactions, the human antibodies created in the hamster cells are sucked out, purified and turned into Herceptin as well as two other protein-based therapies. 

In the mid-1980s, scientists at several different labs were racing to find, patent and produce cancer-fighting antibodies in mass quantities. 

Cetus Corp., a small biotech company acquired by Chiron in 1991, filed the first of a long series of Herceptin-related monoclonal antibody applications in 1984. But Genentech was granted the first patent. 

“It was Genentech scientists and our collaborators who invented Herceptin,” said Arthur Levinson, Ph.D., chairman and chief executive officer at Genentech. 

While Genentech was first to receive patents to technology key to Herceptin’s development, Chiron successfully argued that it applied for the patents first, which would give it a claim to some of the drug’s profits. U.S. District Court Judge William Shubb of Sacramento agreed with Chiron and put the burden on Genentech to prove the patent office made a mistake — an argument it successfully made. 

“Chiron continues to believe that its patent covering the anti-HER-2 monoclonal antibodies is valid,” Chiron spokesman John Gallagher said. “The evidence clearly showed that Chiron was the first to invent these antibodies. Chiron intends to pursue multiple courses of action to overturn the verdict, including an appeal should that be necessary.” 

Gallagher added that Friday’s verdict still won’t end the patent battles between the two biotechnology titans. 

The patent office in August agreed to independently review Chiron’s infringement claim. Chiron also filed another lawsuit in March alleging that Herceptin violates yet another one of its patents. That case is scheduled to go to trial next year. 

Last year, Genentech sold a record $347 million worth of the drug, which has racked up nearly $1 billion in sales since the Food and Drug Administration approved Herceptin in late 1998. 

Genentech is appealing an unrelated $500 million verdict in Los Angeles involving the City of Hope Medical Center, which said the company refused to share profits of drugs developed with help from the hospital.