Chiron Corp. v. Genentech, Inc.

MEMORANDUM AND ORDER RE: INVENTORSHIP, OBVIOUSNESS, INEOUTABLE CONDUCT

In a separate order, the court has determined that Genentech’s product, Hereep-tin, infringes Chiron’s U.S. Patent No. 6,054,561 (“’561 patent”). Genentech has asserted a number of defenses and counterclaims, three of which — invalidity for failure to join a co-inventor of the patent, invahdity for obviousness, and inequitable conduct — concern the late Dr. Jorgen Fogh’s contribution to the invention claimed in the ’561 patent. Chiron and Genentech now bring cross motions for summary judgment on these defenses and counterclaims.

I. Factual Background

The invention claimed in the ’561 patent is a genus of monoclonal antibodies that bind to a human breast cancer antigen known as HER2. The ’561 patent issued in April of 2000 from a long line of patents and patent applications dating back to 1984 and 1985, when scientists at Cetus (Chiron’s predecessor) first discovered anti-HER2 monoclonal antibodies. The ’561 patent attributes these discoveries to two Cetus scientists, Dr. David Ring and Dr. Arthur Frankel.

In the early 1980s, Drs. Ring and Frankel began a program to develop monoclonal antibodies against…