Chiron Corp. v. Genentech, Inc.

MEMORANDUM AND ORDER RE: PROSECUTION LACHES

In a separate order, the court has determined that Genentech’s product, Her- ceptin, infringes Chiron’s patent on monoclonal antibodies that bind to the HER2 human breast cancer antigen. Chiron now moves for summary judgment on Genentech’s prosecution laches defense.

I. Factual Background

The patent at issue, U.S. Patent No. 6,054,561 (“ ’561 patent”), is one of several Chiron patents that date back to two patent applications filed in 1984 and 1985. The first patent that Chiron received based on the 1984 and 1985 applications, U.S. Patent No. 4,753,894 (“ ’894 Patent”), issued in 1988. The ’894 patent claims “murine monoclonal antibodies]” that bind to human breast cancer, and has an expiration date of June 28, 2005. (’894 Patent.)

The same year that Chiron was issued the ’894 patent, it filed a continuation application that ultimately issued as U.S. Patent No. 5,169,774 (“’774 Patent”). The ’774 patent, which issued in 1992, claims “monoclonal antibodies]” that “bind to a common monomeric 210kD protein present in cancerous breast tissue.” The expiration date of the ’774 patent is also June 28, 2005. (’774 Patent.)

In 1994, Chiron…