Biogen MA Inc. today reaffirmed its position in the ongoing Biogen $122M Intellectual Property Royalties Mistrial, urging the U.S. District Court for the Northern District of California to rule that it owes Genentech Inc. no further royalties related to expired patents covering its multiple sclerosis therapy, Tysabri®.
The dispute centers on a 2004 license agreement granting Biogen rights to use certain Genentech antibody production methods under the “Cabilly” patent family. Biogen maintains that the plain language of the agreement ends royalty obligations upon patent expiration, which occurred on December 18, 2018. The company argues that Genentech’s claim for approximately $122 million in “tail royalties” for already-manufactured vials sold after that date is unsupported by the contract terms.
“The agreement is clear — royalties cease when the last relevant patent expires,” said Biogen’s legal counsel. “Genentech’s interpretation requires linguistic gymnastics that cannot be reconciled with the contract’s wording.”
Under the agreement, Biogen, along with former partner Elan Pharmaceuticals, paid more than $750 million in royalties to Genentech between 2006 and 2018. Upon expiration of the Cabilly patents, Biogen held approximately 397,311 vials of Tysabri in U.S. inventory, worth over $2 billion in sales.
The case proceeded to trial earlier this year, but the jury was unable to reach a verdict. Both parties have since agreed to waive their jury rights and allow Judge Yvonne Gonzalez Rogers to issue a decision based on the trial record.
Genentech, a subsidiary of Roche Holding AG, contends that the license covers all net sales of Tysabri, regardless of whether the product was manufactured before or after the patent expiration. Biogen rejects this interpretation, stating that tail royalties are not standard practice and that similar contracts within the Cabilly portfolio have not required such payments.
The matter, Genentech Inc. v. Biogen MA Inc., Case No. 4:23-cv-00909, remains pending before the Northern District of California.
