In the breach-of-contract case between Biogen Inc. and Genentech Inc., a California federal judge advised both parties on Friday to refrain from emphasizing the “magnitude of the money at issue” during the upcoming trial regarding unpaid patent royalties related to Biogen’s multiple sclerosis treatment, Tysabri.
U.S. District Judge Yvonne Gonzalez Rogers, presiding over the Northern District of California case, made the recommendation ahead of jury selection for the three-day trial scheduled to begin Monday. The judge cited concerns that most jurors “are not of significant means” and noted some prospective jurors expressed negative views about pharmaceutical companies.
During a pre-trial discussion, Judge Gonzalez Rogers highlighted the potential benefits of agreeing on the amount of damages before trial, which could streamline proceedings. Biogen’s counsel, Martin Black of Dechert LLP, confirmed that both sides are working toward a stipulation on damages, including factors such as sales figures and royalty rates.
“This number will be agreed upon,” Black said, emphasizing the potential to shorten testimony related to damages.
Genentech, represented by Paul Gaffney of Williams & Connolly LLP, indicated the company would consider the court’s guidance.
The lawsuit stems from a 2004 patent licensing agreement under which Biogen paid Genentech royalties for use of patents covering antibody manufacturing processes involved in Tysabri production. While Biogen paid royalties for years, it ceased payments in March 2019, arguing that royalties were no longer owed after patent expiration in December 2018.
Genentech’s complaint alleges Biogen owes “tens of millions of dollars” in unpaid royalties from sales of Tysabri stockpiled before the patents expired but sold afterward.
The patents at issue, known as the Cabilly patents (U.S. Patent Nos. 6,331,415 and 7,923,221), are co-owned by Genentech and the nonprofit City of Hope, which holds exclusive licensing rights through Genentech.
Judge Gonzalez Rogers has limited each party to nine hours of argument and plans to restrict expert testimony to keep the trial focused and efficient. Jury selection concluded with eight jurors empaneled for the expected three-day trial.
The case, Genentech Inc. v. Biogen MA Inc., case number 4:23-cv-00909, is pending in the U.S. District Court for the Northern District of California.
