Eli Lilly & Co. has sued biotech firm, Genentech Inc., “to lift the cloud created by the imminent threat” of Genentech enforcing patents against Lilly’s colon cancer drug Erbitux. The patent suit seeking a court declaration that Erbitux does not violate Genentech’s Cabilly patents was filed in San Francisco federal court last week.
Lilly wants U.S. District Judge Yvonne G. Rogers to invalidate the Genentech patent to Cabilly. The suit accuses Genentech, a unit of Roche Holdings AG, of an “extensive pattern” of “knowing and deliberate intent to deceive the [Patent and Trademark Office] into allowing the Cabilly II and III patents.”
Genentech has asserted that Cabilly II patent broadly covers use of well-known recombinant DNA methods, according to the lawsuit. In public statements, Genentech has specifically cited Erbitux as a potential competitor to one of its own products and said in a 2008 annual report it expected to be involved in future litigation related to enforcement of the Cabilly II patent.
ImClone, a Lilly subsidiary, entered into an agreement with Genentech in 2005 after Genentech argued that a license was required to produce products by a similar process in the Cabilly patent.
Lilly now argues that it has no obligation to pay royalties on the sales of Erbitux based on Cabilly patents and argues it has not infringed any Genentech rights.
Case: Lilly and Co. v. Genentech, Inc., No. CV13-0919YGR