Cabilly patents

The Cabilly patents are two US patents issued to Genentech which relate to the "fundamental technology required for the artificial synthesis of antibody molecules". The name refers to the lead inventor Shmuel Cabilly. There has been ongoing legal controversy surrounding these patents since the original filing in 1983.

An interference between U.S. patent 4,816,567 (the original "Cabilly patent") issued to Genentech and U.S. patent 4,816,397 (the "Boss" patent) issued to Celltech resulted in the issuance of a second "Cabilly patent" to Genentech in 2001. This new patent would therefore extend into 2018, an effective term of 29 years.

A lawsuit filed by MedImmune, a licensee of the Cabilly patent, resulted in the United States Supreme Court case MedImmune, Inc. v. Genentech, Inc. which was decided in favor of MedImmune. Following the supreme court decision, the United States Patent and Trademark Office (USPTO) declared Genentech's patent invalid, but Genentech appealed that decision to the USPTO. The patent remained valid and enforceable until the process was completed. Genentech's "Cabilly II" patent 6,331,415 was then found, after USPTO reexamination, to be enforceable. MedImmune and Centocor have settled with Genentech (1). Currently, two other challenges are in the courts. GlaxoSmithKline and Human Genome Sciences both are challenging the patent under antitrust law (1). This is based on the settlement between Genentech and Celltech and their dispute over the original Cabilly patent 4,816,567 and the Celltech's patent 4,816,397.

An important implication of this case is the affirmation that a licensee retains the right to challenge a licensed patent. The controversy has also called attention to the amount of time the USPTO takes to resolve Interference proceedings, and has been cited in arguments for changing to a First to file patent system.

References

1) [1] "BioLawGics" September 12, 2011

• Genentech Claims Rejected on Patent Which Was Subject of Recent Supreme Court Decision. California Biotech Law Blog. February 21, 2007.
• USPTO issues double patenting rejection on Genentech's 29 year old patent Patent Baristas Blog. February 22, 2006.
• Biotech patent dispute involves millions. Gazzette.net. November 16, 2005.
• Genentech Hit with Adverse Patent Ruling. California Biotech Law Blog. September 30, 2005.
• It Lives for 29 Years?. Legal Times. November 2003. vol.26 no.44.