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In the second day of the Chiron Corp. v. Genentech Inc. patent trial, attorneys continued to lecture jurors about monoclonal antibodies, antigens and the U.S. patent system. While jurors will have to wade through such arcane data in deciding who invented the technology underlying Genentech’s Herceptin breast cancer drug, Chiron’s attorney suggested there’s an easier way: Just follow the decisions of the U.S. Patent and Trademark Office. “This is not the first time Genentech has attempted to invalidate our patent,” Chiron attorney Harold McElhinny, a partner at Morrison & Foerster, said in opening statements to the jury. “Before they came here they went to the Patent and Trademark Office.” Genentech, based in South San Francisco, claims the monoclonal antibody research Chiron did in the 1980s does not pertain to Herceptin. But McElhinny displayed a document dated April 2001 in which the PTO said the claims in Chiron’s patent have a priority date of at least 1985, meaning that the claims would have priority over claims made in later applications by others. In opening statements Tuesday, Genentech attorney John Keker, of Keker and Van Nest, said Chiron’s work in this area went nowhere. “They never made a chimeric antibody,” he said. “Meanwhile research at Genentech went rolling along” and the company filed a patent application for an antibody that binds to the breast cancer antigen HER2 in 1988. Emeryville-based Chiron, however, claims to have come up with the initial idea of targeting monoclonal antibodies to a specific breast-cancer antigen. It is seeking hundreds of millions of dollars in royalites from Herceptin sales, which totaled $346 million in 2001. “We have no quarrel that Genentech took our idea and turned it into a successful drug,” McElhinny said. “But for Genentech the company to try to take the patent away from the inventors and the company that invested in research and development is not right. We hope you will agree with the PTO and let us keep our patent.” Both attorneys have taken highly technical information and translated it into terms that the jury can understand — more so, in fact, than many a university professor could do. The case highlights the difficulties of relying on jurors to decide complicated scientific matters — and the PTO’s earlier ruling may prove a decided advantage for Chiron. “If they can’t understand the technology and see a document with a government stamp of approval on it, the tendency by the jury is to throw up their hands and go with the patentee,” said James Pooley, a partner at Milbank, Tweed, Hadley & McCloy’s Palo Alto office. Pooley said patent practitioners are always concerned that a jury will make a decision based on something like “what a lawyer did that they like better” or whether someone in the trial is less praiseworthy. “It’s one reason trial lawyers in patent cases look for theories like lying, stealing and cheating — because those are issues a jury can decide,” Pooley said. “We all just hope the juries do the best they can but in some cases it seems like a vain hope.” The United States is the only country that has a jury decide patent disputes, Pooley said, adding that many outside the United States find this “laughably quaint.” While people in the United States recognize the problems inherent in patent trials, “a constitutional amendment is not in the works,” Pooley said. “We do what we can to make the process better and improve the process at the patent office so a product that comes out of the office is more deserving of a strong presumption of validity.”

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