Medimmune v. Genentech: Noerr-Pennington Doctrine Applies to Patent Settlement And PTO Proceedings

The Noerr-Pennington doctrine immunizes petitioning conduct protected by the First Amendment from the antitrust laws. It applies even where the petitioning party seeks legislation or other government action that is anticompetitive. The filing and prosecution of lawsuits is a form of petitioning conduct immune under Noerr-Pennington. California Motor Transport v. Trucking Unlimited, 404 U.S. 508 (1972). Noerr-Pennington immunity, however, has its limits and those limits were tested in MedImmune, Inc. v. Genentech, Inc., et al., 2003 U.S. Dist. LEXIS 23443 (C.D. Cal. 2003) (amended January 14, 2004).

In MedImmune, the Patent and Trademark Office ("PTO") Board of Patent Appeals and Interferences declared an interference between the "Boss" patent of defendant Celltech and a pending continuation application of defendant Genentech, the "new Cabilly patent". After the PTO Board awarded priority to Celltech, Genentech filed a district court action to overturn the Board's priority determination. Genentech sought summary judgment. Judge Chesney of the Northern District Court of California, denied the motion and suggested the parties consider mediation or some other form of dispute resolution. Thereafter, Genentech and Celltech reached a settlement and entered into a license agreement. They submitted a proposed judgment overturning the Board's priority decision to Judge Chesney, which was signed and entered. Genentech then filed the court's judgment with the PTO. The PTO directed that Genentech's continuation application be returned to an examiner. After further proceedings, the examiner issued the new Cabilly patent in 2001.

Plaintiff MedImmune is a biotechnology company that sold a respiratory drug, Synagis, which utilized techniques covered by the patents. It filed suit in the Central District of California alleging that Celltech and Genentech illegally resolved the priority dispute in such a manner that neither company gave anything up and caused a real loss to others in the industry. Celltech's Boss patent was due to expire in 2006, but the new Cabilly patent covering the same techniques did not expire until 2018. This was because under the law existing at that time, the start date for the new patent was the time the interference was resolved, rather than the time the interference began. Plaintiff thus alleged that the resolution of the priority dispute, the license agreement, and the issuance of the new Cabilly patent operated to create a 29...