Biogen owes Genentech $88 million in MS drug dispute, US judge says

By Blake Brittain

A California federal judge has determined that biotech company Biogen owes Roche's Genentech RO more than $88 million in patent royalties for sales of Biogen's blockbuster multiple-sclerosis and Crohn's disease drug Tysabri.

U.S. District Judge Yvonne Gonzalez Rogers said on Tuesday that Biogen owed Genentech royalties for Tysabri produced using Genentech's patents before the patents expired, even if the drugs were sold after their expiration.

A Biogen spokesperson declined to comment on the decision on Wednesday, citing pending litigation. Spokespeople and attorneys for Genentech did not immediately respond to requests for comment.

South San Francisco, California-based Genentech said in its 2023 lawsuit that Biogen signed a license to its patents, which relate to methods for manufacturing antibodies like Tysabri, in 2004 in exchange for a "mid-single-figure" royalty on sales of licensed products in the United States and an unspecified lower royalty elsewhere.

Cambridge, Massachusetts-based Biogen earned more than $1.7 billion from global sales of Tysabri last year, according to a company report.

Genentech argued that because antibody manufacturing is complex and the effects of running out of the drugs can be "catastrophic," antibody drugmakers often save up "at least several calendar quarters worth of product, and often more than that." It argued Biogen owed royalties for Tysabri that was manufactured using the patented technology before the patents expired in December 2018, but was sold in 2019 and beyond.

Biogen argued the companies' contract did not require any additional payments. A trial in July ended in a mistrial after the jury could not reach a verdict.

Rogers determined on Tuesday that Biogen owed $88.3 million more in royalties, plus an amount of interest to be determined.

The case is Genentech Inc v. Biogen MA Inc, U.S. District Court for the Northern District of California, No. 4:23-cv-00909.

For Genentech: Paul Gaffney and Luke McCloud of Williams & Connolly

For Biogen: Nisha Patel Gupta, Martin Black, Katherine Helm and Steven Engel of Dechert

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Genentech sues Biogen for royalties on blockbuster MS drug