In re Columbia University Patent Litigation

Columbia University (Columbia) (defendant) owned a specified technology that was needed in the production of certain drugs (protein technology). In 1980, Columbia filed an original application to patent the protein technology. Various drug companies (the drug companies) (plaintiffs) agreed to license all patents that would derive from the 1980 patent application (Axel patents) and pay royalties to Columbia. The drug companies used the protein technology to produce numerous commercially profitable drugs. For a while, it appeared that the issued Axel patents would expire in 2000 and that the drug companies’ obligation to pay royalties to Columbia would end in 2002. In June 1995, Columbia filed two continuation applications on its protein technology, and due to a change in the law, the patent that was eventually issued in 2002 (the ’275 patent) was not set to expire until 2019. In 2003, the drug companies sued Columbia, seeking a declaratory judgment that the ’275 patent was invalid or unenforceable. The drug companies asserted that certain claims of the ’275 patent were invalid for obviousness or double patenting and that the patent was unenforceable based on prosecution laches. While the case was pending, Columbia initiated re-examination and reissuance proceedings on the ’275 patent with the patent office. The district court denied Columbia’s request for a stay of litigation but set a schedule for a speedy adjudication on the issue of double patenting, which could resolve much of the case. Thereafter, Columbia filed a covenant not to sue the drug companies for infringement of the ’275 patent as the claims currently read or as they might read if reissued by the patent office, for any products that the drug companies might sell at any time. Columbia then moved to dismiss the declaratory-judgment claims based on the lack of a case or controversy.