Supreme Court of California Justia
Citation 43 Cal. 4th 375, 181 P.3d 142, 75 Cal. Rptr. 3d 333
City of Hope v. Genentech

Filed 4/24/08

IN THE SUPREME COURT OF CALIFORNIA

CITY OF HOPE NATIONAL MEDICAL )
CENTER, )

Plaintiff and Respondent,
S129463
v.
Ct.App. 2/2 B161549
GENENTECH, INC.,
Los Angeles County
Defendant and Appellant.
Super. Ct. No. BC215152

In June 2002, after a jury trial, plaintiff City of Hope National Medical
Center (City of Hope) obtained a judgment against defendant Genentech, Inc.
(Genentech), for breach of fiduciary duty and for breach of contract.1 The
judgment awarded City of Hope $300,164,030 in compensatory damages and $200
million in punitive damages. The Court of Appeal affirmed. Genentech
challenges that affirmance.
In this complex case, which has 25,567 pages of reporter’s transcript plus
12,267 pages of clerk’s transcript and has generated 18 friend-of-the-court briefs,
the primary issue is whether, as the jury found, a fiduciary relationship necessarily
arose when City of Hope, in return for royalties, entrusted a secret scientific
discovery to Genentech to develop, to patent, and to commercially exploit. Our

1
This judgment was entered after a second trial. The first trial ended in a
mistrial when the jury deadlocked by a vote of seven to five in favor of Genentech.
1


answer is “no.” That conclusion invalidates the jury’s punitive damages award,
which was based on City of Hope’s tort claim for breach of fiduciary duty. In
addition, that conclusion requires us to determine whether the evidence that City
of Hope introduced at trial to prove that Genentech had breached a fiduciary duty
so prejudiced the jury as to require setting aside the jury’s award of compensatory
damages for breach of contract. Here too, our answer is “no.”
Genentech also asserts the trial court erred by (1) submitting interpretation
of the contract to the jury; (2) instructing the jury that if, after applying other rules
of interpretation, “there remains an uncertainty in the language of the contract, that
language must be interpreted against the party who caused the uncertainty to
exist”; and (3) admitting evidence of the resolution of a prior dispute between the
parties. We conclude that the trial court did not err in any of those three instances.
We affirm that part of the judgment awarding City of Hope $300,164,030
in damages for Genentech’s breach of contract. Because punitive damages cannot
be awarded for breaching a contract, however, our conclusion that there was no
fiduciary relationship requires us to set aside the jury’s award of $200 million in
punitive damages to City of Hope.
I
A. Parties’ Initial Contacts and Negotiations
In the mid-1970’s, Drs. Arthur Riggs and Keichi Itakura, two scientists
employed by plaintiff City of Hope, developed a groundbreaking process for
genetically engineering human proteins, enabling the production of large
quantities of various medicines of great therapeutic and commercial value. By
1976, Riggs and Itakura began preparing a confidential grant application relating
to their scientific discovery. As they neared completion of the application,
Dr. Herbert Boyer, a leader in the field of genetic engineering who had previously
worked with Drs. Riggs and Itakura, telephoned Riggs in early 1976 and learned
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of the scientific discovery by Riggs and Itakura. In February 1976, Drs. Riggs and
Itakura filed their confidential grant application with the National Institutes of
Health. Soon thereafter, in April 1976, Dr. Boyer and venture capitalist Robert
Swanson incorporated defendant Genentech, Inc. (Genentech) to commercially
exploit biotechnology.
In May 1976, Swanson, Genentech’s president, sent City of Hope a
proposal to provide funding to City of Hope to use the scientific process of
Drs. Riggs and Itakura to complete the process of synthesizing two proteins,
somatostatin and insulin, and to secure patents “necessary for commercialization”
as each product was developed. Discussions then followed between Swanson and
City of Hope’s patent lawyer John Hall concerning a possible agreement. On June
25, Hall sent Swanson a “Summary of Points for Agreement Between Genentech,
Inc. and City of Hope,” with a copy to Genentech patent lawyer Tom Kiley. On
June 30, 1976, Genentech’s Swanson and Kiley met with City of Hope’s Hall to
further discuss contract issues. Thereafter, on July 22, Genentech sent City of
Hope a draft of an agreement that Genentech had prepared. The accompanying
cover letter noted that the draft agreement, in Article 6.01, left blank the royalty
rate to be paid to City of Hope because Genentech was considering City of Hope’s
proposal of a 2 percent flat rate.
After the parties discussed the draft, Genentech on July 28, 1976, sent City
of Hope a second draft agreement. The cover letter mentioned that Article 6.01
now included sales by Genentech’s affiliates and payment of 2 percent royalties to
City of Hope. Unchanged was Article 6.09, providing that Genentech would
obtain from its licensees and pay to City of Hope the “same royalty” that City of
Hope would receive if Genentech itself were to carry out the licensed activity.
3
B. Contract Between Genentech and City of Hope
On August 5, 1976, Genentech and City of Hope executed the contract.
Below, we summarize the provisions pertinent here.
Article 1.03 sets forth the general objectives of the parties. As to
Genentech, it states: “GENENTECH proposes to engage in the manufacture and
sale of certain polypeptides. To do so, it requires synthetic DNA which codes for
the production of a particular polypeptide when incorporated in a bacterial or other
plasmid.” The article then mentions that City of Hope has laboratory facilities
with personnel qualified to synthesize DNA for selected polypeptides, that
Genentech would provide funding for that process and would use the resulting
DNA in the manufacture of polypeptides, and that Genentech would secure and
hold patents “as may emerge from that work.” As to City of Hope, Article 1.03
states: “For its part, CITY OF HOPE wishes to conduct DNA synthesis and
related work with GENENTECH funding, to publish the results of such work, and
to earn royalty income from GENENTECH sales of polypeptides in whose
manufacture synthetic DNA is employed.”
Article 3 of the contract describes the financial support Genentech was to
provide to City of Hope, including funding for salaries, materials, and equipment.
Article 3.04 states: “The parties contemplate that GENENTECH will solely and
exclusively own such patent or other proprietary property as emerges from the
work performed by CITY OF HOPE under this agreement . . . .”
Article 5 grants Genentech the sole option to seek patents, but it also gives
City of Hope the right to seek patents if Genentech either fails to do so or
abandons a patent application.
Article 6.01 reads: “GENENTECH shall pay to CITY OF HOPE a royalty
of two percent (2%) of the net sales of all polypeptides sold by it or its affiliates,
provided only that manufacture of the polypeptide employ DNA synthesized by
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CITY OF HOPE under this Agreement and provided to GENENTECH by CITY
OF HOPE, or replications of that DNA.” (Italics added.) (The italicized language
is referred to by the parties as “the DNA use requirement.”)
Article 6.02 states: “For the period commencing with the effective date of
this Agreement and ending five (5) years thereafter, GENENTECH will pay to
CITY OF HOPE the royalty provided for in Article 6.01 hereof regardless of
whether GENENTECH has secured one or more patents on Developments.
Thereafter, GENENTECH’s royalty obligations under Article 6.01 shall be limited
to the payment of royalty only in respect to such manufacture, use or sale which
would infringe the claims of an issued GENENTECH patent on Genentech
developments in the country of manufacture, use or sale, but for GENENTECH’s
ownership of the patent, and provided further that the patent has not been finally
adjudicated as invalid or unenforceable by a court of competent jurisdiction.”
(Italics added.) (The italicized language is referred to by the parties as “the patent
infringement requirement.”)
Article 6.08 provides: “Should GENENTECH license any third party
under any patent acquired by it hereunder, then GENENTECH shall secure from
that party and pay to CITY OF HOPE the same royalty CITY OF HOPE would
have received had GENENTECH itself carried out the licensed activity.”
Article 7 pertains to the infringement of patents. Article 7.02 states:
“Should GENENTECH recover from any infringer, whether by way of settlement
or judgment, damages or profits for infringement of any patent secured by it under
this Agreement, then after deduction from such recovery of GENENTECH’s
reasonable expenses in effecting the same, the balance shall be treated as net sales
of GENENTECH for royalty purposes.”
In Article 8, Genentech agrees to compute and pay royalties to City of
Hope quarterly, “to keep regular books of account in sufficient detail to permit the
5
royalties payable hereunder to be determined,” and to permit City of Hope to
inspect Genentech’s books and related records.
Article 10.01 grants Genentech the right to assign and transfer its
contractual rights, including patents and patent licenses. Article 10.02 grants City
of Hope the right to assign and transfer its rights to payments from Genentech.
Finally, Article 11.01 states: “Nothing herein contained shall be deemed to
create an agency, joint venture or partnership relation between the parties hereto.
It is agreed that the relationship between the parties is such that CITY OF HOPE
in its performance of this Agreement is an independent contractor.”
C. Parties’ Actions After Contract’s Execution
The collaboration between Genentech and City of Hope resulted in
extraordinary scientific and commercial success. The groundbreaking scientific
developments by City of Hope’s Drs. Riggs and Itakura enabled Genentech to
obtain a number of patents based on that scientific discovery. Based on these
patents, Genentech granted licenses to various companies.
Genentech informed City of Hope that in August 1978 it had granted Eli
Lilly a license to produce human insulin. But Genentech did not tell City of Hope
about other licenses it had granted, such as one it granted to other companies for
the production of interferon, which was then viewed as a potential cure for cancer
and the sales of which Genentech projected as potentially exceeding its revenue
from all other sources combined.
In its October 14, 1980, prospectus for its initial public offering of stock,
Genentech described its royalty obligation to City of Hope as “contingent upon the
existence of one or more patents arising from the funded research which would,
but for Genentech’s ownership of the patent(s), be infringed by the activities
underlying the royalty payment.”
6

On October 24, 1986, Dr. Eric Jurrus of City of Hope wrote a letter to
Kiley, by then Genentech’s general counsel, requesting, among other things, “a list
of all products Genentech had produced or is now producing which involve any
methods of genetic engineering or replication of DNA provided to Genentech by
City of Hope,” as well as a list “of companies Genentech has third party licenses
with which relate to methods of genetic engineering or DNA provided to
Genentech by the City of Hope.” In November 1986, Dr. Jurrus and Ed Irons, an
attorney for City of Hope, met with Genentech’s Kiley. Thereafter, Irons wrote
three letters to Genentech requesting unspecified documents, which, at the
November meeting, Kiley apparently had promised to produce. In April 1987,
Irons traveled from City of Hope’s headquarters in Duarte, Southern California, to
Genentech’s headquarters in South San Francisco, where he reviewed files from a
patent application; Kiley had told a subordinate not to show Irons any third party
licenses.
By the late 1980’s and early 1990’s, Genentech had obtained a large
number of United States and foreign patents in which City of Hope’s scientists
Riggs and Itakura were identified as the inventors, and Genentech had entered into
a substantial number of licensing agreements with third parties, including
companies such as Eli Lilly, Hoffman-La Roche, Monsanto Company, and
Boehringer Ingelheim. City of Hope received $302 million in royalties on
Genentech’s sales and on sales by Genentech’s licensees of somatostatin, insulin,
and a human growth hormone that used DNA synthesized by City of Hope. But
City of Hope received no royalties from sales by Genentech and by Genentech’s
licensees of other products, such as interferon and hepatitis B vaccine, that were
based on the genetic engineering technique pioneered by City of Hope scientists
Riggs and Itakura but did not use DNA synthesized by City of Hope.
7

On an unknown date in the 1990’s, Genentech sued Eli Lilly, alleging
infringement of the Riggs-Itakura patents by producing and selling human growth
hormone. In December 1994, the two parties settled the lawsuit. As part of the
settlement, Eli Lilly agreed to pay Genentech approximately $145 million, as well
as a 6 percent royalty on future sales of human growth hormone. City of Hope
then asserted that under Article 7.02 of its contract with Genentech it was entitled
to 2 percent of Genentech’s $145 million patent infringement settlement with Eli
Lilly and a 2 percent royalty on Eli Lilly’s future sales of human growth hormone.
After initially rejecting City of Hope’s claim, Genentech agreed to pay City of
Hope $3 million and a 1.75 percent royalty on Eli Lilly’s future sales of human
growth hormone.
In 1998, Genentech settled for $20 million a lawsuit it had brought against
a group of companies collectively called Novo Nordisk for infringing the Riggs-
Itakura patents. When Genentech rejected City of Hope’s claim for a share of that
settlement, City of Hope brought this action against Genentech.
D. The Lawsuit in This Case
On August 13, 1999, City of Hope sued Genentech for breach of fiduciary
duty and for breach of contract, including breach of the implied covenant of good
faith and fair dealing. At the first trial the jurors were unable to reach a verdict,
voting 7 to 5 in favor of Genentech. The case was then retried.
At the retrial, the parties presented conflicting extrinsic evidence
concerning the meaning of various contractual provisions and the parties’ intent
relating to the contract. City of Hope maintained that the DNA use requirement in
Article 6.01 (that the manufacture of the polypeptides use DNA synthesized and
provided by City of Hope) and the patent infringement requirement of Article 6.02
(that royalties to City of Hope were to be limited to the manufacture, use, or sale
that would infringe Genentech patents) did not apply to licenses granted by
8
Genentech or monies received by Genentech in resolving Genentech’s
infringement claims against certain companies. City of Hope further asserted that
its royalty rights did apply to products made by Genentech licensees using the
genetic engineering techniques protected by the Riggs-Itakura patents. Genentech,
on the other hand, argued that the DNA use requirement and the patent
infringement requirement applied to Article 6.08’s provision concerning licensing
to third parties, as well as to Article 7.02’s provision pertaining to Genentech’s
monetary recoveries for the infringement of patents by certain companies.
The jury found that Genentech had breached the contract with City of
Hope, breached its fiduciary duty to City of Hope, and acted with fraud and
malice. It awarded City of Hope compensatory damages of $300,164,030 (the
exact amount City of Hope had claimed as unpaid royalties it was owed by
Genentech), and $200 million in punitive damages.
The Court of Appeal affirmed. We granted Genentech’s petition for
review. Below, we discuss Genentech’s contentions.
II
A. Fiduciary Relationship
Genentech contends that no fiduciary relationship arose from its contract
with City of Hope, thus requiring reversal of the jury’s award of punitive damages.
We agree.
“[B]efore a person can be charged with a fiduciary obligation, he must
either knowingly undertake to act on behalf and for the benefit of another, or must
enter into a relationship which imposes that undertaking as a matter of law.”
(Committee on Children’s Television, Inc. v. General Foods Corp. (1983) 35
Cal.3d 197, 221 (Children’s Television).)
There is no indication in the contract that Genentech entered into it with the
view of acting primarily for the benefit of City of Hope. Article 1 of the contract
9
envisions a mutually beneficial relationship between the parties, as particularized
in these provisions: Article 1.03 expresses Genentech’s desire to acquire from
City of Hope synthetic DNA for the purpose of manufacturing and selling certain
polypeptides. Article 1.04 states that City of Hope would receive funding from
Genentech to conduct the DNA synthesis work and would earn royalties from
Genentech’s sales. Article 3.04 gives Genentech exclusive ownership of patents
and other proprietary property stemming from City of Hope’s work under the
contract. And Article 10.01 gives Genentech the right to assign and transfer its
contractual rights, including patents and patent licenses. These contractual
provisions indicate that the parties’s common goal was to achieve a mutually
beneficial arrangement, not that Genentech had undertaken a fiduciary obligation
“to act on behalf of and for the benefit of another.” (Children’s Television, supra,
35 Cal.3d at p. 221.) And nothing in the contract indicates that Genentech was to
subordinate its interests to those of City of Hope (id. at p. 222), a point conceded
by City of Hope.
Nor is there a factual basis showing that Genentech through its conduct
“knowingly” undertook the obligations of a fiduciary. (Children’s Television,
supra, 35 Cal.3d at p. 221; Chodos, The Law of Fiduciary Duties (2000) § 1.19,
pp. 42-44 (Chodos).) The jury here was not instructed on, was not asked to
determine, and did not decide that issue.
The remaining question then is whether an agreement to develop, patent,
and commercially exploit a secret scientific discovery in exchange for the payment
of royalties is the type of relationship “which imposes that undertaking [fiduciary
obligation to act on behalf of and for the benefit of another] as a matter of law.”
(Children’s Television, supra, 35 Cal.3d at p. 221.) Examples of such
relationships are a joint venture, a partnership, or an agency. (Chodos, supra,
§§ 1.6, 1.7, 1.8, 1.13, pp. 6-16, 23-29.) Here, Article 11.01 of the contract
10
expressly states that the parties’ relationship is not a joint venture, partnership, or
agency, and City of Hope has conceded that its fiduciary duty does not rest on that
basis. Those categories are merely illustrative of fiduciary relationships in which
fiduciary duties are imposed by law.
At the request of City of Hope, the trial court instructed the jury that a
“fiduciary relationship arises when a person entrusts a secret idea or device to
another under an arrangement whereby the other party agrees to develop, patent
and commercially exploit the idea in return for royalties.” The source of this jury
instruction is a Court of Appeal decision, Stevens v. Marco (1956) 147 Cal.App.2d
357 (Stevens). There the plaintiff invented a device that enabled airplane pilots to
quickly determine the proper functioning of indicator lights in airplane instrument
panels. The plaintiff, who had no experience with patents and product marketing,
entered into a contract with the defendant. The plaintiff agreed to assign to the
defendant all of his rights in the invention in exchange for a 3 percent interest in
any patent or 3 percent of all net sales, and the defendant agreed to develop the
plaintiff’s invention and to obtain patents in the defendant’s name. The defendant
developed the device, filed patent applications, and licensed manufacture of the
device to others. After years of working together, the defendant falsely told the
plaintiff that the plaintiff’s invention for which patents were pending conflicted
with an existing patent held by another, and he obtained a release from the
plaintiff. Years later, when the plaintiff learned that the defendant was still selling
plaintiff’s invention, he sued the defendant for breach of contract and for fraud.
The trial court granted the defendant’s motion for nonsuit. The Court of Appeal
reversed. (Id. at pp. 362-372, 385.)
After reviewing the nature of the transaction between the parties, the Court
of Appeal in Stevens concluded there was substantial evidence of a fiduciary
relationship between the parties based on the facts presented. (Stevens, supra, 147
11
Cal.App.2d at p. 376.) But, as we noted earlier, Stevens also included language
recognizing a new category of relationships in which a fiduciary obligation arises
by operation of law: “Where an inventor entrusts his secret idea or device to
another under an arrangement whereby the other party agrees to develop, patent
and commercially exploit the idea in return for royalties to be paid the inventor,
there arises a confidential or fiduciary relationship between the parties.” (Id. at
p. 373.) Here, City of Hope asserted at trial that this language from Stevens was
its “one theory” and the basis of its fiduciary duty claim against Genentech ever
“since the day [it] filed [the] complaint”; it asked the trial court to instruct the jury
in the Stevens language. Over Genentech’s objection, the court did so.
City of Hope insists the trial court’s instruction based on Stevens, supra,
147 Cal.App.2d at page 373, was correct because the relationship with Genentech
manifests these four characteristics that, according to City of Hope, are typical of a
fiduciary relationship: (1) one party entrusts its affairs, interests or property to
another; (2) there is a grant of broad discretion to another, generally because of a
disparity in expertise or knowledge; (3) the two parties have an “asymmetrical
access to information,” meaning one party has little ability to monitor the other
and must rely on the truth of the other party’s representations; and (4) one party is
vulnerable and dependent upon the other.
City of Hope acknowledges that none of these four characteristics standing
alone is determinative of the existence of a fiduciary relationship. We disagree
with City of Hope, however, that whenever the relationship between the parties
exhibits these four characteristics the relationship is necessarily fiduciary. (See
Chodos, supra, § 1:19, p. 44 [futile to try to identify single set of factors that give
rise to fiduciary relationship].)
For example, in Children’s Television, supra, 35 Cal.3d at pages 221-222,
we refused to recognize a fiduciary relationship between commercial sellers and
12
retail purchasers of breakfast cereals. It was there alleged that the sellers had
superior bargaining power and better access to information, and that the sellers
made representations and gave advice based on claimed expert knowledge in an
effort to exploit the trust and uncritical acceptance of children who in turn induced
their parents to buy the cereal. It could be said that there the purchasers entrusted
the health of their children to the sellers (factor 1 of City of Hope’s test), who
possessed the superior knowledge and expertise (factor 2), based on information
not available to the children or their parents (factor 3), who were thus vulnerable
and dependent on the sellers (factor 4). (See also Persson v. Smart Inventions, Inc.
(2005) 125 Cal.App.4th 1141, 1148, 1159-1162 [50 percent shareholder in a close
corporation did not owe fiduciary duties to shareholder being bought out when the
selling shareholder relied on the purchasing shareholder’s superior knowledge of
the corporate affairs and position]; Wolf v. Superior Court (2003) 107 Cal.App.4th
25 (Wolf) [no fiduciary relationship between author of a novel and a film studio to
which author had assigned his rights for possible commercial development in
return for percentage of future revenues].)
Also, the four characteristics articulated by City of Hope and discussed
above are common in many a contractual arrangement, yet do not necessarily give
rise to a fiduciary relationship. For example, a person who takes a car to a garage
for repairs has entrusted property to another (factor 1 of City of Hope’s test).
Because the garage operator has expertise in the field of automotive repair but the
car owner does not, the car owner must grant the garage operator broad discretion
to carry out the necessary work (factor 2) and must rely on the truth of the garage
operator’s representations about what repairs are needed and how they should be
done (factor 3), leaving the car owner vulnerable and dependent on the garage
operator (factor 4). Notwithstanding the presence of all these four factors, no
court has ever held or suggested, as far as we know, that in this situation the
13
garage operator owes fiduciary duties to the car owner. A similar situation might
be presented when a manufacturer entrusts its product to a retailer on
consignment.
This case illustrates that, contrary to the above-discussed overbroad
language of the Court of Appeal in Stevens, supra, 147 Cal.App.2d 357, a
fiduciary relationship is not necessarily created simply when one party, in
exchange for royalty payments, entrusts a secret invention to another party to
develop, patent, and market the eventual product. Here the contract was between
two sophisticated parties of substantial bargaining power. Throughout the
contractual negotiations, both parties were represented by counsel. The contract
stated that, in return for the payment of royalties to City of Hope, Genentech was
to be the sole owner of patents it would obtain for City of Hope’s scientific
discovery of synthetic DNA; that Genentech could assign and transfer its
contractual rights, including patents; and that the parties’ relationship was not one
involving agency, joint venture, or partnership, which are categories in which
fiduciary obligations are imposed by operation of law (Chodos, supra, §§ 1.6, 1.7,
1.8, 1.13, pp. 6-16, 23-29), but that City of Hope was to be an independent
contractor.
Was City of Hope vulnerable because it had to rely on Genentech’s
superior ability in obtaining patents and in marketing products based on the secret
scientific discovery of City of Hope scientists Drs. Riggs and Itakura? Yes, but
not to the extent that would necessarily warrant recognition of a fiduciary duty. It
is not at all unusual for a party to enter into a contract for the very purpose of
obtaining the superior knowledge or expertise of the other party. Standing alone,
that circumstance would not necessarily create fiduciary obligations, which
generally come into play when one party’s vulnerability is so substantial as to give
rise to equitable concerns underlying the protection afforded by the law governing
14
fiduciaries. (See generally Persson v. Smart Inventions, Inc., supra, 125
Cal.App.4th at p. 1161; Richelle L. v. Roman Catholic Archbishop (2003) 106
Cal.App.4th 257, 273.) Here, City of Hope has not made such a showing.
With respect to City of Hope’s claim that it reposed trust and confidence in
Genentech, we note that “[e]very contract requires one party to repose an element
of trust and confidence in the other to perform.” (Wolf, supra, 107 Cal.App.4th at
p. 31; see Nelson v. Abraham (1947) 29 Cal.2d 745, 750 [every contract calls for
the highest degree of good faith and honest dealing between the parties].) And
one party’s “ability to exploit a disparity of bargaining power” between the parties
does not necessarily create a fiduciary relationship. (Children’s Television, supra,
35 Cal.3d at p. 221, fn. 21.)
Misplaced is City of Hope’s reliance on this court’s decisions in Hollywood
M.P. Equipment Co. v. Furer (1940) 16 Cal.2d 184 (Furer) and in Schaake v.
Eagle Etc. Can Co. (1902) 135 Cal. 472 (Schaake). In Furer, the defendant bailee
misappropriated for his own use and profits the plaintiff bailor’s patterns for the
manufacture of devices based on the plaintiff’s inventions. In explaining why, in
order to state a claim for conversion, the plaintiff did not have to allege that his
inventions were secret, we said that when “a bailee of an article has accepted it
under definite terms to hold it and to use it for the benefit of the bailor, a
confidence has been reposed which should remain inviolate.” (Furer, supra, 16
Cal.2d at p. 188.) Furer concluded that the defendant as a bailee was liable for
conversion. (Id. at pp. 188-189.) Furer did not address the question of whether a
bailment necessarily creates fiduciary obligations.
Schaake, the other case relied on by City of Hope, involved an agreement
under which an employee assigned to his corporate employer various patents for
inventions, in return for which the employee retained an “indefeasible interest,”
the equivalent of 25 percent, in the profits. In discussing the sufficiency of the
15
pleadings, this court in passing observed that “[t]he relation thus created was
fiduciary.” (Schaake, supra, 135 Cal. at p. 485.) That language was unnecessary
to the holding in Schaake because under the contract the employee had an implicit
right to an accounting. (Id. at pp. 475-476, 484-485; Wolf, supra, 107 Cal.App.4th
at p. 34 & fn. 7.) This passing observation in Schaake was mere dictum and
therefore lacking any precedential force. (Hassan v. Mercy American River
Hospital (2003) 31 Cal.4th 709, 716.)
Thus, this court’s holdings in Furer, supra, 16 Cal.2d 184, and in Schaake,
supra, 135 Cal. 472, lend no support to City of Hope’s argument that the nature of
its contractual relationship with Genentech necessarily imposed fiduciary
obligations on Genentech.
Genentech cites the Court of Appeal’s decision in Wolf, supra, 107
Cal.App.4th 25, in arguing that its relationship with City of Hope was not
fiduciary. In Wolf, the plaintiff, author of a novel entitled Who Censored Roger
Rabbit? entered into a contract with Walt Disney Pictures and Television (Disney).
In the contract, the plaintiff assigned to Disney his rights to the novel and the
Roger Rabbit characters; in exchange, Disney agreed, among other things, to pay
the plaintiff a percentage of net profits from a motion picture based on the novel,
and 5 percent of any future gross receipts earned from merchandising or
commercially exploiting the Roger Rabbit characters. Disney was given the right
to assign or license any of its rights under the contract. (Id. at pp. 27-28.) And the
contract expressly stated that the relationship of the parties was that of creditor-
debtor and not that of a partnership or a joint venture, either one of which is a
fiduciary relationship created by operation of law. (Id. at p. 28, fn. 5.)
After Disney developed and coproduced a highly successful motion picture
entitled Who Framed Roger Rabbit, the plaintiff sued Disney for breach of
contract and for breach of fiduciary duty, alleging that Disney had impaired his
16
contractual audit right by refusing him access to Disney’s records. The trial court
sustained Disney’s demurrer to the fiduciary duty cause of action. The Court of
Appeal affirmed.
The Court of Appeal in Wolf concluded that a fiduciary duty did not arise
simply from the plaintiff’s contractual right to receive compensation contingent
upon the receipt of future revenues (contingent compensation), or from the profit-
sharing provisions of the agreement, or from the plaintiff’s contractual right to an
accounting, but that the profit-sharing provisions of the contract did shift the
burden of proof to the defendant to prove compliance with the contractual
payment obligations. (Wolf, supra, 107 Cal.App.4th at pp. 28-36.)
Wolf reasoned that because every contract to some extent requires a party to
repose trust and confidence in the other, one party’s right to contingent
compensation, standing alone, does not give rise to a fiduciary duty. (Wolf, supra,
107 Cal.App.4th at p. 31.) Wolf also noted that one party’s right to an accounting
by the other party is a remedy that by itself is insufficient to give rise to fiduciary
duties on the part of the party with the duty to render an accounting. (Id. at pp. 33-
34.) And Wolf, at page 32, distinguished Stevens by noting that the court there
recognized a factual basis for concluding that a fiduciary relationship existed
between the parties. (See Stevens, supra, 147 Cal.App.2d at p. 374 [“the jury
might also have found, as a matter of fact, that the parties were allied in an
enterprise similar to that of joint venturers for mutual gain”]; see also Nelson v.
Abraham, supra, 29 Cal.2d at p. 750 [disputed evidence of existence of joint
venture presents question of fact]; Universal Sales Corp. v. Cal. etc. Mfg. Co.
(1942) 20 Cal.2d 751, 765 [joint venture may be implied from conduct of the
contractual parties]; April Enterprises, Inc. v. KTTV (1983) 147 Cal.App.3d 805,
820 [conduct of parties may create a joint venture despite an express declaration in
a contract to the contrary].)
17

We agree with the holding in Wolf, supra, 107 Cal.App.4th 25, that
fiduciary obligations are not necessarily created when one party entrusts valuable
intellectual property to another for commercial development in exchange for the
payment of compensation contingent on commercial success. The secrecy of
information provided by one party to another — here the scientific discovery by
City of Hope — may be considered by the trier of fact in deciding whether a
fiduciary relationship exists, but it does not compel the imposition of fiduciary
duties by operation of law. (See Davies v. Krasna (1975) 14 Cal.3d 502, 511
[submission of a written story in confidence to another “may impose upon [the
other] a duty to refrain from unauthorized disclosure of the idea, but [it is]
insufficient to impose upon him the fiduciary-like duties”]; Chodos, supra, § 1:21,
p. 55 [mere receipt of confidential information does not create fiduciary duty].)
Accordingly, we conclude that the trial court here erred in instructing the
jury that a fiduciary relationship is necessarily created when a party, in return for
royalties, entrusts a secret idea to another to develop, patent, and commercially
develop.2 Because fiduciary duties do not necessarily arise from this type of
relationship, City of Hope’s only theory at trial for claiming a fiduciary
relationship with Genentech was legally invalid, and therefore the judgment
against Genentech is defective insofar as it is based on the jury’s finding that
Genentech breached fiduciary duties owed to City of Hope. (See Amelco Electric
v. City of Thousand Oaks (2002) 27 Cal.4th 228, 238.) The only other ground for
the jury’s imposition of liability against Genentech was the jury’s finding that

2
Because we conclude that Genentech was not in a fiduciary relationship
with City of Hope, we need not decide whether Genentech’s obtaining patents
based on City of Hope’s scientific discovery could have terminated a fiduciary
duty.
18


Genentech had breached its contract with City of Hope. Because punitive
damages may not be awarded for breach of contract (Cates Construction, Inc. v.
Talbot Partners (1999) 21 Cal.4th 28, 61), the award of punitive damages must be
set aside.
We now consider Genentech’s challenges to the judgment against it
awarding compensatory damages for breach of contract.
B. Breach of Contract
City of Hope’s lawsuit against Genentech not only had a cause of action for
breach of fiduciary duty but also one for breach of contract. City of Hope alleged
that Genentech had breached the contract by failing to pay or report to City of
Hope the full royalties due under the contract, and by failing to give City of Hope
full access to Genentech’s records to accurately determine the full royalties owed.
On this claim, the jury returned a verdict in favor of City of Hope. Genentech
challenges that verdict on a number of grounds.

1. Claim that jury was prejudiced against Genentech by evidence

admitted
Genentech argues that certain evidence admitted at trial on the issue of
breach of fiduciary duty improperly influenced the jury in rendering a verdict
against Genentech on City of Hope’s breach of contract claim. Although
Genentech phrases its argument in terms of admission of evidence, it cites not to
the evidence admitted but to comments by opposing counsel during closing
argument to the jury and to a jury instruction on the fiduciary duty to act in good
faith and make full disclosure.
Genentech
characterizes
opposing counsel’s use of the word “concealment”
at trial as inflammatory, and it complains that by linking issues of concealment,
credibility, and contract, City of Hope successfully “leveraged” its “concealment
evidence” to obtain a verdict against Genentech on the breach of contract claim.
19


Genentech characterizes that “concealment evidence” as lacking probative value
on the breach of contract claim, and it asserts that admission of that evidence
prejudiced it because the trial was a “close case.”
Evidence that Genentech concealed from City of Hope information about a
number of licenses that Genentech had issued to certain companies was admissible
on the claim that Genentech had breached the contract by failing to fully report
royalties owed to City of Hope and by denying it access to Genentech’s records to
determine those royalties. As City of Hope points out, that evidence was relevant
and admissible for three purposes: (1) to refute Genentech’s claim that City of
Hope’s failure to challenge Genentech’s performance under the contract
demonstrated that it agreed with Genentech’s interpretation of the contract; (2) to
support City of Hope’s argument that the concealment showed that Genentech
itself did not believe its asserted interpretation of the contract; and (3) to counter
Genentech’s argument that City of Hope’s breach of contract claim was barred by
the applicable statute of limitations because City of Hope should have known
earlier of Genentech’s breach of contract.3
A party’s conduct occurring between execution of the contract and a
dispute about the meaning of the contract’s terms may reveal what the parties
understood and intended those terms to mean. For this reason, evidence of such
conduct, including concealment of certain information, is admissible to resolve

3
Our conclusion that the evidence was admissible makes it unnecessary for
us to address City of Hope’s assertion that Genentech has forfeited appellate
review of its claim pertaining to the admission of evidence of concealment
because it did not object to the introduction of such evidence at trial, did not
request a limiting instruction, did not ask the trial court to bifurcate trial of the
contract cause of action from the trial of the fiduciary duty cause of action, and
neither objected to City of Hope counsel’s comments during closing argument nor
requested that the trial court give a curative admonition to the jury.
20


ambiguities in the contract’s language. (Oceanside 84 Ltd. v. Fidelity Federal
Bank (1997) 56 Cal.App.4th 1441, 1449.) Therefore, on City of Hope’s claim
here for breach of contract, the trial court properly admitted evidence that
Genentech concealed certain information from City of Hope after execution of the
contract but before a dispute arose about the meaning of particular terms in the
contract.4
During closing argument, City of Hope’s counsel asked the jury that, in
determining witness credibility, it consider the witnesses’ conflicting testimony
about the meaning of key contract provisions; and counsel argued that determining
witness credibility was important in deciding City of Hope’s claim for breach of
contract. Genentech challenges the propriety of this argument. We perceive no
impropriety. Genentech’s Tom Kiley and City of Hope’s John Hall, the attorneys
who had negotiated the contract, gave widely divergent testimony about what the
parties understood certain contractual provisions to mean. Deciding which of
these two witnesses to believe was a credibility determination for the jury, which
had the task of interpreting the contract. Nor are we persuaded by Genentech’s
related claim that it was improper for City of Hope’s counsel to tell the jurors,

4
Inapposite here are the cases Genentech cites in support of its claim that the
jury’s breach of contract verdict against it should be set aside. In Fidler v.
Hollywood Park Operating Co.
(1990) 223 Cal.App.3d 483, 489, and in Fed. Sav.
& Loan Ins. Corp. v. T.F. Stone Liberty Land Assocs.
(Tex. 1990) 787 S.W.2d
475, 493-494, the verdicts were reversed because extraneous and inadmissible
prejudicial evidence was admitted. Banks v. Crowner (Wyo. 1985) 694 P.2d 101
was an affirmance of a trial court’s ruling excluding evidence as irrelevant and
prejudicial, and therefore it is not a decision involving a claim of alleged
erroneous admission of evidence, as asserted here. And Rojas v. Richardson (5th
Cir. 1983) 703 F.2d 186, itself reversed on rehearing in Rojas v. Richardson (5th
Cir. 1983) 713 F.2d 116, involved a reference by counsel in closing argument
describing the plaintiff as an “illegal alien,” a comment that was neither relevant
nor supported by the evidence.
21


during closing argument, that in resolving witness credibility issues they should
consider the “big picture” and not get lost in the minutiae of the contractual
language.
Genentech also challenges opposing counsel’s comment to the jury that it
had to decide the breach of contract claim before resolving the breach of fiduciary
duty claim. That comment was appropriate because it reflected what the verdict
forms told the jury to do: to decide the breach of contract claim before the
fiduciary duty claim.
Genentech
complains
about a jury instruction stating that fiduciary duties
include acting in the utmost good faith and making full and fair disclosure of facts
“which materially affect City of Hope’s rights and interests under the 1976
agreement.” Genentech appears to argue that the instruction improperly linked the
contract claim to the fiduciary duty claim, so that a finding in City of Hope’s favor
on one would necessarily require a finding for City of Hope on the other as well.
Not so. The jury was also instructed that it was to decide City of Hope’s breach of
contract claim separately from City of Hope’s breach of fiduciary duty claim.
These instructions, which we presume the jury followed (Cassim v. Allstate Ins.
Co. (2004) 33 Cal.4th 780, 803), adequately distinguished the two claims.
2. Genentech’s challenge to the general verdict
The jury returned a general verdict finding Genentech liable for, among
other things, having breached the contract with City of Hope. Genentech contends
interpretation of the contract was a question of law that should have been decided
by the trial court, not the jury. Genentech argues the trial court should have asked
the jury to make special findings on pertinent questions of fact, after which the
court, taking into account the jury’s special findings, should have undertaken the
task of interpreting the contract. We disagree.
22

Juries are not prohibited from interpreting contracts. Interpretation of a
written instrument becomes solely a judicial function only when it is based on the
words of the instrument alone, when there is no conflict in the extrinsic evidence,
or a determination was made based on incompetent evidence. (Parsons v. Bristol
Development Co. (1965) 62 Cal.2d 861, 865; Estate of Platt (1942) 21 Cal.2d 343,
352.)5 But when, as here, ascertaining the intent of the parties at the time the
contract was executed depends on the credibility of extrinsic evidence, that
credibility determination and the interpretation of the contract are questions of fact
that may properly be resolved by the jury (Warner Constr. Corp. v. City of Los
Angeles (1970) 2 Cal.3d 285, 289 [“since the interpretation of the crucial
provisions turned on the credibility of expert testimony, the court did not err in
submitting the construction of the contract to the jury”]).
This rule — that the jury may interpret an agreement when construction
turns on the credibility of extrinsic evidence — is well established in our case law.
(See, e.g., Warner Constr. Corp. v. City of Los Angeles, supra, 2 Cal.3d at p. 289;
Fischer v. First Internat. Bank (2003) 109 Cal.App.4th 1433, 1443; Horsemen’s
Benevolent & Protective Assn. v. Valley Racing Assn. (1992) 4 Cal.App.4th 1538,

5
Genentech relies on tort cases to support its assertion that the existence of a
legal duty is always a question of law. (E.g., Merrill v. Navegar, Inc. (2001) 26
Cal.4th 465, 477; Alcaraz v. Vece (1997) 14 Cal.4th 1149, 1162; Ann M. v. Pac.
Plaza Shopping Ctr.
(1993) 6 Cal.4th 666, 674.) Whether a duty exists under tort
law is indeed a question of law based on a balancing of various considerations.
(Rowland v. Christian (1968) 69 Cal.2d 108, 112-113.) Here, however, the legal
duty arises under the law of contracts, not torts. The existence of a contractual
legal duty is determined by the terms of the parties’ contract. (Pacific Gas & E.
Co. v. G. W. Thomas Drayage etc. Co.
(1968) 69 Cal.2d 33, 38 [“the intention of
the parties as expressed in the contract is the source of contractual rights and
duties”].) It does not entail balancing policy considerations, as is done under tort
law.
23


1562; Kaufman & Broad Bldg. Co. v. City & Suburban Mortgage Co. (1970) 10
Cal.App.3d 206, 216.) California’s jury instructions reflect this (Judicial Council
of Cal. Civ. Jury Instns. (2008) CACI No. 314; Com. to BAJI No. 10.75 (9th ed.
2002) p. 407), as do authoritative secondary sources (11 Williston on Contracts
(4th ed. 2006) § 30:7, pp. 87-91; Rest.2d Contracts, § 212, subd. (2), p. 125).
In arguing to the contrary, Genentech relies on three Court of Appeal
decisions: De Guere v. Universal City Studios, Inc. (1997) 56 Cal.App.4th 482,
505-506 (De Guere); Medical Operations Management, Inc. v. National Health
Laboratories, Inc. (1986) 176 Cal.App.3d 886, 892, fn. 4 (Medical Operations);
and Estate of Casey (1982) 128 Cal.App.3d 867, 871 (Casey). Genentech’s
reliance is misplaced.
In
Medical Operations, supra, 176 Cal.App.3d 886, a breach of contract
case in which the evidentiary facts were not in conflict, the Court of Appeal
suggested that if the evidence had been in conflict, a procedure “more in keeping
with the rationale of Parsons [v. Bristol Development Co., supra, 62 Cal.2d 861]”
would have been for the jury to make special findings and the trial court to
interpret the contract. (Id., at p. 892, fn. 4.) By using the phrase “more in
keeping,” the Court of Appeal in Medical Operations simply indicated a procedure
that trial courts could use, not one that trial courts must use. Code of Civil
Procedure section 625 supports our conclusion that a trial court is not required to
submit special verdicts to the jury when construction of a written instrument turns
on the credibility of extrinsic evidence. That statute states: “In all cases the court
may direct the jury to find a special verdict in writing, upon all, or any of the
issues, and in all cases may instruct them, if they render a general verdict, to find
upon particular questions of fact, to be stated in writing, and may direct a written
finding thereon.” (Ibid., italics added.) (See also Li v. Yellow Cab. Co. (1975) 13
24
Cal.3d 804, 824, fn. 18 [§ 625 “reposes the matter of special findings within the
sound discretion of the trial court”].)
Casey, supra, 128 Cal.App.3d 867, the second case relied on by Genentech,
involved an issue of probate, not contract, law. At issue was the admissibility of
extrinsic evidence to show the testator’s intent. (128 Cal.App.3d at pp. 871-873.)
Casey did state that once a jury determines the facts, “the interpretation of the
testator’s intent to be drawn from the established facts, is a matter of law for the
court.” (Id. at p. 871.) Because the extrinsic evidence offered in Casey sought to
give the will a meaning to which it was not reasonably susceptible, it was
inadmissible. Therefore, the Casey court’s statement in question was unnecessary
to its decision and as such mere dictum lacking precedential force. (Hassan v.
Mercy American River Hospital, supra, 31 Cal.4th at p. 716.) Moreover, the
statement is inconsistent with the statutory and decisional law we just discussed in
the preceding paragraph.
With respect to De Guere, supra, 56 Cal.App.4th 482, the remaining case
relied on by Genentech, the Court of Appeal there simply quoted language from
Medical Operations, supra, 176 Cal.App.3d 886, and Casey, supra, 128
Cal.App.3d 867, without any accompanying analysis. (De Guere, supra, 56
Cal.App.4th at pp. 505-506.) Thus, De Guere provides no additional support for
Genentech’s position.
We conclude that the trial court here did not err in having the jury resolve
the breach of contract claim.6

6
This conclusion renders it unnecessary to address City of Hope’s assertion
that because Genentech had proposed the general verdict form that the trial court
provided to the jury, and did not request special findings by the jury, Genentech
has forfeited its claim that special verdicts are required in contract cases.
25


3. Jury instruction on resolving uncertainty in contract language
The trial court gave the jury a series of instructions on the rules governing
contract interpretation. The last of these instructions stated: “If, after considering
the evidence in light of the foregoing rules of interpretation, there remains an
uncertainty in the language of the contract, that language must be interpreted
against the party who caused the uncertainty to exist.” Genentech contends that
the trial court erred in giving this jury instruction because the rule it states does not
apply to contracts that are the result of negotiations, as was the contract between
Genentech and City of Hope. Genentech relies on this statement from a 1962
Court of Appeal decision: “The contract . . . here is not like an insurance policy to
be construed against one party. Rather, its terms were admittedly arrived at by
negotiations between two parties.” (Indenco, Inc. v. Evans (1962) 201 Cal.App.2d
369, 375.)
Genentech reads too much into the quoted statement. Because “the insurer
typically drafts policy language, leaving the insured little or no meaningful
opportunity or ability to bargain for modifications,” ambiguities in policy
provisions are generally resolved against the insurer and in favor of coverage.
(AIU Ins. Co. v. Superior Court (1990) 51 Cal.3d 807, 822.) The statement that a
negotiated agreement “is not like an insurance policy to be construed against one
party” (Indenco, Inc. v. Evans, supra, 201 Cal.App.2d at p. 375) simply means that
special construction rules for insurance policies or similar types of adhesion
contracts are not applicable to other type of agreements, and that instead the
general rules of contract interpretation are to be used.
The challenged jury instruction at issue here is taken almost verbatim from
Civil Code section 1654, which provides: “In cases of uncertainty not removed by
the preceding rules, the language of a contract should be interpreted most strongly
against the party who caused the uncertainty to exist.” The trial court’s instruction
26


thus embodies a general rule of contract interpretation that was applicable to the
negotiated agreement between Genentech and City of Hope. It may well be that in
a particular situation the discussions and exchanges between the parties in the
negotiation process may make it difficult or even impossible for the jury to
determine which party caused a particular contractual ambiguity to exist, but this
added complexity does not make the underlying rule irrelevant or inappropriate for
a jury instruction. We conclude, accordingly, that the trial court here did not err in
instructing the jury on Civil Code section 1654’s general rule of contract
interpretation.
4. Admission of evidence of prior settlement
In 1995, before the lawsuit in this case was brought, Genentech and City of
Hope settled a dispute concerning Genentech’s settlement of its lawsuit against Eli
Lilly for patent infringement. At the trial in this case, the court allowed City of
Hope to present evidence of its settlement with Genentech under which Genentech
agreed to pay City of Hope royalties on Eli Lilly’s sales of products that did not
use City of Hope’s synthesized DNA. Genentech contends this evidence should
have been excluded under Evidence Code section 1152, subdivision (a), as
evidence of a prior settlement. Genentech, however, stipulated to admission of
this evidence. Therefore it is now barred from raising this claim.
Controlling here is the general rule that stipulations pertaining to the
admission of evidence, absent an express limitation, apply to a later trial of the
same action, unless the trial court allows the stipulation to be withdrawn.
(Gonzales v. Pacific Greyhound Lines (1950) 34 Cal.2d 749, 755; Harris v.
Spinali Auto Sales, Inc. (1966) 240 Cal.App.2d 447, 453-454.) Before
commencement of the first trial in this case, Genentech stipulated to the admission
into evidence of its 1995 settlement with City of Hope on the Eli Lilly matter and
documents relating to that settlement. Then, after the first trial but before
27
commencement of the second trial in this case, Genentech moved to exclude the
evidence at issue. The trial court ruled that all stipulations made at the first trial
were binding at the second trial. Because the trial court did not allow Genentech’s
stipulation to be withdrawn, it is binding here. Misplaced is Genentech’s reliance
on two Court of Appeal decisions, Brunt v. Occidental Life Ins. Co. (1963) 223
Cal.App.2d 179, 183, and Duncan v. Garrett (1959) 176 Cal.App.2d 291, 294.
Those decisions concern this principle: “When a particular legal conclusion
follows from a given state of facts, no stipulation of counsel can prevent the court
from so declaring it.” (San Francisco Lumber Co. v. Bibb (1903) 139 Cal. 325,
326.) The stipulation here pertained not to a legal conclusion but to the admission
of evidence.
III
The judgment of the Court of Appeal is reversed with directions that the
Court of Appeal modify the trial court’s judgment to award City of Hope
$300,164,030 as damages on its breach of contract claim, striking the award of
punitive damages on its breach of fiduciary duty claim, and as so modified to
affirm the judgment.
KENNARD,
J.
WE CONCUR:
GEORGE, C. J.
BAXTER, J.
CHIN, J.
MORENO, J.
28
CORRIGAN, J.
LAMBDEN, J.*

*
Associate Justice of the Court of Appeal, First Appellate District, Division
Two, assigned by the Chief Justice pursuant to article VI, section 6 of the
California Constitution.
29



See last page for addresses and telephone numbers for counsel who argued in Supreme Court.

Name of Opinion City of Hope National Medical Center v. Genentech, Inc.
__________________________________________________________________________________

Unpublished Opinion


Original Appeal
Original Proceeding
Review Granted
XXX 123 Cal.App.4th 306
Rehearing Granted

__________________________________________________________________________________

Opinion No.

S129463
Date Filed: April 24, 2008
__________________________________________________________________________________

Court:

Superior
County: Los Angeles
Judge: Edward Y. Kakita*

__________________________________________________________________________________

Attorneys for Appellant:

Howard, Rice, Nemerovski, Canady, Falk & Rabkin, Jerome B. Falk, Jr., Steven L. Mayer, Amy L. Bomse;
Keker & Van Nest, Robert A. Van Nest, Susan J. Harriman, Kara M. Andersen, Steven A. Hirsch;
Skadden, Arps, Slate, Meagher & Flom, Raoul D. Kennedy, Jeff G. Randall; Quinn Emanuel Urquhart
Oliver & Hedges, Kathleen M. Sullivan, Daniel H. Bromberg and Victoria Maroulis for Defendant and
Appellant.

Paul, Hastings, Janofsky & Walker and Kevin C. McCann for Biotechnology Industry Organization as
Amicus Curiae on behalf of Defendant and Appellant.

Susan Liebeler; Daniel J. Popeo, Paul D. Kamenar; Zacks Utrecht & Leadbetter and Paul F. Utrecht for
Washington Legal Foundation as Amicus Curiae on behalf of Defendant and Appellant.

Hugh F. Young, Jr.; Gibson, Dunn & Crutcher, Theodore J. Boutrous, William E. Thomson and J.
Christopher Jennings for Product Liability Advisory Council, Inc., as Amicus Curiae on behalf of
Defendant and Appellant.

Leopold, Petrich & Smith and Louis P. Petrich for Motion Picture Association of America, Inc., as Amicus
Curiae on behalf of Defendant and Appellant.

Wilmer Cutler Pickering Hale and Dorr, Nader Mousavi, Mark C. Fleming, Seth P. Waxman and Edward
C. DuMont for Biogen Idec Inc., as Amicus Curiae on behalf of Defendant and Appellant.

Thomas W. Burt, Timothy G. Fielden; Munger, Tolles & Olson, Gregory P. Stone and Rohit K. Singla for
Microsoft Corporation as Amicus Curiae on behalf of Defendant and Appellant.

Fred J. Hiestand for The Civil Justice Association of California as Amicus Curiae on behalf of Defendant
and Appellant.

*Retired judge of the Los Angeles Superior Court, assigned by the Chief Justice pursuant to article VI,
section 6 of the California Constitution.


Page 2 – S129463 – counsel continued

Attorneys for Appellant:

Pillsbury Winthrop Shaw Pittman, Bruce A. Ericson and Robert J. Nolan for California Healthcare Institute
as Amicus Curiae on behalf of Defendant and Appellant.

Sheppard, Mullin, Richter & Hampton, Martin D. Katz, Lisa N. Stutz, Jean-Paul Jassy and Jeremiah
Reynolds for Intel Corporation as Amicus Curiae on behalf of Defendant and Appellant.

D. Bruce Sewell, Janet Craycroft; Thomas R. Lavelle; Fred Main; Erika Frank; Jim Hawley; National
Chamber Litigation Center and Robin S. Conrad for Chamber of Commerce of the United States of
America, California Chamber of Commerce and Technet as Amici Curiae on behalf of Defendant and
Appellant.

Skadden, Arps, Slate, Meagher & Flom and Jeff G. Randall for eBay, Inc., Xilinx, Inc., The Charles
Schwab Corporation, Electronic Arts, Inc. Apple Computer, Inc, Applied Materials, Inc, and NVIDIA
Corporation as Amici Curiae on behalf of Defendant and Appellant.

Michael S. Kwun and Thomas R. Lavelle for Google Inc., and Xilinx, Inc., as Amici Curiae on behalf of
Defendant and Appellant.
__________________________________________________________________________________

Attorneys for Respondent:

Horvitz & Levy, Ellis J. Horvitz; Eisenberg and Hancock, Jon B. Eisenberg, William N. Hancock; Irell &
Manella, Morgan Chu, Gregory R. Smith, David I. Gindler, Joseph M. Lipner; Reed Smith Crosby Heafy,
Reed Smith, Peter W. Davis, James C. Martin; Akin Gump Strauss Hauer & Feld and William A. Norris for
Plaintiff and Respondent.

Lascher & Lascher and Wendy Cole Lascher for The Academy of Applied Science as Amicus Curiae on
behalf of Plaintiff and Respondent.

Law Offices of Roman Melnik and Roman Melnik for United Inventors Association and Inventions,
Patents and Trademarks Company as Amici Curiae on behalf of Plaintiff and Respondent.

Raisin & Kavcioglu, Armenak Kavcioglu, Aren Kavcioglu for Ian Ayres as Amicus Curiae on behalf of
Plaintiff and Respondent.

Rodriguez, Horii & Choi and Reynolds T. Cafferata for Tamar Frankel as Amicus Curiae on behalf of
Plaintiff and Respondent.

Alschuler Grossman Stein & Kahan, Stanton L. Stein, Michael J. Plonsker, David S. Gubman and Carla A.
Veltman for Writers Guild of America, West, Inc., Directors Guild of America, Inc., and Screen Actors
Guild, Inc., as Amici Curiae on behalf of Plaintiff and Respondent.

Turner Green Afrasiabi & Arledge and Peter R. Afrasiabi for Memorial Sloan-Kettering Cancer Center,
Los Angeles Biomedical Research Institute, Board of Trustees of the University of Illinois, Loma Linda
University Adventist Health Sciences Center and California Association of Nonprofits as Amici Curiae on
behalf of Plaintiff and Respondent.



Counsel who argued in Supreme Court (not intended for publication with opinion):

Jerome B. Falk, Jr.
Howard, Rice, Nemerovski, Canady, Falk & Rabkin
Three Embarcadero Center, 7th Floor
San Francisco, CA 94111-4024
(415) 434-1600

Peter W. Davis
Reed Smith
355 South Grand Avenue, Suite 2900
Los Angeles, CA 90071
(213) 457-8000


Petition for review after the Court of Appeal affirmed the judgment in a civil action. This case addresses claims of breach of fiduciary duty and breach of contract. The case asks whether an inventor or researcher's entrusting of a new idea or discovery to another under an arrangement providing for the other party to develop, patent, and commercially exploit the idea or discovery in return for royalties to be paid to the inventor or researcher, forms a fiduciary relationship between the two parties that may give rise to punitive damages. In addition, the case asks whether the evidence introduced by City of Hope at trial to prove the fiduciary duty claim so prejudiced the jury as to require setting aside the jury's award of compensatory damages for breach of contract. The Supreme Court held that no fiduciary duty arose between the two parties and struck the punitive damages award. The Court did not find the evidence put forth on the fiduciary duty claim so prejudiced the jury as to warrant setting aside the compensatory damages award for the breach of contract claim.

Opinion Information
Date:Citation:Docket Number:Category:Status:Cross Referenced Cases:
Thu, 04/24/200843 Cal. 4th 375, 181 P.3d 142, 75 Cal. Rptr. 3d 333S129463Review - Civil Appealclosed; remittitur issued

GENENTECH v. S.C. (CITY OF HOPE) (S095718)


Parties
1City Of Hope National Medical Center (Plaintiff and Respondent)
Represented by Peter W. Davis
Reed Smith, LLP
2 Embarcadero Center, Suite 2000
San Francisco, CA

2City Of Hope National Medical Center (Plaintiff and Respondent)
Represented by Morgan Chu
Irell & Manella, LLP
1800 Avenue of the Stars, Suite 900
Los Angeles, CA

3City Of Hope National Medical Center (Plaintiff and Respondent)
Represented by Jon B. Eisenberg
Eisenberg & Hancock, LLP
1970 Broadway, Suite 1200
Oakland, CA

4City Of Hope National Medical Center (Plaintiff and Respondent)
Represented by Ellis J. Horvitz
Horvitz & Levy, LLP
15760 Ventura Boulevard, 18th Floor
Encino, CA

5City Of Hope National Medical Center (Plaintiff and Respondent)
Represented by William A. Norris
Akin Gump Strauss et al., LLP
2029 Century Park East, Suite 2400
Los Angeles, CA

6Genentech, Inc. (Defendant and Appellant)
Represented by Jerome B. Falk
Howard, Rice, Nemerovski, Canady, Falk & Rabkin
3 Embarcadero Center, 7th Floor
San Francisco, CA

7Genentech, Inc. (Defendant and Appellant)
Represented by Amy Lynne Bomse
Howard, Rice, Nemerovski, Canady, Falk & Rabkin
3 Embarcadero Center, 7th Floor
San Francisco, CA

8Genentech, Inc. (Defendant and Appellant)
Represented by Daniel Howard Bromberg
Quinn Emanuel Urquhart Oliver & Hedges
555 Twin Dolphin Drive, Suite 560
Redwood Shores, CA

9Genentech, Inc. (Defendant and Appellant)
Represented by Steven A. Hirsch
Keker & Van Nest
710 Sansome Street
San Francisco, CA

10Genentech, Inc. (Defendant and Appellant)
Represented by Raoul D. Kennedy
Skadden Arps Slate Meaghter & Flom, LLP
4 Embarcadero Center, Suite 3800
San Francisco, CA

11Genentech, Inc. (Defendant and Appellant)
Represented by Victoria Fishman Maroulis
Quinn Emanuel et al LLP
555 Twin Dolphin Dr #150
Redwood Shores, CA

12Genentech, Inc. (Defendant and Appellant)
Represented by Steven L. Mayer
Howard, Rice, Nemerovski, Canady, Falk & Rabkin
3 Embarcadero Center, 7th Floor
San Francisco, CA

13Genentech, Inc. (Defendant and Appellant)
Represented by Jeffrey Graham Randall
Skadden Arps Slate Meaghter & Flom, LLP
525 University Avenue
Palo Alto, CA

14Genentech, Inc. (Defendant and Appellant)
Represented by Kathleen Marie Sullivan
Quinn Emanuel et al LLP
555 Twin Dolphin Dr #560
Redwood Shores, CA

15Genentech, Inc. (Defendant and Appellant)
Represented by Robert Addy Jr. Vannest
Keker & Van Nest, LLP
710 Sansome Street
San Francisco, CA

16Biotechnology Industry Organization (Amicus curiae)
Represented by Kevin Craven Mccann
Paul Hastings Janofsky & Walker, LLP
55 Second Street, 24th Floor
San Francisco, CA

17Academy Of Applied Science (Amicus curiae)
Represented by Wendy Cole Lascher
Lascher & Lascher
605 Poli Street, P. O. Box 25540
Ventura, CA

18Memorial Sloan-Kettering Cancer Center (Amicus curiae)
Represented by Peter R. Afrasiabi
Turner Green et al., LLP
535 Anton Boulevard, Suite 850
Costa Mesa, CA

19Writers Guild Of America, Inc. (Amicus curiae)
Represented by David Stuart Gubman
Alschuler Grossman Stein & Kahan LLP
1620 - 26th Street, 4th Flr/North Tower
Santa Monica, CA

20Writers Guild Of America, Inc. (Amicus curiae)
Represented by Carla Andrea Veltman
Steptoe & Johnson LLP
2121 Avenue of the Stars, Suite 2800
Los Angeles, CA

21United Inventors Association (Amicus curiae)
Represented by Roman Melnik
Adjunct Professor of Patent Law, USC Law School
2991 Oneida Street
Pasadena, CA

22Frankel, Tamar (Amicus curiae)
765 Commonwealth Avenue
Boston, MA 02215

Represented by Tamar Frankel
Professor of Law, Boston University School of Law
765 Commonwealth Avenue
Boston, MA

23Frankel, Tamar (Amicus curiae)
765 Commonwealth Avenue
Boston, MA 02215

Represented by Reynolds Treat Cafferata
Rodriguez, Horii & Choi, LLP
777 S. Figueroa Street, Suite 3307
Los Angeles, CA

24Ayres, Ian (Amicus curiae)
127 Wall Street
New Haven, CT 06511

Represented by Ian Ayers
William K. Townsend Professor, Yale Law School
127 Wall Street
New Haven, CT

25Ayres, Ian (Amicus curiae)
127 Wall Street
New Haven, CT 06511

Represented by Armenak Kavcioglu
Raisin & Kavcioglu
16055 Ventura Boulevard, Suite 830
Encino, CA

26Washington Legal Foundation (Amicus curiae)
Represented by Daniel Popeo
Washington Legal Foundation
2009 Massachusetts Avenue., NW
Washington, DC

27Washington Legal Foundation (Amicus curiae)
Represented by Paul F. Utrecht
Attorney at Law
235 Montgomery Street, Suite 600
San Francisco, CA

28Google, Inc. (Amicus curiae)
Represented by Michael Soonuk Kwun
Google, Inc.
1600 Amphitheatre Parkway
Mountain View, CA

29Xilinx, Inc. (Amicus curiae)
Represented by Thomas Robert Lavelle
Xilinx, Inc./Legal
2100 Logic Drive
San Jose, CA

30Microsoft Corporation (Amicus curiae)
Represented by Gregory P. Stone
Munger, Tolles Et Al
560 Misison Street, 27th Floor
San Francisco, CA

31Chamber Of Commerce Of The United States Of America (Amicus curiae)
Represented by Robin S. Conrad
National Chamber Litigation Center, Inc.
1615 "H" Street, N.W.
Washington, DC

32California Chamber Of Commerce (Amicus curiae)
Represented by Robin S. Conrad
National Chamber Litigation Center, Inc.
1615 "H" Street, N.W.
Washington, DC

33California Chamber Of Commerce (Amicus curiae)
Represented by Erika Cuneo Frank
California Chamber of Commerce
1215 "K" Street, Suite 1400
Sacramento, CA

34Technet (Amicus curiae)
Represented by James Christophe Hawley
Technet
2600 East Bayshore Road, First Floor
Palo Alto, CA

35Ebay (Amicus curiae)
Represented by Jeffrey Graham Randall
Skadden Arps Slate Meaghter & Flom, LLP
525 University Avenue
Palo Alto, CA

36Biogen Idec, Inc. (Amicus curiae)
Represented by Mark C. C. Fleming
Wilmer Cutler Pickering Hale & Door, LLP
60 State Street
Boston, MA

37Biogen Idec, Inc. (Amicus curiae)
Represented by Nader Ali Mousavi
Wilmer Cutler Pickering Hale & Door, LLP
1117 California Avenue
Palo Alto, CA

38Biogen Idec, Inc. (Amicus curiae)
Represented by Seth Waxman
Wilmer Cutler Pickering Hale & Door, LLP
1875 Pennsylvania Avenue, NW
Washington, DC

39California Healthcare Institute (Amicus curiae)
Represented by Bruce A. Ericson
Pillsbury Winthrop Shaw Pittman, LLP
50 Fremont Street, P. O. Box 7880
San Francisco, CA

40Civil Justice Association Of California (Amicus curiae)
Represented by Fred James Hiestand
Attorney at Law
1121 "L" Street, Suite 404
Sacramento, CA

41Intel Corporation (Amicus curiae)
Represented by Martin D. Katz
Sheppard Mullin Richter & Hampton, LLP
1901 Avenue of the Stars, Suite 1600
Los Angeles, CA

42Intel Corporation (Amicus curiae)
Represented by Lisa Natalie Stutz
Sheppard Mullin Richter & Hampton, LLP
1901 Avenue of the Stars, Suite 1600
Los Angeles, CA

43Product Liability Advisory Council, Inc. (Amicus curiae)
Represented by Theodore J. Boutrous
Gibson Dunn & Crutcher, LLP
333 S. Grand Avenue
Los Angeles, CA

44Product Liability Advisory Council, Inc. (Amicus curiae)
Represented by Hugh F. Young
The Product Liability Advisory Council, Inc.
1850 Centennial Park Drive, Suite 510
Reston, VA

45Motion Picture Association Of America, Inc. (Amicus curiae)
Represented by Louis P. Petrich
Leopold Petrich & Smith
2049 Century Park East, Suite 3110
Los Angeles, CA


Opinion Authors
OpinionJustice Joyce L. Kennard

Disposition
Apr 24 2008Opinion: Reversed

Dockets
Nov 24 2004Petition for review filed
  Appellant ( Genentech).
Nov 24 2004Record requested
 
Nov 29 2004Received Court of Appeal record
 
Dec 14 2004Answer to petition for review filed
  resp. City of Hope Nat'l. Medical Center.
Dec 27 2004Reply to answer to petition filed
  By counsel for appellant {Genetech, Inc.,}.
Jan 11 2005Received:
  Letter from counsel for resp., dated 1-10-05.
Jan 13 2005Time extended to grant or deny review
  to Feb. 22, 2005.
Feb 2 2005Letter sent to:
  All parties enclosing a copy of the grant order and certification of interested entities or persons form.
Feb 2 2005Petition for review granted (civil case)
  George, C.J., Kennard, Baxter, Chin and Brown, JJ. Werdegar, J., was recused and did not participate.
Feb 3 20052nd record request
 
Feb 4 2005Received Court of Appeal record
 
Feb 10 2005Request for extension of time filed
  to April 4, 2005 to file appellant's opening brief on the merits.
Feb 16 2005Certification of interested entities or persons filed
  by Steven L. Mayer, Howard Rice et al., attorneys for Defendant/Appellant Genentech, Inc.
Feb 16 2005Extension of time granted
  On application of appellant and good cause appearing, it is ordered that the time to serve and file the opening brief on the merits is extended to and including April 4, 2005.
Feb 17 2005Certification of interested entities or persons filed
  respondent City of Hope National Medical Center
Mar 9 2005Received:
  Letter from Cooley Godward LLP dated 3-7-2005 advising that Jeffrey Randall is no longer with their firm and that the firm does not have any records reflecting appearance for any party in the action.
Mar 10 2005Letter sent to:
  Attorney Jeffrey Graham Randall at Skadden Arps Slate Meaghter & Flom LLP, as counsel for Appellant Genentech Inc., with a copy of the grant order and the Certification of Interested Entities and Persons form.
Apr 1 2005Request for extension of time filed
  by counsel for appellant Genentech, Inc.: requesting a 7-day extension to and including April 11, 2005 to file appellant's opening brief on the merits.
Apr 4 2005Extension of time granted
  To April 11, 2005 to file appellant's opening brief on the merits.
Apr 8 2005Received:
  Appellant Genentech's (oversize) opening brief on the merits, with application for permission.
Apr 12 2005Opening brief on the merits filed
  Appellant's
Apr 12 2005Order filed
  On application of Appellant Genentech, Inc. for permission to file oversized (18,919 words) Opening Brief on the Merits is hereby granted.
May 9 2005Association of attorneys filed for:
  Akin Gump Strauss Hauer & Feld LLP as co-counsel for respondent City of Hope National Medical Center [ Counsel of Record: Horvitz & Levy LLP, Irell & Manella LLP, and Reed Smith Crosby Heafy LLP ]
May 9 2005Request for extension of time filed
  for an extension to June 11, 2005, to file Respondent's Answer Brief on the Merits.
May 12 2005Extension of time granted
  To June 12, 2005 to file respondent's answer brief on the merits.
Jun 2 2005Request for extension of time filed
  to July 12, 2005 to file Respondent's Answer Brief on the Merits
Jun 6 2005Extension of time granted
  On application of Respondent and good cause appearing, it is ordered that the time to serve and file the Respondent's Answer Brief on the Merits is extended to and including July 12, 2005.
Jul 6 2005Request for extension of time filed
  Respondent requesting to August 11, 2005 to file answer brief on the merits.
Jul 6 2005Extension of time granted
  to and including August 11, 2005 for respondent to file answer brief on the merits. No further extensions of time are contemplated.
Aug 3 2005Request for extension of time filed
  to September 10, 2005, to file Respondent's Answer Brief on the Merits.
Aug 4 2005Extension of time granted
  On application of respondent and good cause appearing, it is ordered that the time to serve and file the answer brief on the merits is extended to and including September 10, 2005
Sep 13 2005Application filed to:
  file Answer Brief on the Meirts of 33,646 words, exceeding 14000 word limit (CRC 29.1(c) Received by Fed/Ex CRC 40.1(b)
Sep 19 2005Order filed
  The application of respondent for permission to file the answer brief on the merits containing 33,646 words that exceeds the 14,000 word limit prescribed by the California Rules of Court, rule 29.1(c)(1), by 19,646 words is hereby GRANTED.
Sep 19 2005Answer brief on the merits filed
  by Respondent City of Hope National Medical Center
Oct 3 2005Request for extension of time filed
  by counsel for appellant: requesting a 30-day extension to and including November 10, 2005 to file appellant's reply brief on the merits.
Oct 7 2005Extension of time granted
  To November 10, 2005 to file appellant's reply brief on the merits.
Nov 1 2005Request for extension of time filed
  requesting to 12-10-2005 to file appellant's reply brief on the merits
Nov 3 2005Extension of time granted
  On application of appellant and good cause appearing, it is ordered that the time to serve and file the reply brief on the merits is hereby extended to and including December 10, 2005.
Dec 7 2005Request for extension of time filed
  to 12-19-2005 to file appellant's reply brief on the merits.
Dec 9 2005Extension of time granted
  On application of appellant and good cause appearing, it is hereby ordered that the time to serve and file the reply brief on the merits is extended to and including December 19, 2005.
Dec 16 2005Application to appear as counsel pro hac vice filed
  Kathleen M. Sullivan of the State of California, Professor of Stanford Law School, in association with counsel of record for appellant (Genentech, Inc.)
Dec 20 2005Application to file over-length brief filed
  Appellant Genentech's reply brief on the merits.
Dec 28 2005Order filed
  On application of appellant for permission to file reply brief on the merits containing 11,977 words, that exceeds the 4200 word limit prescribed by California Rules of Court rule 29.1(c)(1) by 7,777 words is hereby granted.
Dec 28 2005Reply brief filed (case fully briefed)
 
Jan 13 2006Received application to file Amicus Curiae Brief
  Biotechnology Industry Organization, applicant Kevin McCann, counsel application and brief in support of appellant.
Jan 17 2006Permission to file amicus curiae brief granted
  The application of Biotechnology Industry Organization for permission to file an amicus curiae brief in support of appellant is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Jan 17 2006Amicus curiae brief filed
  Biotechnology Industry Organization in support of appellant.
Jan 18 2006Application to appear as counsel pro hac vice denied
  The application of Kathleen M. Sullivan to appear as counsel pro hac vice, and the motion of Defendant-Appellant Genentech, Inc., for an order granting that application, are denied. Applicant does not satisfy the eligibility requirements in that she resides and is regularly employed in California and has made repeated appearances as counsel pro hac vice in the previous two years. (Cal. Rules of Court, rule 983(a).) The application and motion do not establish grounds for exemption from eligibility requirements; they do not show that applicant possesses special expertise in a particular area of the law at issue in this proceeding. (Id., rule 983(e).) Werdegar, J., was recused and did not participate. Chin, J., was absent and did not participate. Moreno, J., is of the opinion the motion and application should be granted.
Jan 23 2006Request for extension of time filed
  by The Academy of Applied Science
Jan 24 2006Request for extension of time filed
  to 2-27-2006 to file the Amicus Curiae Brief of The Academy of Applied Science.
Jan 24 2006Received application to file Amicus Curiae Brief
  (application only with extension of time request to 2-24-2006) to file the Amicus Curiae Brief by Memorial Sloan-Kettering Cancer Center in support of respondent.
Jan 25 2006Received application to file Amicus Curiae Brief
  (application only with extension of time request to 2-27-2006 to file Amicus Curiae Brief by Writers Guild of America, Inc., Directors Guild of America, Inc. and Screen Actors Guild, Inc. in support of respondent.
Jan 25 2006Received application to file Amicus Curiae Brief
  with extension of time to 2-24-2006 by United Inventors Association to file the amicus curiae brief in support of respondent. Roman Melnik, counsel
Jan 26 2006Received:
  Application for permission to file Amicus Curiae Brief & Brief of The Product Liability Advisory Council, Inc. supporting appellant.
Jan 26 2006Received application to file Amicus Curiae Brief
  by Tamar Frankel with 31-day extension request to file amicus brief. Voice mail message for Attorney Frankel to return Henrietta's call at the S.F. Supreme Court Clerk's Office (415) 865-7007 regarding this filing.
Jan 27 2006Received application to file Amicus Curiae Brief
  and brief of California Healthcare Institute in support of appellant.
Jan 27 2006Request for extension of time filed
  by Ian Ayers, William K. Townsend Professor Yale Law School, with 28-day extension of time request to file amicus curiae brief in support of respondent. Attorney Associated with: Armenak Kavcioglu, Raisin & Kavcioglu, Encino, CA.
Jan 27 2006Received application to file Amicus Curiae Brief
  and brief of Washington Legal Foundation in support of appellant.
Jan 27 2006Application to appear as counsel pro hac vice filed
 
Jan 27 2006Received application to file Amicus Curiae Brief
  and brief of Google, Inc. and Xilinx, Inc. in support of appellant.
Jan 27 2006Received:
  application of Intel Corporation For Permission To File Brief of Amicus Curiae & Brief
Jan 27 2006Application to appear as counsel pro hac vice filed
  application of Tamar Frankel To Appear Pro Has Vice as Amicus Curiae
Jan 27 2006Received application to file Amicus Curiae Brief
  and brief (separate) of Microsoft corporation in support of appellant
Jan 27 2006Received application to file Amicus Curiae Brief
  and brief of The Chamber of Commerce of the United States of America, California Chamber of Commerce, and Technet in support of appellant. See (separate) pro hac vice application of Robin S. Conrad of the District of Columbia, D. C. Bar # 342774 on behalf of amicus curiae Chamber of Commerce of the U. S. of America.
Jan 27 2006Received application to file Amicus Curiae Brief
  and brief (separate) by eBAY, Inc., Xilinx, Inc., The Charles Schwab Corporation, Electronic Arts, Inc., Apple Computer, Inc., Applied Materials, Inc. and Nvidia Corporation in support of appellant.
Jan 27 2006Received:
  application For Leave To File Amicus Brief & Brief Of Motion Picture Association Of America, Inc.
Jan 27 2006Received application to file Amicus Curiae Brief
  and brief of Biogen Idec Inc. in support of appellant.
Jan 27 2006Application to appear as counsel pro hac vice filed
  Seth P. Waxman of Washington, D.C. on behalf of amicus Biogen Idec, Inc.
Jan 27 2006Application to appear as counsel pro hac vice filed
  by Mark C. Fleming of the State of Massachusetts.
Jan 27 2006Request for extension of time filed
  Application from Professor Ian Ayres for an Extension Of Time To File Application For Permission To File Amicus Curiae Brief supporting respondent.
Jan 30 2006Received application to file Amicus Curiae Brief
  and brief of Civil Justice Association of California in support of appellant (CRC 40.1(b))
Feb 1 2006Application to appear as counsel pro hac vice filed
  by Robin S. Conrad of Washington, D. C., on behalf of Amicus Chamber of Commerce of the United States of America.
Feb 3 2006Request for extension of time filed
  City Of Hope National Medical Center, respondent. Request extension of time to file answers to amicus curiae briefs
Feb 6 2006Received:
  Appellant's (Genentech) response to City of Hope's application for extension of time to fle answers to amicus curiae briefs.
Feb 7 2006Received:
 
Feb 8 2006Received:
  Letter from attorneys for appellant (Genentech, Inc.) in response to City of Hope's (Respondent) reply in support os its application for extension of time to file answers to amicus curiae briefs.
Feb 8 2006Permission to file amicus curiae brief granted
  The application of The Chamber of the United States of America, California Chamber of Commerce, and Technet for permission to file an amicus curiae brief in support of appellant is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Feb 8 2006Amicus curiae brief filed
  Chamber of the United States of America, California Chamber of Commerce, and Technet in support of appellant.
Feb 8 2006Application to appear as counsel pro hac vice granted
  The application of Robin S. Conrad of the State of Maryland and Washington D.C., (District of Columbia Bar #342772), for admission to appear as counsel pro hac vice on behalf of Amicus Curiae Chamber of Commerce of the United States of America is hereby granted. (See Cal. Rules of Court, rule 983.)
Feb 8 2006Permission to file amicus curiae brief granted
  The application of California Healthcare Institute for permission to file an amicus curiae brief in support of appellant is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Feb 8 2006Amicus curiae brief filed
  California Healthcare Institute in support of appellant.
Feb 8 2006Permission to file amicus curiae brief granted
  The application of Civil Justice Association of California for permisssion to file an amicus curiae brief in support of appellant is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Feb 8 2006Amicus curiae brief filed
  Civil Justice Association of California in support of appellant.
Feb 8 2006Permission to file amicus curiae brief granted
  The application of eBay, Inc., Xilinx, Inc., The Charles Schwab Corp., Electronic Arts, Inc., Apple Computer, Inc., Applied Materials, Inc., and NVIDIA Corporation for permission to file an amicus curiae brief in support of appellant is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Feb 8 2006Amicus curiae brief filed
  eBay, Inc., Xilinix, Inc., The Charles Schwab Corp., Electronic Arts, Inc., Applied Materials, Inc. and NVIDIA Corporation in support of appellant.
Feb 8 2006Permission to file amicus curiae brief granted
  The application of Google, Inc. and Xilinx, Inc., for permission to file an amicus curiae brief in support of appellant is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Feb 8 2006Amicus curiae brief filed
  Google, Inc., and Xilinx, Inc. in support of appellant.
Feb 8 2006Permission to file amicus curiae brief granted
  The application of Intel Corporation for permissin to file an amicus curiae brief in support of appellant is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Feb 8 2006Amicus curiae brief filed
  Intel Corporation in support of appellant.
Feb 8 2006Permission to file amicus curiae brief granted
  The application of Microsoft Corporation for permission to file an amicus curiae brief in support of appellant is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Feb 8 2006Amicus curiae brief filed
  Microsoft Corporation in support of appellant.
Feb 8 2006Permission to file amicus curiae brief granted
  The application of Motion Picture Association of America, Inc. for permission to file an amicus curiae brief in support of appellant is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Feb 8 2006Amicus curiae brief filed
  Motion Picture Association of America, Inc. in support of appellant.
Feb 8 2006Permission to file amicus curiae brief granted
  The applicaiton of Product Liability Advisory Council, Inc., for permission to fle an amicus curiae brief in support of appellant is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Feb 8 2006Amicus curiae brief filed
  Product Liability Advisory Council, Inc., in support of appellant.
Feb 8 2006Permission to file amicus curiae brief granted
  The application of Washington Legal Foundation for permission to file an amicus curiae brief in support of appellant is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Feb 8 2006Amicus curiae brief filed
  Washington Legal Foundation in support of appellant.
Feb 8 2006Permission to file amicus curiae brief granted
  The application of Biogen Idec, Inc. for permission to file an amicus curiae brief in support of appellant is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Feb 8 2006Amicus curiae brief filed
  Biogen Idec, Inc. in support of appellant.
Feb 8 2006Application to appear as counsel pro hac vice granted
  The application of Mark C. Fleming of the State of Massachusetts for admission to appear as counsel pro hac vice on behalf of Amicus Curiae Biogen Idec, Inc. in support of appellant is hereby granted. (See Cal. Rules of Court, rule 983.)
Feb 8 2006Application to appear as counsel pro hac vice granted
  The application of Seth P. Waxman of Washington, D.C. for admission to appear as counsel pro hac vice on behalf of Amicus Curiae Biogen Idec, Inc. in support of appellant is hereby granted. (See Cal. Rules of Court, rule 983.)
Feb 8 2006Application to appear as counsel pro hac vice granted
  The application of Tamar Frankel, Michaels Faculty Research Scholar and Professor of Law at Boston University School of Law, State of Massachusetts, for admission to appear as counsel pro hac vice on behalf of respondent is hereby granted. (See Cal. Rules of Court, rule 983.)
Feb 8 2006Extension of time granted
  On application of Tamar Frankel, Professor of Law at Boston University School of Law, State of Massachusetts, for an extension of time to file and serve amicus curiae brief in support of respondent is hereby granted to and including February 28, 2006. No further extensions will be granted. An answer thereto may be served and filed by any party within twenty days of the fiilng of the brief.
Feb 8 2006Extension of time granted
  On application of Ian Ayers, Professor of Law, Yale School of Law, State of Connecticut, for an extension of time to file and serve amicus curiae brief in support of respondent, together with his application to appear as counsel pro hac vice, is hereby granted to and including February 28, 2006. No further extensions will be granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Feb 8 2006Extension of time granted
  On appilcation of The Academy of Applied Science, and good cause appearing, it is ordered that the time to serve and file its amicus curiae brief in support of respondent herein is extended to and including February 28, 2006. No further extensions of time will be granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Feb 8 2006Extension of time granted
  On application of Memorial sloan-Kettering Cancer Center, and good cause appearing, it is ordered that the time to serve and file the amicus curiae brief in support of respondent herein is extended to and including February 28, 2006. No further extensions of time will be granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Feb 8 2006Extension of time granted
  On application of Amicus Curiae United Inventors Association and good cause appearing, it is ordered that the time to serve and file the amicus curiae brief in support of respondent is extended to and including February 28, 2006. No further extensions of time will be granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Feb 8 2006Extension of time granted
  On application of Writers Guild of America, Inc., Directors Guild of America, Inc., and Screen Actors Guild, Inc., and good cause appearing, it is ordered that the time to serve and file its amicus curiae brief in support of respondent herein is extended to and including February 28, 2006. No further extensions of time will be granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Feb 9 2006Extension of time granted
  On application of respondent and good cause appearing, it is ordered that the time to serve and file respondent's answer to the amicus curiae brief of Biotechnology Industry Organization is extended to and including March 29, 2006. It is further ordered that answers by any party to all amici curiae briefs are hereby extended to and including March 29, 2006.
Feb 28 2006Received application to file Amicus Curiae Brief
  memoria Sloan-Kettering cancer Center, L.A. Biomedical Research Institute, Board of Trustees of the University of Illinois, Loma Linda University Adventist Health Sciences Center and Calif. Association of NonProfit in support of respondent City of Hope National Medical center app/brief under same cover.
Feb 28 2006Received application to file Amicus Curiae Brief
  Tamar Frankel in support of respondent City of Hope National Medical Center application and brief under same cover
Feb 28 2006Received application to file Amicus Curiae Brief
  Ian Ayres in support of respondent City of Hope National Medical Center application and brief are submitted herewith separately.
Feb 28 2006Application to appear as counsel pro hac vice filed
  Non-resident attorney Ian Ayres/ submitted concurrent with a.c. brief.
Feb 28 2006Received application to file Amicus Curiae Brief
  The Writers Guild of America, West Inc., Directors Guild of America, Inc and Screen Actors Guild Inc. supporting respondent City of Hope National Medical Center application and brief same cover.
Feb 28 2006Received application to file Amicus Curiae Brief
  United Inventors Association and Inventions, Patents and Trademarks Company in support of respondent City of Hope National Medical Center Application and Brief under seperate cover.
Mar 1 2006Received application to file Amicus Curiae Brief
  and brief of The Academy of Applied Science in support of respondent
Mar 2 2006Permission to file amicus curiae brief granted
  The application of The Academy of Applied Science for permission to file an amicus curiae brief in support of respondent is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Mar 2 2006Amicus curiae brief filed
  The Academy of Applied Science in support of respondent
Mar 6 2006Received:
  From the Los Angeles Office, amici curiae briefs of: a) Tamar Frankel; b) Professor Ian Ayers, along with his pro hac vice application c) United Inventors Association and Inventions, Patents and Trademarks Company (d) Writers Guild of America, West, Inc., Directors Guild of America, Inc. and Screen Actors Guild, Inc.
Mar 9 2006Permission to file amicus curiae brief granted
  The application of Tamar Frankel for permission to file an amicus curiae brief in support of respondent is hereby granted.
Mar 9 2006Amicus curiae brief filed
  by Tamar Frankel in support of respondent.
Mar 9 2006Application to appear as counsel pro hac vice granted
  The application of Ian Ayers, Professor of Law, Yale School of Law, State of Connecticut, for permission to appear as counsel pro hac vice, representing himself, is hereby granted. (See Cal. Rules of Court, rule 983.)
Mar 9 2006Permission to file amicus curiae brief granted
  The appilcation of Ian Ayers, Professor of Law, Yale School of Law, State of Connecticut, for permission to file an amicus curiae brief in support of respondent is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Mar 9 2006Amicus curiae brief filed
  by Ian Ayers, Professor of Law, Yale School of Law, State of Connecticut, in support of respondent.
Mar 9 2006Permission to file amicus curiae brief granted
  The appilcation of Memorial Sloan-Kettering Cancer Center, Los Angeles Biomedical Research Institute, Board of Trustees of the University of Illinois, Loma Linda University Adventist Health Sciences Center and California Association of Nonprofits for permission to file an amicus curiae brief in support of respondent is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Mar 9 2006Amicus curiae brief filed
  Memorial Sloan-Kettering Cancer Center, Los Angeles Biomedical Research Institute, Board of Trustees of the University of Illinois, Loma Linda University Adventist Health Sciences Center and California Association of Nonprofits in support of respondent.
Mar 9 2006Permission to file amicus curiae brief granted
  The applicationo f United Inventors Association and Inventions, Patents and Trademarks Company for permission to file an amicus curiae brief in support of respondent is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the order.
Mar 9 2006Amicus curiae brief filed
  United Inventors Association and Inventions, Patents and Trademarks Company in support of respondent.
Mar 9 2006Permission to file amicus curiae brief granted
  The application of Writers Guild of America, West, Inc., Directors Guild of America, Inc., and Screen Actors Guild, Inc., for permission to file an amicus curiae brief in support of respondent is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Mar 9 2006Amicus curiae brief filed
  Writers Guild of America, West, Inc., Directors Guild of America, Inc., and Screen Actors Guild, Inc., for permission to file an amicus curiae brief in support respondent is hereby granted. An answer thereto may be served and filed by any party within twenty days of the filing of the brief.
Mar 23 2006Request for extension of time filed
  to and including April 7, 2006, to file Appellant Genentech, Inc.'s Answer to Amici Curiae Briefs Supporting Respondent City of Hope.
Mar 23 2006Request for extension of time filed
  to April 7, 2006, to file Respondent's Answer to Amicus Curiae Briefs.
Mar 27 2006Extension of time granted
  On application of appellant and good cause appearing, it is ordered that the time to serve and file Appellant's Answer to Brief of Amici Curiae is extended to and including April 7, 2006.
Mar 27 2006Extension of time granted
  On application of respondent and good cause appering, it is ordered that the time to serve and file Respondent's Answer to Briefs of Amici Curiae is extended to and including April 7, 2006.
Apr 7 2006Response to amicus curiae brief filed
  by Appellant Genentech, Inc. to Amici Briefs
Apr 7 2006Response to amicus curiae brief filed
  City of Hope National Medical Center respondent
Apr 19 2006Motion filed (non-AA)
  Appellant's (Genentech) Motion to Strike
May 4 2006Opposition filed
  respondent (City of Hope National Medical Center) opposing appellant Genentech's motion to strike.
May 9 2006Filed:
  Appellant's Reply to Oppotion to Motion to Strike
May 19 2006Motion filed (non-AA)
  to submit electronic copy of the briefs filed in the Supreme Court. City of Hope National Medical Center, Respondent by Joseph M. Lipner, counsel
May 26 2006Order filed
  Respondent City of Hope National Medical Center's Motion to Submit Electronic Copy of the Briefs Filed in the Supreme Court and the Record on Appeal, is hereby granted.
Jul 11 2006Note: Mail returned and re-sent
  to Lisa Natalie Stuts of Sheppard Mullin LLP
Mar 2 2007Filed letter from:
  Peter W. Davis, counsel for respondent City of Hope National Medical Center. Requesting that oral argument not be set for April 2007.
Apr 11 2007Filed letter from:
  Jerome B. Falk, Jr., counsel for appellant Genentech, Inc. Requesting that oral argument not occur in late May.
Jun 1 2007Letter sent to:
  counsel regarding NOTICE CONCERNING NECESSITY TO RECUSE A justice is required to recuse him or herself when he or she has specified financial or other interests in a party appearing before the court. The court has been asked whether the same recusal requirement applies when a justice has a similar interest in an amicus curiae, but not a party. No statute, Canon of Ethics, or rule requires recusal under such facts. Recusal is required if a judicial officer or a specified member of the justice's household has a financial interest in the matter, defined as an "ownership or more than 1 percent legal or equitable interest in a party, or a legal or equitable interest in a party of a fair market value exceeding one thousand five hundred dollars." (Code of Judicial Ethics, canon 3E(5)(d), italics added.) There may, of course, be some circumstances in which recusal based on a non-party interest would be appropriate pursuant to to canon 3E(4)(c) of the Code of Judicial Ethics, requiring disqualification if "the circumstances are such that a reasonable person aware of the facts would doubt the justice's ability to be impartial." Nevertheless, it is clear that the applicable laws and regulations do not automatically require disqualification based upon a financial interest in a non-party to the action. Each justice has a duty to hear the matters assigned to him or her in the absence of a ground for disqualification. (Canon 3B(1).) Moreover, it is important to the administration of justice to avoid potential for "justice- shopping" that might occur if non-parties were to file amicus curiae briefs or letters in order to disqualify an otherwise qualified jurist in an individual case. After considering all the applicable rules, canons, statutes, and principles, the justices who hold a financial interest in parties that have participated in the filing of amicus curiae briefs have declined to recuse themselves and will continue to participate in the proceedings in the above entitled matter.
Aug 1 2007Application filed to:
  File Appellant Genentech's Supplemental Brief by Jerome B. Falk, Jr., Howard Rice et al.
Aug 7 2007Order filed
  The application of Appellant for permission to file Genentech's Supplemental Brief is hereby granted. Responses may be served and filed by any party within twenty (20) days from the filing of the brief.
Aug 7 2007Supplemental brief filed
  Appellant Genentech Inc. by Jerome B Falk, Jr., Howard Rice Nemerovski Canady Falk & Rabkin, PC
Aug 28 2007Supplemental brief filed
  Respondent City of Hope National Medical Center's Response by Jon B. Eisenberg, Eisenberg and Hancock LLP, et al. CRC 8.25(b)
Oct 2 2007Change of contact information filed for:
  Seth P. Waxman and Edward C. Dumont of Wilmer Cutler Pickering Hale and Door, LLP, to 1875 Pennsylvania Avenue, NW, Washington, DC 20006 (Amicus Biogen Idec Inc.)
Jan 3 2008Case ordered on calendar
  to be argued on Tuesday, February 5, 2008, at 2:00 p.m., in Sacramento
Jan 15 2008Request for Extended Media coverage Filed
  By The California Channel, by James Gualtieri, operations manager
Jan 22 2008Request for Extended Media coverage Granted
  The request for extended media coverage, filed by The California Channel on January 15, 2008, is granted, subject to the conditions set forth in rule 1.150, California Rules of Court.
Jan 25 2008Supplemental brief filed
  Appellant Genentech's Second Supplemental Brief by Jerome B. Falk, Jr., Howard Rice et al., counsel
Jan 31 2008Received:
  Respondent City of Hope's request to file response, and Response to Genentech's Second Supplemental
Feb 1 2008Order filed
  Respondent City of Hope's Request to File Response to Appellant Genentech's Second Supplemental Brief is hereby granted.
Feb 1 2008Supplemental brief filed
  Respondent City of Hope's Response to Appellant Genentech's Second Supplemental Brief by Gregory R. Smith, Irell & Manella LLP, counsel
Feb 5 2008Cause argued and submitted
 
Apr 23 2008Notice of forthcoming opinion posted
 
Apr 24 2008Opinion filed: Judgment reversed
  Court of Appeal judgment is reversed with directions that the Court of Appeal modify the trial court's judgment to award City of Hope $300,164,030 as damages on its breach of contract claim, striking the award of punitive damages on its breach of fiduciary duty claim, and as so modified to affirm the judgment. Opinion by Kennard, J. -- joined by George, C.J., Baxter, Chin, Moreno, Corrigan, JJ and Lambden, JPT (Hon. James R. Lambden, Associate Justice, First Appellate District, Division Two)
May 16 2008Received:
  Stipulation for Immediate Issuance of Remittitur
May 27 2008Remittitur issued (civil case)
 
May 29 2008Returned record
  containing 20 doghouses to Second Appellate District (Los Angeles) -- Attention: Joyce
Jun 2 2008Received:
  Acknowledgment of receipt of remittitur from Second District, Division 2, signed for by J. Hatter, Deputy Clerk
Aug 7 2008Returned record
 

Briefs
Apr 12 2005Opening brief on the merits filed
 
Sep 19 2005Answer brief on the merits filed
 
Dec 28 2005Reply brief filed (case fully briefed)
 
Jan 17 2006Amicus curiae brief filed
 
Feb 8 2006Amicus curiae brief filed
 
Feb 8 2006Amicus curiae brief filed
 
Feb 8 2006Amicus curiae brief filed
 
Feb 8 2006Amicus curiae brief filed
 
Feb 8 2006Amicus curiae brief filed
 
Feb 8 2006Amicus curiae brief filed
 
Feb 8 2006Amicus curiae brief filed
 
Feb 8 2006Amicus curiae brief filed
 
Feb 8 2006Amicus curiae brief filed
 
Feb 8 2006Amicus curiae brief filed
 
Feb 8 2006Amicus curiae brief filed
 
Mar 2 2006Amicus curiae brief filed
 
Mar 9 2006Amicus curiae brief filed
 
Mar 9 2006Amicus curiae brief filed
 
Mar 9 2006Amicus curiae brief filed
 
Mar 9 2006Amicus curiae brief filed
 
Mar 9 2006Amicus curiae brief filed
 
Apr 7 2006Response to amicus curiae brief filed
 
Apr 7 2006Response to amicus curiae brief filed
 
Brief Downloads
application/pdf icon
Genentech Opening Brief.PDF (3818453 bytes) - Genentech Opening Brief
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City of Hope Answer brief.PDF (1110112 bytes) - City of Hope Reply Brief
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Intel Amicus Brief.pdf (202774 bytes) - Brief of of Amicus Curiae Intel Corporation Supporting Appellant
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BOS2868H_Exchange_10252007-122702.pdf (9092615 bytes) - Brief of Amicus Curiae Biogen Idec Inc. in Support of Appellant
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MPAA Amicus Brief as filed.pdf (755375 bytes) - Brief of Amicus Curiae Motion Picture Association of America, Inc. in Support of Appellant
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CJACamicusCityHopeGenentech.pdf (341571 bytes) - Brief of Amicus Curiae Civil Justice Associatoin of California in Support of Appellant
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PFR.pdf.pdf (4579674 bytes) - Genentech's Petition for Review
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APFR.pdf.pdf (1896672 bytes) - City of Hope's Answer to Petition for Review
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Reply-to-APFR.pdf.pdf (1295122 bytes) - Genentech's Reply to City of Hope's Petition for Review
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Reply brief.pdf (5787555 bytes) - Genentech's Reply Brief
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1-00001.pdf (1915090 bytes) - Brief of Amicus Curiae California Healthcare Institute in Support of Appellant
If you'd like to submit a brief document to be included for this opinion, please submit an e-mail to the SCOCAL website
Jun 8, 2012
Annotated by Matthew Cagle

Facts:

This suit was brought by City of Hope National Medical Center (City of Hope) against Genentech, Inc. (Genentech) on August 13, 1999 for breach of fiduciary duty and for breach of contract, including breach of the implied covenant of good faith and fair dealing. The story behind the suit begins with a discovery made by two scientists working for City of Hope in mid-1970s. The discovery revealed "a groundbreaking process for genetically engineering human proteins, enabling the production of large quantities of various medicines of great therapeutic and commercial value." In May of 1976, Genentech's president Robert Swanson sent City of Hope a proposal to provide funding to use the process to produce synthetic proteins and to patent those proteins. After negotiations, City of Hope and Genentech executed a contract on August 5, 1976. The contract provided that Genentech would commercially exploit the discoveries and seek patents for them, in exchange for providing City of Hope with the resulting sales proceeds and royalties.

Two years after executing the contract, Genentech informed City of Hope that it had granted Eli Lilly and Company (Eli Lilly) a license, but Genentech did not convey the fact that it had granted other third party licenses. In October 1986, a doctor with City of Hope wrote to Genentech's general counsel seeking a list of all products developed with DNA from City of Hope as well as all third party licenses executed and based on methods or DNA from City of Hope. In April 1987, the doctor went to Genentech's headquarters to investigate, but was kept, at Genentech's general counsel's request, from seeing evidence of the third party licenses.

During the 1980s and 1990s, City of Hope did not receive royalties from Genentech for the sales of certain products and licenses of products based on the technique discovered by the City of Hope scientists. In the 1990s, Genentech subsequently sued and settled with third party companies for patent infringement, after which City of Hope sought apportionment of those settlements alleging the contract compelled such apportionment. Genentech complied with a request following an infringement settlement with Eli Lilly in 1994, but refused following a $20 settlement with a group named Novo Nordisk. Around this time, City of Hope brought suit.

Procedural History:

On August 13, 1999, City of Hope sued Genentech for breach of fiduciary duty and breach of contract including implied covenant of good faith and fair dealing. The trial's jurors were unable to reach a verdict and deadlocked by a vote of seven to five in favor of Genentech. In June 2002, a second jury found that Genentech, Inc. had breached a fiduciary duty to City of Hope, breached its contract with the City of Hope, and acted with fraud and malice. It awarded City of Hope $300,164,030 in compensatory damages and $200 million in punitive damages. The Court of Appeal affirmed. Defendant Genentech petitioned for review of that affirmance.

Issues:

This case presents two main issues.

(1) Whether, as the jury found, a fiduciary relationship necessarily arose when City of Hope, in return for royalties, entrusted a secret scientific discovery to Genentech to develop, to patent, and to commercially exploit

(2) Whether the evidence that City of Hope introduced at trial to prove that Genentech had breached a fiduciary duty so prejudiced the jury as to require setting aside the jury’s award of compensatory damages for breach of contract

(2a) Whether the trial court erred in submitting interpretation of the contract to the jury

(2b) Whether the trial court erred in instructing the jury that if, after applying other rules of interpretation, "there remains an uncertainty in the language of the contract, that language must be interpreted against the party who caused the uncertainty to exist"

(2c) Whether the trial court erred in admitting evidence of the resolution of a prior dispute between the parties

Holding:

Justice Kennard, writing for the Court, found that no fiduciary duty arose when City of Hope entrusted a secret scientific discovery to Genentech to develop, to patent, and to commercially exploit, and that as a result the punitive damages award must be struck. The Court also held that the jury had not been so prejudiced by the evidence City of Hope introduced to prove Genentech had breached a fiduciary duty to justify setting aside the jury’s verdict for compensatory damages. Finally, the Court found the trial court had not erred in submitting the interpretation of the contract to the jury, instructing the jury to read contract ambiguities against the drafter, or by admitting evidence of a prior dispute between the parties.

Analysis:

The Court first discussed whether a fiduciary relationship arose from City of Hope’s contract with Genentech. Under California law, a fiduciary obligation is created when (1) a person knowingly acts on behalf or for the benefit of another or (2) enters into a relationship that imposes that undertaking as a matter of law. Addressing the first part of that test, the Court examined the contract and found “no indication” that Genentech entered into the contract with a view towards primarily benefiting City of Hope – rather, the Court found that the goal of the contract was to achieve a mutually beneficial relationship. Additionally, the court found “no factual basis” pointing to Genentech’s knowing undertaking of a fiduciary obligation.

Second, the court asked whether the parties had entered a relationship that imposes the duty as a matter of law. On this question, the Court found the trial court had erred in instructing the jury that a fiduciary relationship is “necessarily created where a party, in return for royalties, entrusts a secret idea to another to develop, patent, and commercially develop.” The jury instructions had been based on Stevens v. Marco, 305 P.2d 669 (Cal. 1956), and stated that a "fiduciary relationship arises when a person entrusts a secret idea or device to another under an arrangement whereby the other party agrees to develop, patent and commercially exploit the idea in return for royalties. On appeal, City of Hope claimed this instruction was correct because the relationship between Genentech and City of Hope was one that consisted of four characteristics typical to a fiduciary relationship:"(1) one party entrusts its affairs, interests or property to another; (2) there is a grant of broad discretion to another, generally because of a disparity in expertise or knowledge; (3) the two parties have an "asymmetrical access to information," meaning one party has little ability to monitor the other and must rely on the truth of the other party's representations; and (4) one party is vulnerable and dependent upon the other." The court rejected City of Hopes argument that the presence of these four factors necessarily gives rise to a fiduciary relationship. The Court also found that the secrecy of the idea may be considered does not "compel the imposition of fiduciary duties by operation of law." Thus, the Court refused to find a fiduciary duty. Having found no fiduciary relationship, and because the punitive damages were based on that claim, the court struck the trial jury's award of punitive damages against Genentech.

Next, the Court examined the breach of contract claim. The claim centered on Genentech's failure to pay royalties as well as its refusing to allow City of Hope records access to determine the royalties owed. First, the Court rejected Genentech’s argument that comments made during arguments on the fiduciary duty claim -- specifically a reference by City of Hope's attorney to "concealment" by Genentech -- were inflammatory and inappropriate in the context of the contract claim. The Court said that the evidence was relevant to the breach of contract question because, inter alia, it informed the parties' understanding of the contract prior to the suit.

Second, the Court rejected Genentech’s claim that City of Hope’s counsel improperly referenced the credibility of witnesses as important to the breach of contract claim. The Court noted that a credibility determination would be relevant to the the jury's assessment of divergent testimony given by the attorneys who negotiated the contract. Next, the Court declined to entertain Genentech’s argument that it was improper for opposing counsel to tell the jury to consider the breach of contract claim before the fiduciary claim -- this was permissible because such an instruction mirrored the verdict form. After that, the Court dismissed Genentech's claim that the jury instruction conflated the fiduciary duty and contract claims.

Finally, the Court addressed Genentech's arguments against the general verdict. The Court disagreed with Genentech’s contention that the interpretation of the contract was for the judge and not the jury, citing the need for the jury’s fact-finding abilities in a case such as this one where the credibility of the extrinsic evidence was disputed. After that, the Court found that it was proper for the jury to be instructed – pursuant to California Civil Code Section 1654 – to interpret the contract’s uncertain language against the party the created the uncertainty. The court found this general contract rule was equally applicable in the case of a negotiated contract. Last, the Court found that Genentech’s stipulation at the first trial to the admission of evidence concerning Genentech’s settlement with the City of Hope on an earlier claim over royalties from Eli Lilly was binding in the second trial as well.

Thus, the judgment of the Court of Appeal was reversed on fiduciary duty claim and the punitive damages award struck while leaving intact the trial court's award of damages to City of Hope in the amount of $300,164,030 for the breach of contract claim.

Tags: punitive damages, fiduciary obligation, fiduciary relationship breach of contract, implied covenant of good faith of fair dealing, intellectual property, negotiated contract

Matthew Cagle

Apr 24, 2008
Annotated by diana teasland

Written by Julie Kane.

Facts: In the mid-1970s, two scientists employed by City of Hope, developed a groundbreaking process for genetically engineering human proteins. In May 1976, Genentech contacted City of Hope to negotiate a contract to commercialize the process. On August 5, 1976, Genentech and City of Hope executed a contract:

1. Genentech proposes to engage in the manufacture and sale of certain polypeptides requiring synthetic DNA. Genentech will provide funding for City of Hope to synthesize the DNA and would secure and hold patents resulting from City of Hope’s efforts. City of Hope wishes to conduct the necessary synthesis and research in exchange for funding, publication rights and royalty income.

2. Genentech will solely and exclusively own any patents emerging from the work. However, if Genentech opts to not seek a patent for any reason, City of Hope may pursue the right.

3. Genentech will pay City of Hope a 2.0% royalty of the net sales of all polypeptides, provided only that manufacture of the polypeptide employ DNA synthesized by City of Hope and provided to Genentech. (“DNA use requirement”)

4. After 5 years, Genentech’s royalty obligation shall be limited to the payment of royalty only in respect to such manufacture, use or sale which would infringe the claims of an issued Genentech patent on Genentech’s developments, but for Genentech’s ownership of the patent. (“Patent Infringement Requirement”)

5. Genentech will pay City of Hope the same royalty City of Hope would have received for any license payments by a third party to Genentech under any of these patents.

6. Any profits from infringement suits for any of these patents will be considered net sales of Genentech for royalty payment purposes.

7. Genentech will compute and pay royalties to City of Hope quarterly. Both Genentech and City of Hope may assign and transfer their contractual rights. The contract does not create an agency, joint venture or partnership relationship.

Once the contract was signed, Genentech obtained numerous patents and proactively licensed these patents to other companies. In August 1978, Genentech granted Eli Lilly a license. While Genentech informed City of Hope of this license, it failed to mention the other licenses it had granted. Genentech did not pay City of Hope any royalty payments for these licenses.

In the 1990s, Genentech sued Eli Lilly for patent infringement. When the case was settled, Eli Lilly paid Genentech $145 million and a 6% royalty. City of Hope asserted its right to 2% of the settlement. Genentech originally rejected City of Hope’s assertion, but eventually agreed to pay.

In 1998, Genentech settled a $20 million lawsuit with Novo Nordisk. Genentech again rejected City of Hope’s claim for a share of the settlement, resulting in the current action.

Procedural Background: On August 13, 1999 City of Hope sued Genentech for breach of fiduciary duty and for breach of contract. At the first trial, the jurors were unable to reach a verdict. The case was re-tried. The jury found Genentech had breached the contract, breached its fiduciary duty, and acted with fraud and malice. It awarded City of Hope compensatory damages of $300,164,030 and $200 million in punitive Damages. Superior Court of Los Angeles County, No. BC215152, Edward Y. Kakita, J. The Court of Appeal affirmed. City of Hope v. Genentech, Inc. 123 Cal. App. 4th 306, 20 Cal. Rptr. 3d 234 (Cal. App. 4th Dist., 2004). The California Supreme Court affirmed the compensatory damages, but reversed the award of punitive damages.

Summary: The first issue the court discussed was whether a fiduciary relationship necessarily arose when City of Hope, in return for royalties, entrusted a secret scientific discovery to Genentech to develop, patent and commercially exploit. The court held that Genentech did not knowingly undertake to act on behalf and for the benefit of City of Hope. Further, the court held that an agreement to develop, patent, and commercial exploit a secret scientific discovery in exchange for royalty payments does not impose fiduciary obligation as a matter of law.

A fiduciary relationship is not necessarily created simply when one party, in exchange for royalty payments, entrusts a secret invention to another party to develop, patent, and market the eventual product. Here, the contract was between two sophisticated parties of substantial bargaining power. Both parties were represented by counsel. While Genentech may have had superior knowledge or expertise, and City of Hope may have been required to trust Genentech, these circumstances do not necessarily create fiduciary obligations. Accordingly, the trial court erred in instructing the jury that a fiduciary relationship is necessarily created when a party, in return for royalties, entrusts a secret idea to another to develop, patent, and commercially develop.

Removing the fiduciary duty issue, the court also set aside the award of punitive damages, since punitive damages may not be awarded in breach of contract cases.

The second issue the court discussed was whether the jury was prejudiced against Genentech by several jury instructions. The court held that each of the contested jury instructions were appropriate and not prejudicial. The court also held that juries may interpret contractual agreements when construction turns on the credibility of extrinsic evidence. Therefore, a general verdict, instead of special findings after which the judge may rule, is appropriate under this set of facts.

Tags: Breach, Compensatory Damages, Contract, Damages, Evidence, Fiduciary Duty, Jury Instructions, Punitive Damages