Federal District judge Beth Labson Freeman has ruled on the drug patent dispute between Gilead Sciences, Inc and Merck & Co, Inc. Judge Freeman has reversed the jury’s patent infringement judgment after she concluded Merck did, in fact, engage in misconduct to obtain patents for hepatitis C drugs. In a 65 page order, Freeman concluded that Merck’s actions were “dishonest and duplicitous” and thus “cross[ed] the line to egregious misconduct. Merck is guilty of unclean hands and forfeits its right to prosecute this action against Gilead”. Judge Freeman went on to state:
“Candor and honesty define the contours of the legal system. When a company allows and supports its own attorney to violate these principles, it shares the consequences of those actions. Here, Merck’s patent attorney, responsible for prosecuting the patents-in-suit, was dishonest and duplicitous in his actions with Pharmasset, with Gilead and with this Court, thus crossing the line to egregious misconduct. Merck is guilty of unclean hands and forfeits its right to prosecute this action against Gilead.”
In March, Gilead was ordered by a federal jury to pay Merck $200 million in damages after discovering that two U.S. patents held by Merck and its partner, Ionis Pharmaceuticals Inc., were valid and infringed by Gilead’s Hepatitis C drug, Sovaldi and Harvoni. This amount was derived from Gilead’s sales beginning in December 2013-2015. The estimated amount the drugs made the company in sales last year alone was $19 billion.
Gilead alleged former Merck patent attorney Phillippe Durette, lied under oath about how he obtained proprietary information that led to the prosecution of one of the patents at issue.
Gilead further argued they should not have to pay Merck based on the dishonest way Merck obtained its patents. In 2004, Durette took part in a telephone conversation with an employee of the pharmaceutical company Pharmeasset Inc., which Gilead later acquired for more than $11 billion. While on this call, Durette learned the chemical structure of an experimental Hepatitis C drug, sofosbuvir (PSI-6130), that, at the time, was in development by Pharmasset. Gilead alleged Durette took the information he received from that phone call and changed claims in pending Merck applications in such a way they would cover Pharmasset’s technology. Durette initially denied being on the 2004 call, but later recanted this statement stating he was present for the call and learned the structure of the Hepatitis C compound in the call.
In a statement, Merck spokeswoman Lainie Keller said Gilead’s allegations are without merit and the company plans to appeal asserting that “The judge’s ruling does not reflect the facts of this case.”
