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Merck Gilead Patent Trial 7/8/16
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Merck appeals order reversing its $200 mln verdict against Gilead
Jul 7, 2016 | Reuters Westlaw
By Brendan Pierson
Reuters Westlaw, which is Reuters legal news publication, published the below blurb. The full article is behind a paywall. What is available has been posted below. -
After Verdict Reversal, Gilead Takes Aim At Merck Patents
Jul 5, 2016 | Law360
By Suevon Lee
Gilead Sciences Inc. reasserted its position Tuesday that two Merck & Co. Inc. patents covering an ingredient in Gilead’s hepatitis C drugs are invalid, a month after a California federal judge reversed Merck’s $200 million jury verdict on unenforceability grounds after concluding its key witness lied. -
Gilead Wants $15.5M In Fees From Merck After Hep C Upset
Jul 6, 2016 | Law360
By Dani Kass
Gilead Sciences Inc. told a California federal court Tuesday that Merck & Co. Inc. should have to hand over $15.5 million in attorneys' fees following a judge’s decision that the latter company’s trial misconduct was grounds to overturn a $200 million jury verdict in a patent dispute over hepatitis C drugs. -
Gilead Seeks Hefty Fees After Slamming Merck in Patent Case
Jul 6, 2016 | The Recorder
By Scott Graham
Fresh off persuading U.S. District Judge Beth Labson Freeman to throw out a $200 million patent infringement verdict, Gilead Sciences Inc. and Fish & Richardson are asking for $15.5 million in "exceptional case" fees.
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Merck appeals order reversing its $200 mln verdict against Gilead
Jul 7, 2016 | Reuters Westlaw
By Brendan Pierson
Merck & Co has appealed a California federal judge's order that overturned a $200 million verdict it won in a patent case against Gilead Sciences over Gilead's lucrative hepatitis C drugs on the grounds that Merck engaged in extensive misconduct.
On Tuesday, the same day Merck filed its notice of appeal, Gilead asked U.S. District Judge Beth Labson Freeman in San Jose to rule that Merck's patents were invalid as a matter of law, renewing a motion it filed before the verdict in the case.
To read the full story on Westlaw Practitioner Insights, click here: bit.ly/29jZ42d
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After Verdict Reversal, Gilead Takes Aim At Merck Patents
Jul 5, 2016 | Law360
By Suevon Lee
Gilead Sciences Inc. reasserted its position Tuesday that two Merck & Co. Inc. patents covering an ingredient in Gilead’s hepatitis C drugs are invalid, a month after a California federal judge reversed Merck’s $200 million jury verdict on unenforceability grounds after concluding its key witness lied.
Even after that dramatic June 6 reversal by U.S. District Judge Beth Labson Freeman in Gilead's favor, the biopharmaceutical company presented alternative arguments in support of its renewed motion for judgment as a matter of law by turning to the validity of the patents at issue.
“This case is a textbook example of lack of written description support for the claimed inventions,” its motion said. “As such, the jury’s verdict in favor of Merck should be set aside.”
Gilead’s motion attacked the validity of the Merck patents covering sofosbuvir — an ingredient of Gilead’s top-selling hepatitis C drugs Sovaldi and Harvoni, which logged combined sales of $19.1 billion last year — on the basis of lack of written description and lack of enablement, and said Merck derived the subject matter of the asserted claims from Gilead’s predecessor-in-interest, Pharmasset Inc.
Tuesday’s motion coincided with a notice of appeal filed by Merck and Ionis Pharmaceuticals Inc. of Judge Freeman’s decision that Merck could not enforce its patent infringement claims against Gilead under the doctrine of unclean hands because Merck's former in-house patent prosecutor, a key witness, lied in deposition testimony and at trial about his knowledge of and participation in a March 2004 call with the developers of what would later become the hepatitis C drugs.
Judge Freeman handed down the reversal three months after the jury found Gilead liable to Merck for $200 million for infringing U.S. Patent Nos. 7,105,499 and 8,481,712. Merck co-developed the patents with Isis Pharmaceuticals Inc. — now Ionis Pharmaceuticals — which would have received 20 percent of the damages award.
Representatives for Gilead and Merck didn’t immediately respond to requests for comment on Tuesday.
In a footnote to Tuesday's motion, Gilead acknowledged that Judge Freeman’s decision could moot its request for judgment as a matter of law but nonetheless posed the alternative arguments in support.
First, Gilead argued that Merck failed to expressly describe the claimed sub-genuses of the broader chemical genuses in the patents’ shared specification, specifically the “blaze marks” requirement directing a skilled artisan to the specific sub-genus over which it lays claim.
“The Federal Circuit and its predecessor courts have invalidated claims to a sub-genus or compound that was within a broad formula where, as here, the specification contained no blaze marks leading to the claimed invention,” Gilead said.
Gilead also said Merck misapplied the court’s enablement jury instruction and failed to show a practical utility for the claimed inventions.
It also argued that since Gilead predecessor Pharmasset invented the key chemical compound at issue before Merck did, Merck could not say it conceived of the invention and therefore assert patent claims against Gilead.
Judge Freeman’s ruling last month centered on the impact of testimony provided by Merck organic chemist-turned-attorney Philippe Durette, who swore he was not privy to a confidential call on March 17, 2004, between Merck officials and Pharmasset, in which Pharmasset disclosed the discovery and development of an antiviral agent against the hepatitis C virus, a lead compound called PSI-6130.
The judge said Durette would not have written new claims to cover Merck’s then-pending ’499 patent application in February 2005 but for his improper participation in that call, which was supposed to be limited or “firewalled” to certain Merck personnel who were not involved in the company’s internal hepatitis C drug development, as Durette would have been at the time.
The patents-in-suit are U.S. Patent Numbers 7,105,499 and 8,481,712.
Gilead is represented by Elizabeth M. Flanagan, Juanita R. Brooks, Jonathan E. Singer, Douglas E. McCann, John M. Farrell and Michael E. Florey of Fish & Richardson PC.
Merck is represented by Bruce R. Genderson, Jessamyn S. Berniker, Stanley E. Fisher, Jessica Bodger Rydstrom, Sanjiv P. Laud and Jessica Palmer Ryen of Williams & Connolly LLP, Stephen S. Rabinowitz, Patrice P. Jean and Mitchell Epner of Hughes Hubbard & Reed LLP and Joshua H. Lerner and Laura E. Miller of Durie Tangri LLP.
The case is Gilead Sciences Inc. v. Merck & Co. Inc. et al., case number 5:13-cv-04057, in the U.S. District Court for the Northern District of California.
--Additional reporting by Y. Peter Kang. Editing by Brian Baresch. -
Gilead Wants $15.5M In Fees From Merck After Hep C Upset
Jul 6, 2016 | Law360
By Dani Kass
Gilead Sciences Inc. told a California federal court Tuesday that Merck & Co. Inc. should have to hand over $15.5 million in attorneys' fees following a judge’s decision that the latter company’s trial misconduct was grounds to overturn a $200 million jury verdict in a patent dispute over hepatitis C drugs.
Gilead took home an unexpected victory on June 6, when U.S. District Judge Beth Labson Freeman declared that lies made by one of Merck’s key witnesses rendered two patents unenforceable, reversing the jury’s verdict that Gilead was liable for infringement. The court’s acknowledgement of the misconduct supports the biopharmaceutical company’s pleas for just under $14.2 million to pay lead counsel Fish & Richardson PC and just under $1.4 million to payDeloitte Review Services, Gilead said in a motion Tuesday.
“This court has found that ‘Merck directed, advised, guided and covered up misconduct’ and did so with the ‘inten[t] to deceive Gilead and the court,’” Gilead said. “Those ‘numerous unconscionable acts’ by Merck compel the conclusion that this is an exceptional case and for that reason and the reasons detailed below, this court should award Gilead its reasonable attorneys’ fees."
Between 2013 and 2016, Fish & Richardson charged between $340 and $1,021 hourly for attorneys and $212 to $272 hourly for paralegals, the motion says. The complexity of the case and the high financial stakes tied to its verdict justified the number of hours worked, Gilead said.
“All hours billed were reviewed by lead counsel to ensure that they were not excessive, redundant or otherwise unnecessary, and to ensure that the tasks each timekeeper performed were commensurate with their experience and seniority,” the motion states.
Deloitte charged $40 to $75 an hour for contract attorneys, $55 to $65 an hour for employees reviewing documents and $125 to $135 for employees reviewing project management, Gilead said. As there were more than 1.1 million documents and 7 million pages were produced, a large number of reviewers were needed, the motion states. However, since some of the documents were produced in other litigation, Gilead said it’s only asking for one-third of the fees it will need to reimburse Deloitte.
Merck didn't immediately respond to request for comment Wednesday.
Judge Freeman handed down the reversal three months after the jury found Gilead should pay $200 million for infringing U.S. Patent Numbers 7,105,499 and 8,481,712. Merck co-developed the patents with Isis Pharmaceuticals Inc. — now Ionis Pharmaceuticals — which would have received 20 percent of the damages award.
The patents cover sofosbuvir, an ingredient of Gilead’s top-selling hepatitis C drugs Sovaldi and Harvoni, which logged combined sales of $19.1 billion last year.
But the judge said Merck could not enforce its patent infringement claims against Gilead under the doctrine of unclean hands because Merck's former in-house patent prosecutor, a key witness, lied in deposition testimony and at trial about his knowledge of and participation in a March 2004 call with the developers of what would later become the hepatitis C drugs.
Merck has since announced its intent to appeal.
The patents-in-suit are U.S. Patent Numbers 7,105,499 and 8,481,712.
Gilead is represented by Elizabeth M. Flanagan, Juanita R. Brooks, Jonathan E. Singer, Douglas E. McCann, John M. Farrell and Michael E. Florey of Fish & Richardson PC.
Merck is represented by Bruce R. Genderson, Jessamyn S. Berniker, Stanley E. Fisher, Jessica Bodger Rydstrom, Sanjiv P. Laud and Jessica Palmer Ryen of Williams & Connolly LLP, Stephen S. Rabinowitz, Patrice P. Jean and Mitchell Epner of Hughes Hubbard & Reed LLP, and Joshua H. Lerner and Laura E. Miller of Durie Tangri LLP.
The case is Gilead Sciences Inc. v. Merck & Co. Inc. et al., case number 5:13-cv-04057, in the U.S. District Court for the Northern District of California.
--Additional reporting by Y. Peter Kang and Suevon Lee. Editing by Aaron Pelc. -
Gilead Seeks Hefty Fees After Slamming Merck in Patent Case
Jul 6, 2016 | The Recorder
By Scott Graham
Fresh off persuading U.S. District Judge Beth Labson Freeman to throw out a $200 million patent infringement verdict, Gilead Sciences Inc. and Fish & Richardson are asking for $15.5 million in "exceptional case" fees.
If actually approved in full, it would nearly double the highest reported patent case fee award The Recorder could locate in an April survey of successful fee motions since the U.S. Supreme Court's 2014 Octane Fitness ruling, which eased the standard for fee-shifting in patent cases.
The motion for attorney fees filed Tuesday by Fish partner Jonathan Singer lets Freeman do most of the talking. Singer quotes liberally from her June 6 decision rejecting the jury verdict due to Merck & Co.'s unclean hands. Freeman found that Merck's patent prosecutor was "dishonest and duplicitous" with Gilead and with the court, and that "Merck directed, advised, guided and covered up misconduct," as quoted in Singer's motion.
The biggest catch for Gilead and for Fish is probably going to be the nature of their fees. Singer acknowledges up-front that Fish had a fixed-fee arrangement with Gilead through most of the litigation. That could make it tough for Freeman to sign off on the $978 hourly rate claimed by lead trial lawyer Juanita Brooks or Singer's $914 rate.
The court is empowered to award a reasonable fee, even if it's more than the actual amount billed, Singer argues, citing U.S. District Judge Susan Illston's $5.5 million award in Kilopass v. Sidense for support. Sidense Corp. actually was seeking $8 million in that case because of a contingency-based "success fee" it had negotiated with its client; the company dropped its appeal to the U.S. Court of Appeals for the Federal Circuit just before the case was to be argued.
Merck's infringement case against Gilead over its hepatitis C medications Sovaldi and Harvoni was once thought to be worth as much as $2 billion, Gilead's sales on the drugs in just two years. A jury awarded $200 million and Merck was expected to get more in future royalties before Freeman threw out the verdict. She ripped into Merck, its former in-house patent prosecutor Philippe Durette, and its outside counsel at Williams & Connolly for "egregious misconduct" that tainted both Merck's procurement of the patent and the March trial.
Freeman found that Durette, the patent prosecutor for Merck's HCV program in the 2000s, "lied repeatedly at his deposition and a trial" about breaching a nondisclosure agreement with Gilead predecessor Pharmasset Inc. She further blamed Merck for "sponsoring" Durette's unconscionable behavior, and Williams & Connolly for failing to alert the court that Durette would be recanting his deposition testimony until opening statements.
"The same conduct that warranted a finding of unclean hands renders this case exceptional," Singer wrote in his motion.
Fish attorneys, paralegals and technical analysts logged a combined 25,000 hours on the case, according to a declaration filed with Singer's motion. Partners Gregory Booker, Robert Oakes and Elizabeth Flanagan, each of whom billed between $633 and $689 in 2016, were major contributors at around 2,000 hours each.
Richardson argues that the hours are reasonable given the complexity of the case and the billions at stake, and the rates are merited because Fish is "widely recognized as among the preeminent law firms in the area of patent litigation."
The fee request includes about $1.1 million for document review and production by Deloitte Review Services—one-third of the amount actually paid, because the documents were produced for two other Gilead/Merck cases as well.
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