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26 April 2018 at 10:49 BST

"Dishonest and duplicitous" behaviour of counsel costs Merck its $200 million payday

The "dishonest and duplicitous" behaviour of counsel barred a patent claim and ends the biggest-ever US pharma case.


The US appeals court has upheld a decision dismissing a $200 million patent verdict in favour of pharmaceutical company Merck & Co against rivals Gilead Sciences Inc concerning hepatitis C drugs. The focal point was the "dishonest and duplicitous" behaviour of a Merck in-house lawyer, which the court ruled barred the drugmaker from asserting the patents.

Largest US patent case
Merck had accused Gilead of infringing two patents on the hepatitis C drugs Sovaldi and Harvoni, which had combined sales of $19.1 billion in 2015. The ruling upheld the US Court of Appeals for the Federal Circuit that Merck dishonestly obtained patent rights and was not entitled to collect a $200 million infringement verdict it won. They upheld a June 2016 ruling that the two Merck patents were unenforceable because of a pattern of misconduct by the company, including lying under oath by one of its in-house lawyers. The verdict had been the largest ever in a US patent case, but the judge ruled Merck’s patent was invalid because it did not meet a requirement that it disclose how to make the treatment it covered without undue experimentation.

All-women team wins
The Federal Circuit oral argument team was led by all women – principals Juanita Brooks, Deanna Reichel, and Elizabeth Flanagan from Fish & Richardson, and from Gilead, Lorie Ann Morgan, Vice-President Intellectual Property, and Andrea Hutchinson, Associate General Counsel IP Litigation – with Brooks handling the actual argument. The argument lasted almost two hours, three times the normal length of an appellate argument. The opinion notes that Merck’s litigation misconduct “infected this entire case.” The appeals court has ruled the lower judge had sufficient reason to conclude that the Merck patents were 'tainted' by misconduct and should not be enforceable. Merck stated the company is reviewing its next steps.


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