Fish & Richardson has obtained a denial of certiorari at the U.S. Supreme Court for client Gilead Sciences, Inc., which keeps intact Fish’s unanimous Federal Circuit win in April 2018 that affirmed its June 2016 post-trial reversal of a $200 million jury verdict against Gilead. Fish proved post-trial that Merck had forfeited its right to assert its hepatitis C drug patents against Gilead because of litigation and business misconduct constituting unclean hands.
Merck filed a petition for certiorari in September 2018, and the case was considered in conference on January 4 before cert was denied on January 7. Gilead’s response was a multi-firm effort that included the Fish attorneys who led the jury trial, post-trial reversal and Federal Circuit appeal – including principals Juanita Brooks, Jonathan Singer, Deanna Reichel, Elizabeth Flanagan, and Craig Countryman – and co-counsel from Orrick Herrington & Sutcliffe LLP.In the Supreme Court brief, the team argued that “Merck does not now dispute that it engaged in ‘deceptive dealing’ when it tricked a competitor into revealing its invention and amended its patents based on what it learned, or that it tried to cover up that serious misbehavior with ‘troubling’ litigation misconduct, including presenting ‘intentionally false’ testimony. It does not dispute that its behavior was ‘unconscionable’ and ‘outrageous.’ It does not dispute that the courts below were correct in concluding that this egregious misconduct amounted to unclean hands that made its patents ‘unenforceabl[e]’ against Gilead within the meaning of the Patent Act, 35 U.S.C. § 282(b)(1). Yet Merck seeks to revive a $200 million verdict based on those unenforceable patents. Merck wants this Court to decide that ‘unenforceabl[e]’ means ‘enforceable through damages, but unenforceable by injunction.’”
The case, Gilead Sciences, Inc. v. Merck & Co. Inc. et al., began after Merck requested that Gilead license two patents (‘499 and ‘712). Gilead filed suit in 2013 seeking declaratory judgment that its products did not infringe and that the patents were invalid. Merck counterclaimed, alleging infringement and seeking over $2 billion in damages. On March 20, 2016, a jury found Merck’s patents were not invalid and awarded Merck $200 million in damages.
After the verdict, a bench trial on Gilead’s unclean hands defense was held. On June 6, 2016, Judge Beth Labson Freeman of the Northern District of California vacated the jury verdict and held that due to Merck’s business and litigation misconduct, the patents were unenforceable against Gilead. In August 2016, Judge Freeman ruled the case “exceptional” and in July 2017 Merck was ordered to pay $14 million in attorneys’ fees “based on the amount at stake in this case, the complexity of the issues, and the results Fish has achieved for Gilead.” The Federal Circuit affirmed the district court’s post-trial reversal on April 25, 2018 and affirmed the awarding of attorneys’ fees in July 2018.
Fish has been representing Gilead for over five years in its worldwide, complex patent battle with Merck and Idenix Pharmaceuticals (now owned by Merck) over Gilead’s two blockbuster hepatitis C drugs, Sovaldi® and Harvoni®. In February 2018, Fish won a motion for Judgment as a Matter of Law (JMOL) that reversed a $2.5 billion jury verdict against Gilead in federal court in Delaware in its litigation with Idenix over its ‘597 patent for an element of a hepatitis C treatment.