Well, this doesn’t look good: reports are that the Gilead/Merck hepatitis C inhibitor patent case may be heading back into court under accusations that one of Merck’s patent lawyers (a former med-chemist) lied under oath. The scientist involved, Phil Durette, already had some problems during his testimony the first time around:
At trial, Gilead and Merck each tried to show the other was claiming credit for scientific advances that wasn’t due. Over two weeks, a parade of doctors and scientists for Gilead, Pharmasset and Merck and its partner Ionis Pharmaceuticals Inc. testified about their roles in the patent process.
Gilead contends that in 2004, at a point when Merck was exploring a take-over of Pharmasset, Durette participated in a phone call in which the secret details of Pharmasset’s compound were discussed. In a pretrial deposition he gave “unequivocal testimony” that he wasn’t on the call, Gilead said. He went on to recant his statement in court when he told the jury he “forgot” he was on the phone call and he had “overconcluded.”
Here’s a more detailed story from the Courthouse News Service:
U.S. District Judge Beth Labson Freeman asked Gilead Sciences and Merck to provide further case law regarding the area of patent law known as the “unclean hands” defense. . .
. . .In court on Wednesday, Gilead argued it shouldn’t have to pay Merck because the Merck engaged in unethical conduct during the process of bringing the drug to market and throughout the ensuing trademark infringement trial.
Specifically, Gilead alleges when one of Merck’s patent lawyers, Phil Durette, lied under oath about how he obtained proprietary information that led to the prosecution of one of the patents at issue.
Durette was on a crucial 2004 phone call with scientists at Pharmasset, the small company that developed sofosbuvir. Gilead subsequently bought Pharmasset for $11 billion in 2011.
Gilead says Durette misrepresented his position on the phone call and also agreed to confidentiality provisions, which he subsequently violated when he prosecuted one of the patents at issue only after he realized Pharmasset was close to developing a cure for hepatitis C.
Gilead believes that Durette modified Merck’s subsequent patent claims in light of the confidential information that he’d received from Pharmasset, and that he was not truthful about this in court. Merck, meanwhile, says that Durette took no actions until Pharmasset’s application published, which disclosed the compound’s structure and thus relieved any confidentiality obligations (and besides, they say, Gilead called Durette as a witness, anyway, which is one of those defenses that makes you wonder a bit). Merck is also claiming that Durette simply misremembered things that had happened 11 years ago, but the judge is allowing Gilead to proceed because Durette actually came up with specific alibis for why he wasn’t on that phone call, rather than just being unsure about the whole thing.
More on this as it goes on, if it does – this could provide some interesting discussions about patent law, or it could just be settled with some more cash and never be heard from again.