Skip to Content

Unclean Hands?

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.

26 comments on “Unclean Hands?”

  1. Petros says:

    Getting murkier but then there is a lot of money at stake

  2. c says:

    Must be a bit uncomfortable being this guy day-to-day.

  3. Chemjobber says:

    How does this sort of thing affect an attorney’s license?

    1. lawnerd says:

      perjury generally will mean he’ll be disbarred.

      1. Chemjobber says:

        Thanks, lawnerd!

  4. johnnyboy says:

    A lawyer who lies ? Impossible.

  5. Tom Hobbes, Med Chemist says:

    When all the industry is overcharged with lawyers, the last remedy is litigation, which provideth for every company, in victory, or death.

  6. Li Zhi says:

    It’s not the crime, it’s the cover-up…

  7. Peter Kenny says:

    More from Macbeth (in this case, Act 5, scene 1, 26–40 and Lady M has lost the plot big time)

    “Doctor:
    What is it she does now? Look how she rubs her hands.

    Gentlewoman:
    It is an accustom’d action with her, to seem thus
    washing her hands. I have known her continue in this a quarter of
    an hour.

    Lady Macbeth:
    Yet here’s a spot.

    Doctor:
    Hark, she speaks. I will set down what comes from her, to
    satisfy my remembrance the more strongly.

    Lady Macbeth:
    Out, damn’d spot! out, I say!—One; two: why, then
    ’tis time to do’t.—Hell is murky.—Fie, my lord, fie, a soldier, and
    afeard? What need we fear who knows it, when none can call our
    pow’r to accompt?—Yet who would have thought the old man to
    have had so much blood in him?”

  8. matt says:

    Fill me in on the details here…
    Merck took out a patent on nucleotides that would inhibit RNA polymerase, Gilead/Pharmasset made such a nucleotide analog where Merck did not, and now Merck wants a cut of the action? And apparently from this motion, Gilead is saying that Merck modified its patent filing after this phone call with Pharmasset to make sure that Merck’s patent covered Pharmasset’s work? Does the patent office show when such modifications were made? Seems like that would be the smokingest of guns, if so.

    Is there any obligation on the part of a patent holder to inform a company they believe will be infringing, when clearly aware (say, on a high-level conference call where precisely those details are discussed) that company is developing an infringing product? Or do they commonly just wait until it’s a big moneymaker to sue, and no previous notice is necessary? Is it just trademarks where you are required to be actively defending them?

    Merck used to have some respectability in the field, didn’t it?

  9. Magrinho says:

    Check LinkedIn. The guy is long gone. Leave him alone.

    A LOT of money is at stake is exactly the point. GILD, like most companies, would happily take down anyone to avoid sharing it.

  10. C2marvel says:

    That’s kind of a raunchy statement. Leave a dirt bag alone because he’s not at Merck anymore?? And your comment about Gilead is way off base. They were happy to share $11 billion with the people who actually enabled the drug at a time when no one else would take that big of a risk. The Merck patent is garbage with no teaching towards the actual drug or any enablement of how to make the one that works. If the Merck claims were modified after the fact to cover Pharmasset’s molecule, that just shows even more how little Merck’s contribution was and how scummy Merck is to even try to make a claim.

  11. KazooChemist says:

    I am not certain just what you are implying when you say that Gilead “would happily take down anyone” to avoid sharing the profits from their intellectual property. Isn’t that precisely what their legal team is supposed to be doing? Should the fact that this individual is no longer at Merck (as per his LinkedIn profile) exonerate him and Merck from any consequences from the issues under consideration here? Should Gilead “leave him alone”? I do not think so. If the claims regarding his memory of the facts regarding the phone call and the timing of changes to Merck’s patent applications can be proven, then both he and Merck would appear to have big problems. If the claims can be shown to be false, then both parties are blameless as to this aspect of the legal considerations and the rest of the patent litigation can continue. Gilead should not “leave this alone”, they should pursue it with all of their available resources.

    1. Phil says:

      I have read a couple things KS has written. If I’m not mistaken, his approach involves the application of modern decision theory and statistical modeling (Kahnemann, Hubbard, Taleb etc) to the drug discovery process. Some good stuff, but I don’t think he is the only one thinking that way.

      Plus, this LinkedIn post reflects really poorly. It’s Michael Moore-style set up. Do you really think a pharma exec is going to believe your claims in a cold email? If you want traction, you have to get there gradually, maybe by demonstrating the approach in an academic setting like almost every other “disruptive” technology.

      1. Kelvin Stott says:

        @Phil – Just to give it from the horse’s mouth, so to speak: While I have indeed worked on statistical modelling and decision theory in the past, this idea is purely biomolecular, aided and automated with some mechanical “plumbing”. In fact there is no need to extract and process any explicit biological information at all, either within our brains or computers. All biological information about a particular disease is already contained within the cells, and biomolecular feedback mechanisms are employed directly without the need to tap that information. The integrated sytem works exactly like evolution by natural selection, with the odds stacked in favour of producing viable drug candidates that can rescue the cells from their diseased state.

        And regarding the approach, yes, I could have taken a more traditional and/or respectful route, but then again, brashness is the one trait that is actually required to challenge the status quo in the first place. At the end of the day, whose problem is this?

  12. Having been deposed in a patent case, about events from several years prior I can assure you that it is easy to be quite certain about a thing which turns out to be false.

    I had clear, definite, memories that were in direct conflict. Only one could be true, and I don’t know which one is. I still don’t.

    Depositions can be quite long and can be quite the fishing expedition. You can learn a great deal about the elusiveness of memory, being deposed. And then the other guys construct a 2 minute highlight reel that makes you look like a crime lord and an imbecile. Hopefully your guys make a highlight reel that makes you look good.

    Memory, in short, is a wonderfully plastic construct. You think it’s a sort of HD movie of what happened, with some bits missing. You are wrong, it’s an HD movie your brain is making up on the fly out of bits and pieces it has lying around.

    1. Earl Boebert says:

      Having also been deposed multiple times in patent litigation, I agree completely. I was luckier than this gentleman in that I had no dog in the fight, but it is still difficult to keep your mental balance when being hammered with question about an offhand remark you made in a Usenet news group years earlier. Lawyers use a cross-examination technique (that I understand goes back to Cicero) of hopping randomly from topic to topic, forcing you to shift mental gears constantly, trying to get you to say something at hour six, minute 15 (these things go on *forever*) that contradicts what you said at hour one, minute 3. Based on that, my initial reaction is to cut this guy some slack until hard evidence is available.

      1. Anon says:

        Thus best response is always “I don’t recall”.

        1. The trouble is that sometimes you DO recall, quite clearly. And then you say some stuff. And then, an hour later, you realize that the thing you recalled so clearly is simply wrong, but there it is on the record and the format of a deposition is that you simply answer questions, so the opportunities to put it right are limited.

          1. Hap says:

            I can’t imagine I’d do that well under the circumstances, so it’s hard to hold someone accountable for their performance, but if you know ahead of time that something is important (like a call with a company in whose tech you are both interested in and working on independently, and the consequent legal maneuvers), wouldn’t you want to write it down? (Clancy: “If you didn’t write it down, it didn’t happen.”) People don’t want written records pointing to stuff they don’t want to be accountable for, but I also wouldn’t want to be on the hook for something I didn’t do, and knowing that memory is malleable and unreliable, having some sort of record is one way people can avoid getting entangled in their mental machinery.

    2. Anon says:

      Take a look at some of the more recent work on learning and memory. Not only is your brain trying to reconstruct from the bits lying around, but the very act of recalling a memory makes it subject to modification. Not a high-fidelity system. One place this becomes plainly obvious in the real world is eye-witness testimony, where someone is certain they saw something that is then shown to be wrong by DNA evidence.

  13. anonymous says:

    I knew Phil Durette and he is a very decent person! I am thinking he is the fall guy for others VPs who ran amuck. Truth does catches up with you.

  14. HT says:

    “Unclean hands” defence? I think Judge Judy is an expert on that one … Perhaps the lawsuit should be moved to JJ’s “court”, now that would be true entertainment!

  15. Yohanan Weininger says:

    not unrelated to dark side biotech – see false convictions by incompetent, biased, fraudulent expert forensic chemists for the prosecution and the recent decision to disband the National Commission on Forensic Science –
    “21,587 Reasons to Fix Forensic Science” NYT editorial, Apr 27, 2017
    https://www.nytimes.com/2017/04/27/opinion/21587-reasons-to-fix-forensic-science.html

    Erin E. Murphy. |Sessions Is Wrong to Take Science Out of Forensic Science” Apr 11, 2017.
    https://www.nytimes.com/2017/04/11/opinion/sessions-is-wrong-to-take-science-out-of-forensic-science.html?_r=1

    https://www.innocenceproject.org/

Comments are closed.