Juanita R. Brooks

Brooks and a Fish & Richardson team convinced a federal judge to overturn a $200 million verdict against pharmaceutical client Gilead Sciences Inc. in a June bench trial.

Merck & Co. Inc. won the hefty award following a patent infringement jury trial in March 2016. Jurors found Gilead's lucrative hepatitis C drugs, Solvadi and Harvoni, infringed Merck patents.

But U.S. District Judge Beth Labson Freeman in San Jose undid the jury's verdict after finding that New Jersey-based Merck engaged in a "pervasive pattern of misconduct."

Merck was "guilty of unclean hands" and subsequently forfeited its right to assert patent claims against Gilead, Freeman wrote in a 65-page opinion issued in June. Gilead Sciences Inc. v. Merck & Co. Inc., 13-cv-04057 (N.D. Cal. June 6, 2016).

"I had never really seen anything quite like what happened in my over 40-year career, in terms of both business misconduct and litigation misconduct," Brooks said.

The misconduct stemmed primarily from Philippe Durette, a Merck patent prosecutor.

Durette improperly amended Merck's hepatitis C patent claims during the prosecution process using Gilead's confidential information. Durette then lied about amending Merck's patent claims during deposition and at trial.

Merck has appealed Freeman's decision to the U.S. Court of Appeals for the Federal Circuit. Foster City-based Gilead has filed a cross-appeal challenging the validity of Merck's asserted patents. The litigants are currently briefing the appellate court. Gilead Sciences Inc. v. Merck & Co. Inc., 16-2302 (Fed. Cir., filed July 6, 2016).

Brooks said that there is a broader question for federal courts to address on the scope of pharmaceutical patents.

"A court is going to have to address how broad some of these patents can be in this area, where you can claim literally billions of potential compounds," Brooks said.

But the Federal Circuit may sidestep the issue in Gilead-Merck appellate proceedings if the appellate court decides to simply keep Freeman's "unclean hands" decision in place.

"We're optimistic that the Federal Circuit will affirm the decision," Brooks said.

- Kevin Lee