Sunday, October 5, 2014

The Delaware federal Merck (via Idenix) v. Gilead Patent Spat Is In. . . Mediation: My Own "Overlooked Material News" Dept.

I apologize. I am very late with this bit of courthouse news. And it is a potentially material bit (to Merck).

Back in early August, in the Delaware federal District Court in Wilmington, three days after Merck's acquisition of Idenix had closed, the East Coast version of the patent spat related to the human body metabolites of Sovaldi® was referred to mediation. Pretty shortly, we ought to start hearing about some potential outcomes of those mediation efforts. See order below, in blue pull-quote.

Do recall though, that on the West Coast, in San Jose, California federal District court many of the same patent claims are being litigated -- and no order regarding mediation exists (yet) there. There, on April 3, 2015, the able District Court judge will be asked to decide what the terms "administering," and "compound" mean, in the context of the two patents covering. . . the adminsistration of the compound, as a treatment for Hep C -- a treatment that becomes the metabolite(s) of Sovaldi, inside the human body.

And, as long as we are updating, here -- after the mediation order out east, Gilead has been completely successful in forcing Merck to get some new co-counsel -- in all of these various pieces of litigation (including in Europe and Japan). It turns out that one of the former Idenix law firms had previously represented Gilead in an at least arguably substantially related matter. And that, a judge might rule, cannot continue, in favor of Merck. So, all the parties agreed to let that counsel withdraw quietly. Specifically, the firm’s ". . .withdrawal from its representation of Idenix/Merck encompasse[d] the pending Delaware cases as well as any other sofosbuvir related litigation or work for Idenix/Merck world-wide" according to a September 14, 2014 letter filed in open court in Delaware.

In any event, here is the mediation order:

. . . .SO ORDERED, ON August 8, 2014

CASE REFERRED to Christopher J. Burke for Mediation. Associated Cases: 1:13-cv-01987-LPS, 1:14-cv-00109-LPS, 1:14-cv-00846-LPS-CJB(dlk). . . .

It remains to be seen whether there will be agreed royalty payments, from Gilead to Merck -- and if so, how much they will be -- but we will keep an eye on these various courthouses for news. This might, at least in the wilder dreams of Merck's counsel, run into tens of billions of dollars, in favor of Merck, over the lives of the affected patents. Now you know why it is being fought on both coasts, at once, and in the EU and Japan. Enjoy a hopefully sleepy Sunday, one and all.

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