Wednesday, November 16, 2016

Part II -- On How "Project Invincible" Became... Quite Thoroughly MORTAL

Some readers may recall the now ancient history, here: Merck chose to name the 2014 acquisition of Idenix "Project Invincible" -- as (it would seem) Kenilworth then believed the Idenix patent estate would make Merck invincible, against the then-soon-to-be-approved Gilead Hep C cure called sofosbuvir. We have obviously covered that narrative before, here.

The latest installment of the narrative was unsealed overnight in Delaware, when Gilead's lawyers laid out -- in letter fashion -- how Merck may well have suffered some unintended patent law consequences, from trying to fly so close to the sun here.

Under then-applicable US patent law, Merck's own prior work in the area (well before Keniworth ever thought about buying Idenix) may have effectively invalidated Idenix's patent applications (under the older "first to invent" rules -- since mostly abandoned, but applicable to this dispute) -- as non-novel (at least as alleged by Gilead's patent lawyers). Oops. I'll quote from the letter, filed overnight now (all five pages are here, as a PDF file):

. . . .In its continued effort to avoid engaging on the merits, Idenix yet again asks this Court to strike Gilead’s evidence of how Merck’s prior work invalidates Idenix’s patents. There is simply no basis to strike Gilead’s expert reports. Gilead’s expert reports were: (1) served on the date ordered by the Court; (2) are directly responsive to recent discovery served by Idenix; and (3) cite to evidence that has always been in Idenix’s custody. There is no prejudice to Idenix.

On August 1, 2014, May 20, 2015, and September 4, 2015, Gilead served interrogatories seeking information on Idenix’s alleged invention story behind the patents-in-suit. (Ex. 1 at Interr. 2; Ex. 2 at Interr. 9; Ex. 3 at Interr. 22.) Despite the fact that these interrogatories were served years ago, Idenix supplemented them on September 30, 2016 to, for the first time, include an alleged conception and diligence story in an attempt to swear behind the work performed by Merck. (Ex. 4 at 24-27, Ex. A.) The expert reports served by Gilead on the Court-ordered date respond to this newly-concocted diligence theory. The reports do not contain any new invalidity theories.

The reports explain how Idenix’s patent are still invalid under the same 102 and 103 theories Gilead previously raised. They simply lay out how Idenix’s new diligence evidence is insufficient to save its patents from Merck’s prior conception and reduction to practice. As much as Idenix may not like the evidence, there is no sound basis to exclude it. Doing so would not only prejudice Gilead but would thwart the very public interest this Court cited when denying Idenix’s first motion to strike these defenses. . . .

We shall as ever see, but yesterday I predicted that the trial date would be pushed back (well past the December 2016 date) -- and now I wonder if the $3.8 plus billion Merck spent on Idenix was unwise -- given the later emerging diligence on the overlap of the patent estates, between Merck and Idenix. Ouch.

Even so, I am grinning ear to ear, as I walk in this morning -- it is a flawlessly crisp, bright Chicago morning. . . .


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