[U] As We Predicted, Judge Labson-Freeman Upheld On Appeal, On Merck's "Unclean Hands"...

More soon, but Merck’s loss on appeal, from the favorable West Coast $200 million verdict (now vacated -- August 2017 backgrounder), against Gilead (due to an in-house Merck patent counsel’s dishonesty in fact). . . will stand.

Now on a train, but I will quote the 30 page PDF opinion of the Federal Circuit, thus:

. . . .In February 2007, a few months after the ’499 patent issued, Merck’s Dr. Durette filed the application that ultimately issued as the ’712 patent. J.A. 24147. The original claims of that application were quite different from PSI-6130, J.A. 24336–41, and Dr. Durette immediately substituted two claims that were closer, but that the parties here do not contend covered PSI-6130, J.A. 24150–53. It appears undisputed that after April 2007 Dr. Durette did not participate in prosecuting the ’712 application. Merck Br. 18; see e.g., J.A. 24369–70 (April 2007 filing by the attorney who took over responsibility for prosecuting the application from Dr. Durette).

In 2010, Pharmasset published an article in the Journal of Medicinal Chemistry describing “sofosbuvir” (PSI7977) to treat HCV. J.A. 31990–2007. In 2011, [another attorney] took over prosecuting the ’712 application for Merck. J.A. 32383. Merck amended the ’712 application to include new claims. J.A. 24394–410. The ’712 patent issued on July 9, 2013. . . .

Merck argues that even where there is misconduct related to one patent, “that does not defeat claims under another patent simply because they were ‘brought . . . in the same lawsuit.’” Merck Br. 69. We agree; but the assertion does not undermine the district court’s ruling here. The Supreme Court’s decisions in Keystone and Precision Instruments, dealing with findings of unclean hands when multiple patents were at issue in the litigation and the alleged misconduct related to a subset of the patents, are instructive. In both cases, the Supreme Court applied the finding of unclean hands to all of the patents. Keystone, 290 U.S. at 246–47; Precision Instruments, 324 U.S. at 819. The district court in the present case had sufficient reason to find that both patents were tainted by the patentee’s misconduct, especially the litigation misconduct. Thus, we see no abuse of discretion with respect to either the ’499 patent or the ’712 patent. . . .

This appellate win for Gilead will not move the needle at Merck or Gilead -- but it is certain now that the fee award against Merck, of around $14.7 million -- will stand. Onward, to the food trucks -- under brightly triumphant, free(er) immigration skies!

नमस्ते