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- Gilead v. Merck_CAFC_16-2302.Opinion.4-24-2018.1.pdf (235.9K) 0회 다운로드 DATE : 2018-04-26 15:47:21
§ Gilead에서 인수한 Pharmasset와 Merck에서 인수한 Isis Pharma는 신약 Sofosbuvir 관련 공동연구개발 진행 + 각각 특허출원 및 등록
§ Merck에서 Gilead 상대로 특허침해소송 제기
§ Gilead에서 Merck 상대로 특허비침해 확인의 소(DJ Action) 제기 + 주장요지 – 다음과 같은 Merck의 특허등록 과정에서 범한 Inequitable Conduct로 인해 Merck 특허권은 모두 Unenforceable함
§ 2001: Merck filed patent applications that eventually led to the patents-in-suit. Merck Chemist/Patent-Attorney Phillipe Durette helped with the prosecution.
§ 2002: Jeremy Clark working for a predecessor to Gilead (Pharmasset) was begin reviewing Merck’s early published patent applications “looking for loopholes.” Clark hit upon a proposed compound that led to sofosbuvir – the active drug at issue in this case.
§ 2003: Pharmasset (Clark) filed a patent application the sofosbuvir creation.
§ 2004: Merck and Pharmasset began to collaborate on development, but setup (1) a non-disclosure agreement and (2) a FIREWALL blocking Merck patent prosecutors from seeing details of Pharmasset. However, in a PHONE CALL, Patent Attorney Durette was told about the secret Clark patent application. After the phone call, Durette stopped his participation in the collaboration, but continued to prosecute the Merck patents.
§ 2005: Pharmasset (Clark) patent application became public, and Durette then amended the claims in the Merck applications to specifically target on the same compound.
§ Durette worked the first application until it issued in 2006.
§ A separate attorney (Jeffrey Bergman) took over prosecution for Merck in 2010 and narrowed so that the claims targeted metabolites of the same sofosbuvir compound.
§ Later at trial, Durette served as the corporate (R. 30(b)(6)) witness for Merck and the district court found that he gave false testimony in his deposition — denying that he had been part of the PHONE CALL.
2. 1,2심 판결요지 – Merck의 Inequitable conduct로 인한 특허권행사 불가능
§ The real problem for Merck is that its agent Durette (1) joined the call against the FIREWALL; then (2) continued to prosecute the applications after improperly learning of the information; and (3) lied about it at trial. Collectively, those were enough for an unclean hand finding.
§ Note that unclean hands sits in the background of several legal defenses: (a) the defendant alleged failure of written description, but the jury found that the amended claims were fully supported by the original specification; (b) the defendant alleged an implied license; but the court found otherwise; (c) there might have been a violation of the non-disclosure agreement, but that defense did not apply since Merck’s application was filed after the Pharmasset (Clark) application became public; (d) the defendant could have sued for breach of contract or unfair competition, but it did not.
첨부: 미국 CAFC 2018. 4. 25. 선고 Gilead v. Merck 판결