Last week, before the holiday break, the able federal District Judge Leonard P. Stark, sitting in Wilmington, entered an order which set a small part of the Gilead-Merck patent spat for trial on December 5, 2016.
He denied a delay, on the issue of whether Gilead’s subsequent work, also under a patent of its own — facially infringes Merck’s. The judge is expected to rule by next week — about bifurcating the trial. I am guessing he will bifurcate. That would mean that the more important question — of whether Merck has a patent that is enforceable — may wait for another day. [The “Defendant” in the pull quotes below is. . . Gilead. Just for those of you keeping score at home — that don’t want/need to open the linked PDF.]
And to be clear, I think this portion of the trial will likely find infringement — but that is to be expected. The question at the likely bifurcated trial, part two if you will — will be whether that Merck/Idenix patent filing ever set forth a sufficiently precise written description — such that Gilead should have avoided infringing on the work, as a valid “teaching the art” patent. Quoting a bit from the Memorandum Opinion and Order of last Tuesday, then:
. . . .The evidence at issue in this motion is probative of Defendant’s contention that the patent-in-suit is invalid due to lack of written description. A reasonable jury could credit Defendant’s evidence that in the immediate aftermath of Pharmasset’s Dr. Schinazi making certain disclosures to Idenix’s patent attorney, Idenix cancelled all pending original claims and added broader claims, which may be probative of Idenix’s inventors not being in possession of the full scope of the ultimately-claimed inventions at the time they filed the original patent application. The Court agrees with Defendant that “the jury is entitled to consider such evidence in determining how the hypothetical person of skill in the art would view the disclosure. . . .”
It will be a contested factual issue whether Pharmasset had access to Idenix confidential information and, if so, what, if anything, Pharmasset did with it. The parties will be permitted to argue all reasonable inferences from such disputed evidence. . . .
The parties hotly contest which of them is the innovator and they will be permitted to present evidence to support their view of that controversy. To the extent Plaintiffs argue or imply that there is anything improper in merely following a competitor’s published patent-related activities, the Court will be inclined to accept any reasonable jury instruction to be proposed by Defendant to clarify this point for the jury. . . .
And now we. . . wait. We wait for a clear day, and a smile to dawn, and shine a beaming shaft forth — south of these parts. . . a wide, copper twisty grin, in fact. . . .