Gilead Files Its “Please Set-Aside” Post Trial Brief — On The $2.54 Billion Hep C Patent Award, In Delaware

mrk-alt-gil-verdict-hep-c-12-15-16 I will only quote a smallish bit of it, below — it runs 32 pages, as a PDF file. [Prior item — in the series here, for reference.]

Expect appeals all around, after all the post-trial motion work is completed. But Gilead is not likely to have to start actually paying cash to Merck any time in the near future — trust that much. That’s how the process works.

. . . .Idenix’s testimony established that the ’597 patent fails to enable the full scope of its claims, for at least two reasons. First, Idenix’s experts testified that: (a) “a lot of compounds” are covered by the claimed structural limitations; (b) a “significantly smaller” number of those compounds are effective to treat HCV; and (c) the effective compounds are discovered via screening. The Federal Circuit has held that required screening of “a lot of compounds,” Tr. 1918:11 (Meier), to find the active species fails to enable the full scope of the claims as a matter of law. Wyeth, 720 F.3d at 1386.

Second, the claims as construed include as part of their scope effective 2’ methyl up nucleosides with fluoro in the 2’ down position. Idenix witnesses testified that it was not until 2005 — five years after the alleged priority date, and after reading Pharmasset’s patent application — that highly-trained Idenix chemists were able to make and isolate 2’ methyl up nucleosides with fluorine at the 2’ down position. Idenix witnesses also testified that the specification does not disclose 2’ methyl up, 2’ fluorine down compounds — which include the Accused Products—even though it discloses the use of fluorine at other substituent positions. Federal Circuit authority holds that this does not satisfy enablement as a matter of law. See Liebel-Flarsheim, 481 F.3d at 1380. . . .

Onward, on a sullenly-gray but rather warm Shrove Tuesday morning, in silence — as only the “penitent man shall pass“. . . .

नमस्ते

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