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A Merck Lawyer’s ‘Failed Memory Rings Hollow,’ Judge Rules

June 7, 2016, 9:47 PM

Having a judge say you committed serious patent infringement never looks good.

But it looks better than a judge accusing you of “egregious misconduct,” which is what happened on Monday in a patent dispute between Merck & Co and Gilead Sciences.

In the case, a federal judge in San Jose voided a $200 million patent infringement verdict from earlier this year that a jury awarded Merck against Gilead related to royalties on two drugs, Harvoni and Sovaldi.

As Bloomberg reported , U.S. District Judge Beth Labson Freeman wrote in her ruling that an in-house patent prosecutor for Merck “intentionally fabricated testimony” and Merck supported his “bad faith conduct.”

The judge wrote that Merck’s in-house patent prosecutor Philippe Durette gave “inconsistent, contradictory, and untruthful” testimony. One issue was whether Durette participated in a conference call in which a Gilead partner disclosed the chemical structure of a compound that became critical to the drugs at the center of the patent dispute with Merck.

According to the judge’s order, the call was scheduled as part of a collaboration between Merck and the Gilead partner, and Durette’s participation in the call would have barred him from prosecuting the patents in the case. He testified in deposition to not being on the call but later recanted that testimony at trial saying he couldn’t remember what had happened 11 years earlier.

The judge did not buy it. “Dr. Durette’s trial testimony about failed memory rings hollow,” she wrote.

Freeman wrote:

Candor and honesty define the contours of the legal system. When a company allows and supports its own attorney to violate these principles, it shares the consequences of those actions. Here, Merck’s patent attorney, responsible for prosecuting the patents-in-suit, was dishonest and duplicitous in his actions ... with Gilead and with this Court, thus crossing the line to egregious misconduct. Merck is guilty of unclear hands and forfeits its right to prosecute this action against Gilead.

Here’s a copy of the order via Bloomberg Law .

Freeman also reserved harsh words for Merck’s outside counsel, which was lead by Williams & Connolly’s Bruce Genderson.

The judge wrote that it is “troubling” that Merck’s counsel’s failed to disclose that Durette “would recant his prior testimony as soon as Merck learned” his testimony was inconsistent with the prior record.

Genderson did not return calls seeking comment.

It marks a swift reversal for what had been a major jury trial victory, which is still listed on Genderson’s bio on Williams & Connolly’s website as of Tuesday afternoon.

[Image “Bruce Genderson” (src=]Merck issued the following statement: “The judge’s ruling does not reflect the facts of the case and we will be filing the appropriate motions to begin the appeals process. In its decision, the jury recognized that patent protections are essential to the development of new medical treatments.”

Gilead’s lead attorney was Fish & Richardson’s Juanita Brooks, of San Diego, according to the Recorder .

“The reversal of the fifth-largest U.S. verdict this year vindicates Gilead in its refusal to share royalties with Merck,” Bloomberg wrote in its article, noting the company’s sales have started to slow this year amid intense competition.