GILEAD SCIENCES, INC. v. MERCK & CO., INC

GILEAD SCIENCES, INC. v. MERCK & CO., INC., Appeal No. 2016-2303; 2016-2615 (Fed. Cir. April 25, 2018).  Before Taranto, Clevenger and Chen.  Appealed from N.D. Cal. (Judge Freeman).  (Unclean Hands)

Background:

Merck held two patents for a Hepatitis C treatment.  Gilead sought a declaratory judgment that Merck’s patents were invalid.  Merck counterclaimed against Gilead for infringement of the two patents.  Gilead stipulated to infringement based upon the district court’s claim construction, but argued that the patents were invalid under §112(a).

Gilead also argued that because Merck had unclean hands by misrepresenting the role of its prosecution counsel with respect to both patents, any infringement finding would be unenforceable.  The district court found infringement, but that Merck had unclean hands.  Thus, the district court held that the infringement finding was unenforceable.

Issue/Holding:

Was the district court’s finding that the infringement of Merck’s patents was unenforceable due to the defense of unclean hands proper?  (continue reading)

Summary by:  Joel Gotkin

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