Fish & Richardson and client Gilead Sciences Inc. are slated to receive nearly $14 million in legal fees after exposing patent misconduct by Merck & Co. Inc. that helped Gilead shake off a $200 million infringement verdict.
U.S. District Judge Beth Labson Freeman in San Jose, California, on Friday awarded Gilead a little more than $12.5 million for Fish & Richardson’s work on the patent infringement case through June 30, 2016. The judge allotted an additional $1.37 million to Deloitte Review Services for document review and production it did.
The ultimate fee amount is short of the $15.5 million Gilead requested in the case, which involved infringement allegations against Gilead related to patents for the Hepatitis C medications Sovaldi and Harvoni. After a jury issued Merck a $200 million infringement verdict last year, Freeman scrapped it based on an “unclean hands” defense pushed by Fish & Richardson on Gilead’s behalf.
“The court thus finds the … amount to be reasonable based on the amount at stake in this case, the complexity of the issues, and the results Fish has achieved for Gilead,” Freeman wrote in her decision.
Fish & Richardson’s Jonathan Singer, a lead lawyer for Gilead along with fellow Fish & Richardson partner Juanita Brooks, said on Tuesday that his client hasn’t authorized him to comment on the litigation. One of Merck’s outside lawyers, Williams & Connolly’s Bruce Genderson, didn’t immediately respond to a request for comment.
Friday’s fee ruling comes after a March 2016 trial in the patent infringement case, which alleged that Merck and a collaborator, Ionis Pharmaceuticals Inc., pioneered a predecessor to sofosbuvir, a key ingredient in Gilead’s hepatitis C drugs, in the early 2000s. A jury sided with Merck at trial, finding Merck deserved $200 million in damages based on Gilead’s patent infringement.
After the verdict, however, Freeman handed down a June 2016 decision that sharply criticized the conduct of a former in-house patent prosecutor at Merck and blasted that company’s outside lawyers at Williams & Connolly for tainting a trial in the patent infringement case.
The judge found that the in-house patent prosecutor, Philippe Durette, lied about breaching a nondisclosure agreement related to a compound that became sofosbuvir. And Freeman knocked Merck’s lawyers for failing to alert her until the trial started that Durette would be recanting parts of his deposition testimony in the case.
Although Freeman has come down on Gilead’s side with respect to fees in the California federal lawsuit, the company still faces significant potential liability in a separate patent infringement case in Delaware federal court over the same hepatitis C drugs.
In the Delaware case, a jury sided in December with Merck subsidiary Idenix Pharmaceuticals LLC, handing down the largest patent infringement verdict in U.S. history. The jury awarded Merck $2.54 billion, a 10 percent royalty on Gilead’s $25.4 billion in sales of hepatitis C medications through August 2016.
Both cases are likely to continue. Following Freeman’s earlier rulings in the California lawsuit, both sides lodged appeals at the U.S. Court of Appeals for the Federal Circuit, which remain pending.
In Delaware, meanwhile, several post-trial motions are pending and U.S. District Judge Leonard Stark has scheduled a hearing for Sept. 7.
Scott Flaherty covers the business of law with a special focus on plaintiffs firms. He can be reached at email@example.com. On Twitter: @sflaherty18.