Gilead Sciences Inc. got hit with a $2.5 billion verdict in a patent jury trial against Idenix Pharmaceuticals LLC last year.
But it just dodged a second $2.5 billion bullet on Friday.
U.S. District Judge Leonard Stark in Delaware ruled that Gilead’s conduct surrounding its blockbuster hepatitis C (HCV) medication sofosvubir did not merit enhanced damages for willful infringement. In fact, Stark suggested that Gilead’s conduct was quite reasonable and even in some ways heroic, notwithstanding the evidence presented at trial.
“Here, without both parties’ contributions, humanity may well have been deprived of a cure for HCV,” Stark wrote. “Under the totality of circumstances, society’s interest in deterrence of willful patent infringement does not justify enhancing damages here.”
Sofosbuvir, marketed under Sovaldi and other brand names, was developed by Pharmasett Inc. and later acquired by Gilead. The drug is credited with saving millions of lives and ringing up tens of billions in sales for Gilead. Idenix, which is owned by Merck & Co., and Universita Degli Studi di Cagliari sued on the ground that Pharmasset had built Sovaldi on the back of their own patented discoveries.
Jurors in Stark’s court awarded $2.54 billion after rejecting Gilead’s patent validity challenges in a December 2016 trial. They also found the Pharmasett scientists had acted willfully, which opened the door to treble damages. Idenix had asked Stark to “at least double” the award to more than $5 billion.
Idenix is represented by Jones Day and Ashby & Geddes. Gilead is represented by Fish & Richardson.
Stark ruled that substantial evidence supported the jury’s finding of willfulness: that Pharmasset founder Raymond Schinazi took from Idenix the idea of using “two-prime (2′)-methyl up modified nucleosides” to treat HCV; that another Pharmasset scientist said Idenix’s work had left them with “nothing;” and that Pharmasset’s Jeremy Clark used Idenix’s patent application to help reach his breakthrough 2′-methyl up 2′-fluoro down compound that became sofosbuvir.
But even though jurors needed only two hours to reach their verdict, Stark sounded as if he wasn’t personally convinced. “If the only thing Pharmasset/Gilead did was to ‘deliberately copy’ Idenix’ s discovery that a 2′-methyl up modified nucleoside could be effective in treating HCV, that was not nearly enough to arrive at sofosbuvir,” he wrote. “Pharmasset and Gilead engaged in a massive effort to arrive at the ultimate cure.”
He also said that “nearly every aspect of this case was ‘close’ in the sense that it easily could have gone the other way.” His claim construction ruling, which “may ultimately be shown to be wrong” on appeal, may have tipped the balance, Stark added.
For those reasons he declined to enhance damages under Section 284 or find the case “exceptional” under Section 285 of the Patent Act. He did, however, impose the prime rate of about 3.5 percent on prejudgment interest, rather than the .10 T-bill rate Gilead was requesting. That alone could add more than $200 million to the judgment.
Stark is still evaluating Gilead’s motion for a new trial. In a footnote, he said his willfulness opinion is based on the assumption Gilead’s motion will be denied. But he stressed that “that should not be misunderstood as a holding or indication of the court’s forthcoming ruling.”