Gilead escapes enhanced damages in $2.5bn Idenix verdict
Biopharmaceutical company Gilead has escaped a finding of enhanced damages in its patent dispute with Idenix Pharmaceuticals, a subsidiary of Merck.
In December last year, LSIPR reported that a jury at the US District Court for the District of Delaware found that a patent owned by Merck on a hepatitis C treatment was valid and infringed by Gilead.
The patent, US number 7,608,597, was originally issued to Idenix, but was transferred to Merck when it acquired Idenix in 2014.
Following a ten-day trial, the jury awarded Idenix $2.5 billion in the patent battle over Gilead’s drugs Sovaldi (sofosbuvir) and Harvoni (ledipasvir/sofosbuvir).
The jury found Gilead’s infringement wilful, holding that Idenix was entitled to damages equal to a 10% running royalty on Gilead’s adjusted net sales revenue from the infringing products.
Idenix then asked the court to enhance damages based on the finding of wilful infringement and declare the case exceptional.
On Friday, September 22, District Judge Leonard Stark rejected Idenix’s motions.
Under 35 USC section 284, when damages resulting from patent infringement are found, “the court may increase the damages up to three times the amount found or assessed”.
Stark found that the Read Corp v Portec factors did not favour an award of enhanced damages here.
Since Halo Electronics v Pulse Electronics, courts have turned to the nine Read factors to determine the extent to which the infringer’s conduct was egregious.
“Only two factors favour enhancement: deliberate copying by Gilead and attempts by Gilead to conceal its misconduct,” said Stark.
He added: “Most of the other factors–a good-faith belief in non-infringement, behaviour in the litigation, the closeness of the case, the duration of misconduct and remedial actions taken by Gilead, and the lack of a motivation to harm Idenix–disfavour enhancement.”
In patent suits that are deemed “exceptional”, the court may award reasonable attorneys’ fees to the prevailing party.
According to Stark, the case doesn’t stand out from others with respect to the “substantive strength of ldenix’s position, nor the substantive weakness of Gilead’s position”.
He added: “While the case has been hotly contested, and has been marked by a tremendous number of disputes, these are typical realities of high-stakes patent litigation between competitors in a market presenting an opportunity for enormous profits.”
The court granted Idenix’s motion to award the company pre-judgment interest based on the prime rate.
Did you enjoy reading this story? Sign up to our free newsletters and get stories like this sent straight to your inbox.
Sign up for our latest webinar, Biotech patentability issues in Europe.
