In Gilead Sciences, Inc. v. Merck & Co., the Federal Circuit affirmed the district court’s decision finding that Merck’s pre-litigation business misconduct and litigation misconduct barred it from asserting two patents against Gilead under the unclean hands doctrine. The district court decision vacated a $200 million jury award for infringement of Merck’s patents.

The district court found that Dr. Durette, an inventor and patent agent for Merck, had participated in a conference call with Gildead’s predecessor-in-interest related to the sofosbuvir compound. In violation of a confidentiality agreement, Dr. Durette then used information from that call to narrow the claims of a pending application to target a specific group of compounds, including sofosbuvir. Ultimately this application resulted in two patents, and Merck sued Gilead for infringement. Although Dr. Durette repeatedly testified at his deposition that he could not recall whether he had participated in the conference call, at trial, Dr. Durette admitted that he had known about the call.

Judge Taranto noted that the doctrine of unclean hands should not be invoked lightly but found that the evidence in this case did not support overturning the district court decision. He stated that the “findings establish serious misconduct, violating clear standards of probity in the circumstances.”