[00:00:26] Speaker ?:
Poof!

[00:01:05] Speaker ?:
The United States Court of Appeals for the federal government is now open to any questions.

[00:01:13] Speaker ?:
God save the United States from this honorable vote.

[00:01:40] Speaker 05:
So we will hear argument first in numbers 16-2302 and 16-2615, Gilead Sciences against Merck and Company.

[00:01:54] Speaker 05:
Mr. Lamkin.

[00:01:59] Speaker 05:
As you might expect, we probably will go a little bit longer than the allotted time, so don't feel needlessly constrained.

[00:02:10] Speaker 05:
Make your points in an unhelpfully clipped fashion.

[00:02:16] Speaker 01:
Thank you, and good morning.

[00:02:17] Speaker 01:
May it please the court.

[00:02:20] Speaker 01:
In Eli Lilly, this court held that unclean hands requires materiality.

[00:02:25] Speaker 01:
The opinion below says that unclean hands, quote, does not require a finding of materiality.

[00:02:30] Speaker 01:
And it calls that requirement nonexistent.

[00:02:33] Speaker 01:
Nowhere is the omission of the materiality requirement more apparent than in the court's treatment of the 712 patent.

[00:02:40] Speaker 01:
which appears on page 61 of the court's opinion.

[00:02:43] Speaker 01:
The court there doesn't merely say omit the requirement of finding some nexus between wrongful conduct and some unfair advantage for the wrongdoer in connection with the relief saw.

[00:02:54] Speaker 04:
Maybe the question is, what do we mean by the word materiality?

[00:02:59] Speaker 04:
Yes.

[00:02:59] Speaker 04:
Because one could interpret what the district court said and did in finding unclean hands here as the

[00:03:09] Speaker 04:
you know, the wicked suppression of real evidence as being something that was material here to the very debate between the parties here, the validity of the patent.

[00:03:24] Speaker 04:
And so why couldn't that kind of understanding and conception of materiality?

[00:03:30] Speaker 04:
I guess what I'm wondering is you want there to be an actual tangible benefit

[00:03:37] Speaker 04:
yielded by the plaintiff or some tangible harm suffered by the defendant.

[00:03:44] Speaker 04:
And I'm just trying to understand, is that really necessary if, for example, in their sense, besides but for materiality, there could be just affirmative acts of egregious misconduct, right?

[00:03:58] Speaker 04:
If you file a false affidavit with the PTO in an effort to try to bamboozle the agency to grant you a patent,

[00:04:07] Speaker 04:
you're basically done, as I understand it, under there a sense.

[00:04:11] Speaker 04:
Likewise, Keystone, sorry, I'm taking up your time, but you're going to have time.

[00:04:18] Speaker 04:
Keystone, we were only talking about a possible invalidating prior use, not an actual definitive invalidating prior use.

[00:04:26] Speaker 04:
And there the Supreme Court said, well, we're barring the courthouse doors in that particular example, too, regardless of whether this

[00:04:36] Speaker 04:
suppression of evidence there actually would lead to an invalidation of the patent.

[00:04:42] Speaker 04:
So I guess what I'm trying to figure out is, what is really the understanding of materiality in your view, given my understanding of Therosense and Keystone?

[00:04:51] Speaker 01:
Sure.

[00:04:51] Speaker 01:
OK, so our understanding, I should make clear, we're not saying but for causation.

[00:04:55] Speaker 01:
What we are saying is that there should be some relationship, some nexus, as Judge Bryson put it, in her find a combined shaft, some nexus between the wrongful conduct

[00:05:05] Speaker 01:
and some unfair advantage, something that relates to the courts not wanting to provide the relief requested because it somehow advantaged them in obtaining that relief.

[00:05:15] Speaker 01:
And I think Keystone in particular is a very good example of that.

[00:05:18] Speaker 05:
I'm sorry.

[00:05:19] Speaker 05:
This unfair advantage actually obtained or potentially obtained had the misconduct not been uncovered and any potential effect wilted?

[00:05:34] Speaker 01:
I think, Your Honor, I believe a potential would be sufficient.

[00:05:37] Speaker 01:
I mean, these lines are not imprecise, but potential would be sufficient.

[00:05:40] Speaker 05:
But why isn't that present here?

[00:05:43] Speaker 05:
And if one thinks of this in either two or three episodes, the 2004, 2005 conduct, the 2015 deposition conduct, and then the 2016 trial, starting with the first, the origin story of the

[00:06:01] Speaker 05:
February 2015 amendment was something that maybe shouldn't in law have been relevant to any legal issue, but you knew full well that it was going to be relevant.

[00:06:16] Speaker 05:
That's why your company had a policy of trying to separate these things.

[00:06:23] Speaker 05:
So how is it that a false origin story

[00:06:30] Speaker 05:
deposition wouldn't have had an effect and how is it that a improper sequence of participation plus continuation on the docket is unconnected to the potential future litigation?

[00:06:46] Speaker 01:
Well I think for the 712 the district court actually said it's not connected and I will not rely on it.

[00:06:52] Speaker 01:
I refer to footnote 5 on page 61 where the court says flat out

[00:06:56] Speaker 01:
The finding of improper business conduct related to the March 2004 call is not considered by the court in determining whether unclean hands prevented enforcement of the 712 patent.

[00:07:06] Speaker 01:
And so if you go and look after that, what did the district court rely on in connection with the 712 patent?

[00:07:12] Speaker 01:
It's not just that the district court used a cast of darkness.

[00:07:16] Speaker 03:
Are you moving away from what the 712, you're sliding away from the thrust of what the surviving judge is pushing you?

[00:07:26] Speaker 03:
So back to the 499.

[00:07:28] Speaker 01:
I don't think it even had the potential under any legal standard, a correct legal standard or otherwise, of affecting the validity of that patent.

[00:07:36] Speaker 01:
Where, what, what are you participating in?

[00:07:38] Speaker 03:
But did it affect the environment of the litigation?

[00:07:41] Speaker 01:
Oh, too much to our detriment to be honest.

[00:07:42] Speaker 03:
You said it would affect the validity of the patent.

[00:07:44] Speaker 03:
You're going to a but-for type of test.

[00:07:46] Speaker 03:
Didn't it have an impact on the environment of the litigation?

[00:07:50] Speaker 01:
I don't think it had any possible impact on the outcome.

[00:07:54] Speaker 01:
Not an unfair advantage, not a slight advantage.

[00:07:57] Speaker 01:
And there's a reason for this.

[00:07:58] Speaker 01:
The claims already covered the infringing product when that meeting took place.

[00:08:06] Speaker 05:
To kind of focus this a little bit, as Mr. Durrett or Dr. Durrett said,

[00:08:14] Speaker 05:
It is potentially helpful to go from a broad claim to a narrow claim.

[00:08:17] Speaker 05:
The broader claim might have been subject to easier invalidation.

[00:08:22] Speaker 05:
So by going from one to the other, you do actually reduce litigation risk.

[00:08:28] Speaker 05:
The findings of the district court are that the participation in the call followed by the non-recusal from the docket had an effect on the

[00:08:41] Speaker 05:
arrival at the narrowing amendment, which had the potential litigation benefit of being narrower and therefore less subject to invalidity.

[00:08:50] Speaker 01:
Well, actually, Your Honor, the only impact of narrowing was to create an invalidity problem, which is the one we're arguing about today, or potentially on Robattle, that there was a mismatch in the sense that, or the argument that there's a mismatch to the spec was much broader

[00:09:06] Speaker 01:
And the claims are much narrower.

[00:09:08] Speaker 05:
And the argument is that there was no written description, because the claims don't point you towards... Right, but by narrowing, you certainly, and Dr. Durrett testified, certainly plausibly enough, that you reduce the risk of, forget about 112, but about 102, 103 infelidity.

[00:09:26] Speaker 01:
The district court didn't rely on there being wrongful conduct linked to any unfair advantage in terms of reducing any particular risk.

[00:09:33] Speaker 01:
The district court was unhappy and

[00:09:36] Speaker 01:
relied on the fact that in mending the claims, he amended the claims, quote, to cover savaspa-vir and metabolites.

[00:09:43] Speaker 03:
What do you do with fact-finding 104?

[00:09:47] Speaker 03:
It seems to me, sir, that these unclean hands pieces are intensely fact-intensive.

[00:09:53] Speaker 03:
You can't deny that.

[00:09:54] Speaker 03:
And we have a clearly deferential standard of review here.

[00:09:59] Speaker 03:
So I really would like you to go back, starting on a background page 12 in the appendix,

[00:10:06] Speaker 03:
where the fact findings begin dealing with the fact that Mr. Garrett knew he was going to a meeting, knew at the meeting that the structure of the composition meets closed, et cetera.

[00:10:18] Speaker 03:
And just tell me, you say the fact findings are clearly erroneous.

[00:10:23] Speaker 03:
You're brief.

[00:10:24] Speaker 03:
Yes.

[00:10:25] Speaker 03:
Which numbered ones are by number, and then tell me why?

[00:10:33] Speaker 03:
What's the heart of the clearly erroneous backline?

[00:10:38] Speaker 03:
Because it leads up, as I say, to 104, where the court is saying, if Duret hadn't violated improper business conduct by having been in that meeting, he wouldn't have amended the claim.

[00:10:51] Speaker 01:
Yeah, and I think that one, I should start there.

[00:10:53] Speaker 01:
Well, neither of you should start.

[00:10:55] Speaker 03:
Start around 63 and come forward.

[00:10:58] Speaker 01:
Should I start back at 63?

[00:10:59] Speaker 03:
Yeah, paragraph 63 is where it sort of starts on page 12.

[00:11:06] Speaker 03:
Merck directed Durrett to participate in this conference.

[00:11:09] Speaker 03:
Is that true?

[00:11:10] Speaker 03:
False?

[00:11:11] Speaker 03:
I mean, which is a buildup of a lot of facts.

[00:11:15] Speaker 01:
There's certainly evidence that at least Pam Demaine had an email that suggested Mr. Durrett was to participate.

[00:11:20] Speaker 03:
Well, tell me the ones by number that you think are clueless.

[00:11:25] Speaker 01:
All right.

[00:11:28] Speaker 01:
By number, I'd start at 39 to 41, which begins with the nondisclosure agreement.

[00:11:35] Speaker 01:
I think the problems with 39 to 41 on the nondisclosure agreement is legal is factual error that comes from a legal error, which is not looking at the terms of the NDA.

[00:11:46] Speaker 01:
The NDA did not say that if you attend this in these meetings, you may never use any information from these meetings.

[00:11:52] Speaker 01:
It had a specific definition of confidentiality.

[00:11:55] Speaker 01:
And once the information became public,

[00:11:57] Speaker 01:
you were allowed to use it, even if you got the information initially from the meeting and you didn't have to get the information from the public.

[00:12:04] Speaker 01:
That information just became open.

[00:12:06] Speaker 01:
And so I think when the district court found wrongful conduct in amending the claims, the district court said there was a violation of the NDA.

[00:12:13] Speaker 01:
But there was no violation of the NDA, because the NDA was pretty clear.

[00:12:16] Speaker 05:
The district court also said, and it seems to me less vulnerable to the point you just made, that

[00:12:25] Speaker 05:
The participation plus the non-recusal was a violation of an understood firewall to keep out of the docket controller knowledge of the subject of the due diligence conversation.

[00:12:46] Speaker 05:
So forget about the NDA for now, about which you have a simple and strong point.

[00:12:51] Speaker 01:
So the firewall.

[00:12:54] Speaker 01:
is always referred to as, and this is paragraph 85 of the findings of that, it's referred to as the firewall of the NDA.

[00:13:01] Speaker 01:
There's no evidence whatsoever that the firewall extended in duration or time or effect beyond.

[00:13:07] Speaker 05:
There is evidence from Dr. Duret's own deposition that it was Merck's own policy not to have somebody who had a docket related to a conversation

[00:13:20] Speaker 05:
Um, if you thought the conversation was going to be about this because it might have a tainting effect, even if as a matter of law, it shouldn't, but the way written description challenges are, are litigated.

[00:13:34] Speaker 05:
It's undeniable that the origin story does play a role.

[00:13:39] Speaker 01:
Your honor, I think there's two questions.

[00:13:41] Speaker 01:
The first one is the Merck policy certainly says that you should not be in these meetings if it's going to taint you.

[00:13:48] Speaker 01:
But it also does not say that once the confidentiality agreement does not apply to information, you are forever barred from patent prosecution.

[00:13:56] Speaker 01:
And there is no amendment to these claims until after Clark publishes and after all the information disclosed on the call becomes public.

[00:14:04] Speaker 01:
And so both the NDA and the associative fire will have expired.

[00:14:07] Speaker 01:
So if you're looking for wrongful conduct, the amendment, and some relationship to an unfair advantage, you've got neither because the NDA permitted the conduct.

[00:14:17] Speaker 01:
And there's no wrongful advantage because these claims, the compounds, were covered by the initial claims.

[00:14:23] Speaker 01:
And the narrowing did not provide any unfair advantage as against Gilead with respect to the relief we sought to Gilead.

[00:14:31] Speaker 01:
Merck was entitled to enforce these claims at Gilead from the first day the claims were filed to the end.

[00:14:36] Speaker 05:
Can I ask you this question?

[00:14:38] Speaker 05:
Do you have evidence that even if Dr. Durrett had recused

[00:14:46] Speaker 05:
after the March 2004 call and someone else took over the prosecution that Merck would have in fact come to file the same or comparable narrowing amendments yet to cover this, I guess the PSI 6130.

[00:15:09] Speaker 01:
Yes, absolutely.

[00:15:10] Speaker 01:
The first is very similar narrowing amendments were done in the 395 patent.

[00:15:15] Speaker 01:
which was a parallel patent that covered the double ring.

[00:15:19] Speaker 01:
And that was in 2003, I believe.

[00:15:22] Speaker 01:
And so it made perfect sense to have similar narrowing amendments later on in the 499 patent.

[00:15:29] Speaker 01:
And mind you, it was 712.

[00:15:32] Speaker 03:
We would infer from that that would have necessarily happened with regard to the patent the presiding judge is talking about?

[00:15:40] Speaker 01:
I think frankly, if you look at the patents, it becomes obvious.

[00:15:43] Speaker 04:
I'm confused.

[00:15:46] Speaker 04:
Did Dr. Durrett rely on as indicia of why he made the amendment in February 2005 for the 499, referencing whatever prosecution you're referring to for something called the 395?

[00:16:00] Speaker 01:
I think that is mentioned by Dr. Durrett in his testimony, but I think the key thing here is that everybody, this is a narrow space, everybody is watching everybody else's patents.

[00:16:11] Speaker 01:
Pharmacet admitted it was watching Merck's patents,

[00:16:13] Speaker 04:
I understand that, but is there something a little more specific that was testified to or otherwise that is evidence that Merck put on that said this was an inevitability as soon as Clark published in early 2005, that Merck was going to write these claims regardless of who would be the author of that amendment?

[00:16:42] Speaker 04:
whether it was someone that's arguably tainted, like Duret, or some other attorney.

[00:16:48] Speaker 01:
First, I think Merck's position throughout this is that it's an irrelevancy.

[00:16:51] Speaker 01:
I understand that.

[00:16:52] Speaker 01:
No, we understand that part.

[00:16:55] Speaker 03:
Yes, no answer.

[00:16:56] Speaker 01:
And I don't think we put on evidence that said it was actually an inevitability.

[00:17:01] Speaker 01:
But the 712, I should point out, that Duret was long retired.

[00:17:05] Speaker 01:
We had a succession of two other patent prosecutors.

[00:17:08] Speaker 01:
and they amended it to cover the metabolites of osmium.

[00:17:11] Speaker 05:
Put aside for a minute, I guess, something quite important to you, which you already mentioned, which is the footnote in the district court's opinion, saying I'm not actually relying on anything for the 712.

[00:17:20] Speaker 05:
712 Amendment is in 2011, am I remembering that right?

[00:17:23] Speaker 05:
It is correct.

[00:17:24] Speaker 05:
And by then the 499 is actually out, right?

[00:17:27] Speaker 05:
It was issued in 2006.

[00:17:31] Speaker 05:
How could there be an independence of the 2011 amendment to the 712 from what had occurred with the 499?

[00:17:42] Speaker 01:
Well, the district court itself, not only in footnote 5, said that she wasn't going to rely on it.

[00:17:47] Speaker 01:
But during the hearing, the judge said any effort to trace that amendment back to Dr. DeRet and the 499 was, quote, a dead end.

[00:17:55] Speaker 01:
And there's a reason for that.

[00:17:57] Speaker 01:
By the time it was amended in 2011, Savos-Bavir

[00:18:00] Speaker 01:
had publications.

[00:18:02] Speaker 01:
And we went through two different patent prosecutors.

[00:18:04] Speaker 01:
And the trail went cold on tracing it back to the 499.

[00:18:06] Speaker 01:
It was because of the publication of Sylvester Weir metabolites.

[00:18:10] Speaker 01:
And there's nothing, I guess as Bergman, Mr. Bergman testified that he knew nothing about DeVette or the 499 or anything about that when he went and amended the test.

[00:18:20] Speaker 01:
Bergman didn't know about the 499?

[00:18:21] Speaker 01:
He didn't know anything about the prosecution of the 499.

[00:18:25] Speaker 01:
He relied on public information when he went and said, I'm going to amend this.

[00:18:30] Speaker 01:
to cover the salvas with your metabolites.

[00:18:32] Speaker 05:
Can you return to Judge Chen's question about specific findings, contention, evidence that it was an inevitability that Merck would arrive at the February 2005 amendments, even if not in February, sometime later.

[00:18:58] Speaker 05:
even if Dr. DeRette had disappeared from the docket?

[00:19:02] Speaker 01:
I think that because both parties, and the evidence is clear that everybody who watches is watching Epios's docket, it was absolutely clear from Clark itself that it was focused on methyl up, fluoro down, nucleosides.

[00:19:17] Speaker 01:
Every single one of the examples had that pattern.

[00:19:20] Speaker 01:
Every single claim had that pattern.

[00:19:23] Speaker 01:
The lead compound

[00:19:24] Speaker 01:
The first example was PSI 6130.

[00:19:27] Speaker 01:
It was the only one for which there was data.

[00:19:30] Speaker 01:
Nobody with the background in chemistry that these people have could look at Clark and realize that this was a significant compound they wanted to ensure would recover.

[00:19:40] Speaker 04:
Did someone from the Merck side testified all this?

[00:19:43] Speaker 04:
I mean, I understand this is your reading of the Clark application, and that very well may be true.

[00:19:50] Speaker 04:
I need to know, did Dr. Durrett or someone else

[00:19:53] Speaker 04:
So paint this very specific picture of the Clark disclosure.

[00:19:58] Speaker 01:
Yeah, I don't believe there was, because I think, as I said, we were focused on the fact that it always covered these compounds.

[00:20:10] Speaker 01:
And it didn't stop covering the compounds.

[00:20:11] Speaker 03:
But in response to this very specific question that is very important that's been asked by both the presiding judge and by Judge Chan, you have given an attorney argument for an answer.

[00:20:23] Speaker 03:
It's a yes-no answer to the question, does the record contain any evidence put on by Merck showing absolutely positively this all would have happened, you know, even if Durant hadn't been around?

[00:20:39] Speaker 03:
And you've gone in circles.

[00:20:40] Speaker 03:
I don't blame you.

[00:20:42] Speaker 03:
But it's a yes-no answer.

[00:20:44] Speaker 01:
I think the answer is no.

[00:20:45] Speaker 01:
I'm not positive about that.

[00:20:47] Speaker 03:
There is no such evidence.

[00:20:50] Speaker 03:
And the world is an imperfect place.

[00:20:53] Speaker 03:
Even as direct testified, sometimes I learn about this stuff a month later, sometimes later than that.

[00:21:01] Speaker 03:
There's a clipping service that sends us stuff.

[00:21:05] Speaker 03:
I don't always get to it.

[00:21:06] Speaker 03:
I'm a very busy man.

[00:21:09] Speaker 03:
So why is there necessarily, should we accept your attorney argument, that this would have happened?

[00:21:16] Speaker 01:
Well, of course, the burden is one.

[00:21:17] Speaker 03:
You're really a direct did testify that he isn't always just

[00:21:22] Speaker 03:
like you would say, glued to the phone waiting for the information about what the competition is doing.

[00:21:29] Speaker 01:
So of course, the burden is on Gilead to prove by clear and convincing evidence that there was just unclean hands.

[00:21:37] Speaker 01:
And we believe that means not just wrongful conduct, but a nexus, some connection to some unfair advantage or some reason why a court would not want to give relief on claims there.

[00:21:49] Speaker 01:
And I just don't think there's any evidence whatsoever or any basis for thinking that, first, the claims would have somehow been narrowed to exclude their compounds absent this meeting, or that the claims really would not have been.

[00:22:04] Speaker 01:
I think that's basically it.

[00:22:06] Speaker 03:
It's not necessarily narrowing to exclude.

[00:22:09] Speaker 03:
Storyline is that you didn't even need to amend the claims the claims always covered the compound Just as a matter of a convenience to the examiner that this was done Even though none of the other invent none of the inventors on the project ever asked for this amendment They were presumably glued to the phone also to learn about Clark's disclosure But after Clark's disclosure isn't the fact finding that none of the inventors came forward and asked to have the claims amended

[00:22:41] Speaker 01:
I think, Your Honor, there is no evidence that that happened afterwards, but there's powerful evidence that this was.

[00:22:46] Speaker 03:
I'm just saying, when you're talking about the fact that Gilead hasn't put any evidence in, they were the ones that produced the evidence that none of the inventors had asked to have the claims narrowed, amended to this.

[00:22:59] Speaker 03:
After all, this is the crown jewel, the thing everybody was looking for, you would have thought, that once

[00:23:05] Speaker 03:
I'm now making the argument that you're making, an attorney argument.

[00:23:10] Speaker 03:
You would have thought that the inventors glued to the phone and knew about Clark would have jumped on direct, like, overnight.

[00:23:19] Speaker 03:
Please amend these claims in a hurry.

[00:23:21] Speaker 01:
And I think that's exactly what happens, Your Honor, because the moment our patent came out, they had Clark had our patent on hand.

[00:23:28] Speaker 01:
When their patent came out, we amended it.

[00:23:31] Speaker 03:
And that may be this perfect world

[00:23:35] Speaker 03:
in competition the way it works, but we're looking for evidence to support the arguments.

[00:23:40] Speaker 01:
Well, I think the answer is this.

[00:23:43] Speaker 01:
First, I need to go back to my point, which is that the claims always covered it.

[00:23:47] Speaker 01:
If you're looking for an unfair advantage, if you're looking for an impact, you're looking for a potential impact, it's hard to see one.

[00:23:54] Speaker 01:
Certainly not one that makes it unfair for Merck to assert its 499 claims against Gilead.

[00:23:59] Speaker 01:
The second piece.

[00:24:00] Speaker 03:
If it was always there, we'd found it without any blaze marks.

[00:24:03] Speaker 03:
We were really lucky.

[00:24:04] Speaker 03:
We went in the forest at night with no light at all, but we found the one tree we were looking for.

[00:24:10] Speaker 01:
And I'll come to that in one second, but I also wanted to make sure that the court was there.

[00:24:15] Speaker 01:
If you look at pages eight and nine of our opening brief, this was a compound, the methylate fluorine, that was drawn in the lab notebooks by Dr. Prakash, produced, admittedly, in a protected form with a double ring by Dr. Saab.

[00:24:28] Speaker 01:
And Dr. Olson, one of the inventors, said he made sure that these were covered, because the fact that methyl op was an inhibitor and fluoro down was a substrate were extremely important findings.

[00:24:39] Speaker 01:
That's the notion that somehow or another, but for this meeting, that these compounds would have been excluded.

[00:24:45] Speaker 01:
I don't think there is even a shred of evidence to support it, much less clear and convincing evidence of the sort that would require a clean hand.

[00:24:52] Speaker 04:
Well, I don't understand.

[00:24:53] Speaker 04:
I'm trying to figure out.

[00:24:55] Speaker 04:
You were getting on a roll there.

[00:24:56] Speaker 04:
I'm sorry I interrupted you.

[00:24:57] Speaker 01:
No, no.

[00:24:59] Speaker 04:
That's why I'm here.

[00:25:01] Speaker 04:
There was a competing story, a competing narrative, that when it came to scoping down the claims to cover this particular subgenus, there weren't any blaze marks in the written description such that one of ordinary skill reading the written description would have

[00:25:22] Speaker 04:
sufficient guidance to arrive at this particular patch of this very, very large forest.

[00:25:30] Speaker 04:
I am told there are billions and billions of possibilities.

[00:25:32] Speaker 04:
I didn't see you resist that in your yellow brief.

[00:25:37] Speaker 04:
And so the concern is that this was derived from the Pharmacet people, this particular claims scope.

[00:25:45] Speaker 04:
And now we have a witness that was in the deposition

[00:25:52] Speaker 04:
one could argue that he was making it very, very clear.

[00:25:56] Speaker 04:
There was absolutely no way he could have been tainted by anything from the farmacet camp, whether it was the application or the phone call, because he wasn't on the call.

[00:26:06] Speaker 04:
There's just no way.

[00:26:07] Speaker 04:
He just was looking to expedite the prosecution.

[00:26:12] Speaker 04:
And then in trial, he continues to say, all right, probably saw it.

[00:26:17] Speaker 04:
In fact, no, I must have seen it.

[00:26:19] Speaker 04:
I must have seen it, because

[00:26:22] Speaker 04:
That's what triggered me.

[00:26:23] Speaker 04:
And then he says this was the most important subject matter to the collaboration.

[00:26:31] Speaker 04:
And now the district court judge seems to be set off by that because the indication or the insinuation from Dr. Durrett is that he's saying that the collaboration team contemplated this particular subgenus when there's absolutely no evidence to that effect.

[00:26:51] Speaker 01:
Oh, no.

[00:26:52] Speaker 01:
There is evidence that effect, which I just pointed out.

[00:26:56] Speaker 04:
Who communicated that to Dr. Durrett, though?

[00:26:58] Speaker 01:
Dr. Olson said that he made sure in the first instance that the methyl up and fluorocomdowns were included.

[00:27:06] Speaker 01:
So that had to be computed.

[00:27:09] Speaker 04:
Included?

[00:27:09] Speaker 04:
What does that mean, included?

[00:27:13] Speaker 04:
Did someone order Dr. Durrett to say, we want

[00:27:18] Speaker 04:
just the fluorine, and we just want the methyl up.

[00:27:21] Speaker 04:
So if we're talking about the amendments... The February 2005 amendment.

[00:27:26] Speaker 01:
So as a matter of law, when you're looking for written description, you look at the specification.

[00:27:32] Speaker 01:
Ariadne made clear it's the disclosure that matters.

[00:27:35] Speaker 04:
Right now I'm just interested in what was the motivation to make the amendment.

[00:27:40] Speaker 04:
Who ordered the amendment?

[00:27:42] Speaker 01:
So it appears that the amendment came from DuRet.

[00:27:45] Speaker 01:
Right.

[00:27:45] Speaker 01:
And DuRet has given a number of reasons why he amended it.

[00:27:48] Speaker 04:
One was expediting, and two was this was the subject matter that was most important to the collaboration.

[00:27:55] Speaker 04:
This subject matter, this particular subgenus.

[00:27:58] Speaker 01:
And he also has said that there must have been a triggering event, and he thinks it's likely in hindsight that trigger event was Clark.

[00:28:05] Speaker 01:
Although he doesn't remember precisely when he saw Clark, and that was consistent both across his deposition.

[00:28:11] Speaker 04:
So is he trying to have it both ways there?

[00:28:14] Speaker 04:
Maybe he saw Clark, maybe he didn't, but Clark must have been the trigger.

[00:28:18] Speaker 04:
Do you see the problem there?

[00:28:20] Speaker 01:
Yeah, of course.

[00:28:22] Speaker 01:
Dr. Duret is not a great witness.

[00:28:27] Speaker 01:
In trials, you have bad witnesses.

[00:28:29] Speaker 01:
This happens.

[00:28:31] Speaker 01:
But when you're looking for unclean hands, it's not a bad witness that triggers unclean hands.

[00:28:35] Speaker 01:
It's not even an untruthful witness.

[00:28:37] Speaker 01:
It is egregious misconduct.

[00:28:40] Speaker 01:
which in turn produces some unfair advantage.

[00:28:44] Speaker 05:
Not in turn produces, in turn might have produced, might reasonably have produced.

[00:28:50] Speaker 01:
Judge, that's absolutely right.

[00:28:52] Speaker 01:
It has a nexus.

[00:28:53] Speaker 01:
It has a nexus to an unfair advantage or something, some inequity that says do not give the relief they've sought with respect to that claim.

[00:29:02] Speaker 04:
And what if the judge felt like this was all in an effort to neutralize the origin story as being one of derivation?

[00:29:10] Speaker 04:
And so, therefore, we want to minimize our risk that the jury is going to conclude that we lifted this particular subgenus from someone else.

[00:29:21] Speaker 04:
And so, therefore, we, Merck, are going to tell this story that we were completely untainted by anything from Pharmacet, but once that didn't work, now we will say we were completely tainted by it, but it was the Clark application that really drove the story

[00:29:39] Speaker 04:
And now the judge is very confused by all of this.

[00:29:41] Speaker 01:
So I should point out that from the outset, and this was in response to interrogatory number seven, which asked us to detail the interaction between Merck and Gilead, or Merck and Pharmacet, we pointed specifically to documents that say Dr. Durrett was on the call.

[00:29:55] Speaker 01:
It has been our position throughout, Dr. Durrett was on that call.

[00:29:58] Speaker 05:
Can I just double check?

[00:30:00] Speaker 05:
Do those documents refer specifically to the Roemer notes?

[00:30:06] Speaker 05:
I was a little confused.

[00:30:08] Speaker 05:
You say at page 24, your yellow brief, Gilead produced those notes to Merck before the deposition.

[00:30:14] Speaker 05:
What you cite is the Roemer notes.

[00:30:16] Speaker 05:
And I think what you're indirectly citing is the answers to the deposition, not the interrogatory answers that recite, I don't know, it's like 40 or so documents on the second page.

[00:30:32] Speaker 05:
And you say some of, and then in a later legal filing,

[00:30:36] Speaker 05:
You say some of those referred to the Romer notes, and you have a quote.

[00:30:41] Speaker 05:
But I couldn't quite piece together how we know if it is true that the Romer notes were in Merck's possession at the time of preparation for the, I guess, May 2015 deposition of Dr. Gregg.

[00:30:58] Speaker 05:
I know they were briefly in 2004 because Pharmacet asked for them back.

[00:31:04] Speaker 01:
Right.

[00:31:07] Speaker 01:
The reference isn't to the Roemer notes.

[00:31:09] Speaker 01:
The Roemer notes had been produced to us, but what we produced to the other side were a series of emails that said, in essence, along with Mr. Pons, you and Dr. Direct.

[00:31:20] Speaker 05:
But I'm asking specifically about the Roemer notes, because it's perfectly clear from the deposition there was the email a week before.

[00:31:27] Speaker 05:
So the call from, is that her name?

[00:31:31] Speaker 05:
Domain.

[00:31:32] Speaker 05:
Domain, right.

[00:31:34] Speaker 05:
And maybe even a second email

[00:31:36] Speaker 05:
And those were specifically asked about at the deposition.

[00:31:39] Speaker 05:
The Roemer notes were not.

[00:31:41] Speaker 05:
You say on page 24 of the yellow brief that Merck had the Roemer notes even before the deposition of Dr. DeRette.

[00:31:52] Speaker 05:
So how could we possibly have been trying to get him to say something contrary to that we had them?

[00:31:58] Speaker 05:
And I'm not quite sure you had them.

[00:32:00] Speaker 01:
Yes.

[00:32:01] Speaker 01:
I'm absolutely certain that they were produced to us and they had in our possession.

[00:32:04] Speaker 01:
They would not have been shown.

[00:32:06] Speaker 01:
to Dr. Durat, I believe, because they were marked confidential at one point.

[00:32:10] Speaker 01:
But we had those notes.

[00:32:11] Speaker 04:
So did you respond to the interrogatory with those notes?

[00:32:16] Speaker 01:
No, because the notes were produced to us.

[00:32:20] Speaker 01:
We didn't actually produce the notes.

[00:32:22] Speaker 01:
So it was the domain email and then something else?

[00:32:26] Speaker 01:
It's a series of emails, each of which says that the participants on the meeting will be you, Dr. Pons, and Phil Durat.

[00:32:33] Speaker 01:
Right.

[00:32:34] Speaker 01:
Or asking them to destroy their notes from the meeting because they had participated.

[00:32:39] Speaker 01:
And throughout this, sometimes there's trial reality and there's reality reality.

[00:32:44] Speaker 01:
The reality is nobody except Dr. Durette ever had any doubt that he was on that call.

[00:32:50] Speaker 04:
But Gilead had the same information that we had.

[00:32:52] Speaker 04:
I'm trying to figure out, did Merck actually make a proclamation?

[00:32:57] Speaker 04:
Maybe you would want me to conclude that

[00:33:02] Speaker 04:
Duret was on that call, and we told Gilead that Duret was on that call before Duret actually got deposed.

[00:33:13] Speaker 04:
As I understand, it was more a collection of documents that were sent over.

[00:33:17] Speaker 04:
Inside that collection of documents is an indication that he was planning on being on that call, or he would be on that call, but it wasn't necessarily Merck saying, you want to know who's on that call, Gilead?

[00:33:29] Speaker 04:
Let me tell you who's on that call.

[00:33:30] Speaker 04:
It was Pong and it was Durrett.

[00:33:32] Speaker 04:
Those are the two people.

[00:33:33] Speaker 04:
See, for example, these documents that support this statement we are telling you now.

[00:33:39] Speaker 01:
Yes.

[00:33:39] Speaker 01:
So the actual way it works is when you're responding to interrogatories, oftentimes rather than providing an answer, you say, please refer to the following documents which provide your answers.

[00:33:48] Speaker 01:
But you are bound by the contents of those documents.

[00:33:50] Speaker 01:
And the contents of those documents could not have been clear that Dr. Durrett was on the call.

[00:33:55] Speaker 01:
If we had thought for a New York minute that there was any doubt about Durrett's participation in that call,

[00:34:01] Speaker 01:
then we would have properly corrected it.

[00:34:03] Speaker 01:
But by the end of the deposition, although Duret was all over the map on this, by the very end, he said very clearly he could not remember whether he was on the call.

[00:34:14] Speaker 03:
His failure to recall happened conveniently after the break.

[00:34:19] Speaker 03:
Before the break, he had been confident that he was not on the call.

[00:34:23] Speaker 03:
The Roemer notes were in the hands of Merck's counsel.

[00:34:27] Speaker 03:
They couldn't show them to Duret because they were confidential.

[00:34:30] Speaker 03:
But presumably at the break, Merck's lawyer was able to say, are you really sure that you were on the call?

[00:34:36] Speaker 03:
I mean, maybe you don't recall you were on the call, because the I don't recall story happens after the break.

[00:34:42] Speaker 01:
And I think, Your Honor, to the extent that is a fair inference from what happened, that is to the credit of Merck's lawyers.

[00:34:49] Speaker 01:
Because what happened here is you've taken a witness who was very bad in a lot of ways.

[00:34:54] Speaker 01:
We're not going to deny it.

[00:34:55] Speaker 01:
and you basically impute that conduct to a corporation, Merck, which is a respectable corporation, and impute it one step further to respect a trial counsel.

[00:35:03] Speaker 01:
And then one step further, you get to the 712 patent, to which none of this relates at all.

[00:35:08] Speaker 01:
And with all respect to the district court, I think that is a number of steps too many.

[00:35:13] Speaker 01:
Unclean hands should have wrongful conduct associated with some unfair advantage.

[00:35:18] Speaker 01:
And if I could ask the court to turn to page 61 of the opinion.

[00:35:22] Speaker 05:
And you should actually be thinking about wrapping up at this point.

[00:35:26] Speaker 01:
OK.

[00:35:26] Speaker 01:
The problem with the district court's opinion, this appears both the principal problem on both page 61, where the court's addressing the 712, and page 52, where the district court is addressing the 499.

[00:35:38] Speaker 01:
The principal problem is, if you're looking for what is the wrongful conduct, the district court repeatedly points to conduct that is not wrongful.

[00:35:46] Speaker 01:
For example, on page 52, the court points to the fact that Durrett testified that the specification fully supported the claims.

[00:35:54] Speaker 01:
But no one's ever said that that's false.

[00:35:57] Speaker 01:
And the jury actually agreed with it.

[00:35:59] Speaker 01:
And that is a critical point here.

[00:36:02] Speaker 01:
If you're looking for wrongful conduct with a link to some unfair advantage, not rightful conduct.

[00:36:08] Speaker 03:
But the district court also was concerned about her view that Durrett lied to her.

[00:36:14] Speaker 03:
At five points, she said, clearly, I don't believe you.

[00:36:18] Speaker 03:
You're unbelievable.

[00:36:19] Speaker 03:
She says, you were lying.

[00:36:22] Speaker 03:
At some stage in the game, probably, a district court is entitled to say to someone that they are convinced is an abject liar, you do not have standing to appear in my court.

[00:36:33] Speaker 03:
Because that's basically what unclean hands is all about.

[00:36:36] Speaker 03:
It's a standing doctor.

[00:36:38] Speaker 03:
And he says, your behavior is such that you, for purposes of this lawsuit, it's like you never filed it.

[00:36:43] Speaker 03:
We throw the whole thing out.

[00:36:45] Speaker 03:
And we have to come to grips with those fact findings, don't we, that he said he was lying.

[00:36:51] Speaker 01:
There's a variety of mechanisms that district courts have to punish bad conduct.

[00:36:57] Speaker 01:
And when you have a witness who's a bad witness, there are sanctions.

[00:37:00] Speaker 01:
There's contempt.

[00:37:00] Speaker 01:
There's a variety of things that a district court can do.

[00:37:03] Speaker 01:
But unclean hands doesn't exist to punish.

[00:37:05] Speaker 01:
Unclean hands ensures that the

[00:37:07] Speaker 01:
court does not become an invader of inequity by helping somebody reap the fruits of their transgression.

[00:37:13] Speaker 01:
But where the conduct, no matter how bad, doesn't have that critical nexus to the enforcement of the right being asserted, it cannot be done under unclean hands.

[00:37:23] Speaker 01:
And I'm going to take Judge Taranto's advice now and find my seat.

[00:37:26] Speaker 01:
Thank you.

[00:37:38] Speaker 00:
Good morning, Your Honors.

[00:37:40] Speaker 00:
May I proceed?

[00:37:41] Speaker 00:
Please.

[00:37:43] Speaker 00:
I will take up where Merck left off.

[00:37:46] Speaker 00:
The arguments that have just been presented to the court, both in Merck's brief and at this oral argument, are the exact same arguments that were presented to the district court.

[00:37:56] Speaker 00:
And what the district court said, and so I can't say it better than the court,

[00:38:01] Speaker 00:
At appendix 56, lines 2 through 4, what Merck's argument fails to recognize is that the conduct in this case constitutes a systematic and outrageous deception in conjunction with unethical.

[00:38:14] Speaker 05:
Can you get to the specifics?

[00:38:17] Speaker 05:
One of the things that one can draw from some of the work briefing and otherwise in the case is that it's very easy to move from concrete

[00:38:31] Speaker 05:
evidence and findings into more general expressions of outrage, and the latter are really not helpful.

[00:38:38] Speaker 00:
Then let's get to the specifics.

[00:38:40] Speaker 00:
One of the questions your honors asked Merck's counsel was, is there any evidence that inevitably these claims would have still been written?

[00:38:50] Speaker 00:
And I think he candidly said, I think he said, I don't think so.

[00:38:55] Speaker 05:
He said there was no testimony.

[00:38:57] Speaker 05:
I think there's a mountain of evidence that

[00:39:01] Speaker 05:
companies in this business were looking at each other's publications and patents.

[00:39:06] Speaker 05:
They obviously wanted out of a large range of possible products.

[00:39:12] Speaker 05:
Suddenly somebody comes and publishes with something that says, we have, I forget what the term was, but very impressive potency data.

[00:39:21] Speaker 05:
And you look at that and you say, we have a project for hep C virus treatment.

[00:39:27] Speaker 05:
We read a publication that says somebody has better potency data than anything we have seen.

[00:39:33] Speaker 05:
We look at our patent and we say it's within our invention.

[00:39:40] Speaker 05:
How in the world would Merck not have claimed that and eliminated the potential 102, 103 problems with the broader claim?

[00:39:48] Speaker 00:
And the answer, Your Honor, is that that's not what happened here.

[00:39:51] Speaker 00:
What Dr. Duret testified was that

[00:39:55] Speaker 00:
And this is cited by the court, again, in Appendix 18.

[00:39:59] Speaker 00:
Dr. Durette admitted that he would not have been able to associate any structure in the farm set application, that's the Clark application, as the structure of PSI 6130, unless he knew the structure of PSI 6130 beforehand.

[00:40:14] Speaker 05:
Right.

[00:40:14] Speaker 05:
So two things about that.

[00:40:16] Speaker 05:
One, that's limited to Dr. Durette.

[00:40:18] Speaker 05:
And the question that I asked was, how is it that Merck would not have

[00:40:24] Speaker 05:
spent more than a few minutes looking at the Clark publication, which is from beginning to end about this, from the abstract to the claims to the drawings to everything, is about a set of variations on this and set with data.

[00:40:40] Speaker 05:
The only data in the Clark application is about some version of methylopfloro down and either, I forget, one or two rings, but there are only two choices.

[00:40:52] Speaker 05:
How is it that Merck, forget about Dr. Durrett, would not have said, this is within our applications, indeed, within one of our earlier, at least one of our earlier claims, the 2002 PCT, claim eight, I guess, and written a claim to cover it?

[00:41:10] Speaker 00:
Because they didn't, we know that that didn't happen because, that wouldn't happen because it didn't happen.

[00:41:16] Speaker 05:
Merck's position is that- Wait a second, that seems to me not to follow.

[00:41:21] Speaker 05:
Once the wrongdoer direct does it, that doesn't tell you what would have happened had he not done it if he had retired in the fall of 2004.

[00:41:31] Speaker 00:
Then we can only speculate, Your Honor.

[00:41:35] Speaker 00:
We could do the same thing with Keystone.

[00:41:37] Speaker 00:
So in Keystone, they hid the fact that there was a prior use.

[00:41:42] Speaker 00:
And that only went to one of the patents.

[00:41:44] Speaker 00:
The court ended up finding that all five of the patents were, as far as the particular defendant was concerned,

[00:41:50] Speaker 00:
unenforceable against that defendant because of that behavior.

[00:41:54] Speaker 00:
Now, in Keystone, they may have been able to adequately enforce their patents without the cover-up, but they didn't.

[00:42:03] Speaker 00:
And so we can't stand here and say, well, if only Duret had not done this improper conduct, it would have all been okay anyway, because we don't know that.

[00:42:12] Speaker 00:
What we do know is what did happen, and what we do know is what Duret did say.

[00:42:16] Speaker 00:
He said,

[00:42:17] Speaker 00:
didn't get it from the Clark application.

[00:42:19] Speaker 00:
I couldn't have gotten it from the Clark application without already knowing 6130.

[00:42:24] Speaker 00:
He said that at his deposition.

[00:42:25] Speaker 00:
The court found that as a matter of fact.

[00:42:28] Speaker 05:
What the district court cites is paragraph one is a tiny bit of testimony.

[00:42:32] Speaker 05:
I think page 53 of the deposition where he's asked the specific question about paragraph 00168 of the Clark.

[00:42:40] Speaker 05:
And he says something that actually says two things in a row.

[00:42:43] Speaker 05:
And I don't even understand how the two of them go together.

[00:42:46] Speaker 05:
But whatever it is, that's limited to paragraph 168.

[00:42:50] Speaker 05:
And then four pages later in the deposition, there's some discussion of pages 11 to 16 of the Clark application.

[00:42:58] Speaker 05:
But those are just reading.

[00:43:00] Speaker 05:
Do these words say this?

[00:43:01] Speaker 05:
Do these words say this?

[00:43:02] Speaker 05:
Do these words?

[00:43:03] Speaker 05:
That's meaningless stuff.

[00:43:06] Speaker 05:
Did he ever say, I could not have gotten this from the Clark application as a whole?

[00:43:15] Speaker 00:
All I can do is tell you what he said at, and your Honor's right, it's at page 53, but it's actually two places, lines one through six and lines 22 going over into page 54, line five.

[00:43:27] Speaker 00:
That's what the court cited, and that's specifically at ECS docket number 410, and it's at also appendix 18 of the court's order.

[00:43:34] Speaker 00:
She said, Dr. DeRet admitted he would not have been able to associate any structure in the Pharmacet application as the structure of PSI 6130 unless he knew the

[00:43:45] Speaker 00:
structure PSI 6130 in advance.

[00:43:47] Speaker 05:
So this is one of the findings that I think the other side says, aside from being insufficient, is clearly erroneous because both of those two questions are about a single paragraph in Clark, not about the application as a whole.

[00:44:00] Speaker 00:
Correct.

[00:44:00] Speaker 00:
And so they're saying that's clearly erroneous.

[00:44:02] Speaker 00:
We're saying the court found and was quoting verbatim what Dr. Durrett said.

[00:44:05] Speaker 05:
No, but I'm sorry.

[00:44:06] Speaker 05:
It is really important in a case like this to be precise.

[00:44:12] Speaker 05:
This finding goes beyond 168.

[00:44:15] Speaker 05:
The only testimony cited, and the only testimony you're citing, is about 168.

[00:44:20] Speaker 05:
So to that extent, that finding is clearly erroneous.

[00:44:22] Speaker 05:
He did not admit you couldn't get it from the whole Clark application.

[00:44:26] Speaker 00:
He admitted at least what he was being shown at that time.

[00:44:29] Speaker 00:
He couldn't get it.

[00:44:30] Speaker 00:
That's correct, Your Honor.

[00:44:32] Speaker 04:
I guess he says, because this was one compound out of a plethora of compounds in the publication, so it's a

[00:44:43] Speaker 04:
Is it possible that he's trying to suggest that this publication is huge, with a lot of things being discussed, and so he wouldn't necessarily be attracted to whatever is said in this particular paragraph, given the overall content of the publication?

[00:45:05] Speaker 00:
That's exactly what he is saying.

[00:45:08] Speaker 00:
But let's see what the import of that is.

[00:45:10] Speaker 00:
So it's not like Dr. Duret then came to trial and said, you know what?

[00:45:14] Speaker 00:
That wasn't accurate.

[00:45:15] Speaker 00:
I looked at the Clark application.

[00:45:17] Speaker 00:
I saw 6130 jumped out at me.

[00:45:20] Speaker 00:
I saw that it had potent activity.

[00:45:22] Speaker 00:
And so I narrowed the claims because of that.

[00:45:25] Speaker 00:
He didn't say that at trial.

[00:45:26] Speaker 00:
What he said at trial was, at trial, he said,

[00:45:32] Speaker 00:
He amended the 499 claims to focus on getting allowance on the subject matter that was the most important to the Merck-ISIS collaboration.

[00:45:41] Speaker 00:
He did not rely on the Clark application.

[00:45:43] Speaker 00:
He ended justifying his narrow.

[00:45:45] Speaker 05:
Let me just ask you about that.

[00:45:46] Speaker 05:
And I agree.

[00:45:48] Speaker 05:
I've read, I guess, the deposition, and I've read the Clark testimony.

[00:45:52] Speaker 05:
And at trial, even more at deposition, to put it mildly, he was on the assumption that he actually saw Clark, that it was the triggering event.

[00:46:02] Speaker 05:
He was less than forthcoming about the effect.

[00:46:05] Speaker 05:
And he continued to be less than forthcoming at trial about the effect.

[00:46:10] Speaker 05:
But the most important statement, Merck and ISIS have a project for hep C virus.

[00:46:18] Speaker 05:
They've covered a lot of different possibilities.

[00:46:21] Speaker 05:
They get the first data that says something is extraordinarily promising more than anything else.

[00:46:30] Speaker 05:
how would that not be the most important thing in the Merck-ISIS project?

[00:46:35] Speaker 05:
He doesn't say Merck-ISIS was working on this particular compound.

[00:46:41] Speaker 05:
He just says it's the most important thing for the collaboration, namely somebody has identified, has shown great potency of one of the things that belongs to us.

[00:46:56] Speaker 00:
He was actually

[00:46:57] Speaker 00:
The Murkheises was looking elsewhere.

[00:46:59] Speaker 00:
They were looking at the methylop.

[00:47:01] Speaker 00:
They were never looking at the fluorodown.

[00:47:02] Speaker 00:
Yes, it was one of billions of compounds that were covered in this massive genus, but they were never looking at the fluorodown.

[00:47:09] Speaker 05:
And in fact, what the court specifically found based on- I mean, just on that point, are there not some examples with the fluorodown?

[00:47:18] Speaker 00:
There is not one example with the methylop and the fluorodown.

[00:47:21] Speaker 05:
That's not what you just said.

[00:47:23] Speaker 05:
So you keep switching into generalizations that are stronger than the evidence would support.

[00:47:30] Speaker 05:
It is, I gather, true that not one of the 154 examples have all three of these things together.

[00:47:36] Speaker 05:
Single ring, methyl up, fluoro down in the R2 rather than R3, maybe not even in either one.

[00:47:42] Speaker 05:
But there are some examples with fluoro down, and there are some examples with methyl up, and there are some examples with the single ring.

[00:47:49] Speaker 00:
Correct, Your Honor.

[00:47:50] Speaker 00:
all in separate places.

[00:47:51] Speaker 00:
And what our experts testified is if you followed the teachings of the patent, you would be led away from combining a methyl up with a fluoro down and a single ring.

[00:48:04] Speaker 00:
And one of the reasons, and Jeremy Clark actually testified by way of deposition, that one of the reasons you would move away from it is that one of the problems was toxicity.

[00:48:13] Speaker 00:
We're talking about a treatment for hepatitis C. And one of the problems with fluoro

[00:48:18] Speaker 00:
is it is even more toxic than methyl.

[00:48:21] Speaker 00:
So why would you take a fluoro that is already toxic and combine it with a methyl with the attempt to somehow make something less toxic?

[00:48:30] Speaker 00:
And so it was Dr. Durette finding out that they had gone, they meaning pharmacists, that had gone in a totally different direction that all of a sudden changed his mind as to what was the most important for Merck.

[00:48:43] Speaker 00:
They never, and I will make a broad statement here that is

[00:48:47] Speaker 00:
because it was stipulated to, that they never made, used, tested.

[00:48:54] Speaker 04:
Just to follow up on Judge Forano's question, I understood his question as suggesting that there's a fair way to interpret what Dr. DeRette said right there about subject matter that's most important to the collaboration as saying, once the Clark application popped out,

[00:49:15] Speaker 04:
and you saw all this really valuable activity in this one area of Merck's genus, then clearly it would be, therefore, the most important subject matter to the Merck-ISIS collaboration to ensure getting more specific claims that are directed to that really valuable subgenus scope.

[00:49:40] Speaker 04:
So I guess the question, therefore, is why isn't that

[00:49:45] Speaker 04:
a reasonable, maybe even the more reasonable reading of what Dr. Durrett was trying to convey at that moment in time at trial.

[00:49:52] Speaker 00:
Because that isn't what he testified to.

[00:49:54] Speaker 00:
He didn't say it was, he never tied it to the Clark application.

[00:49:59] Speaker 00:
The only thing he said about the Clark application was he couldn't glean, be it that one structure, he couldn't glean anything from the Clark application because it was so broad and had so many different potential structures.

[00:50:13] Speaker 00:
That's what he testified to.

[00:50:15] Speaker 00:
He then testified that he narrowed the claims to cover the most important of Merck's work.

[00:50:22] Speaker 00:
And what the court found as a matter- No, no, I'm sorry.

[00:50:24] Speaker 05:
He didn't say that.

[00:50:25] Speaker 05:
He said narrowed the claims to cover something that was the most important to the Merck-ISIS collaboration.

[00:50:34] Speaker 05:
That collaboration were the joint owners of these patent applications.

[00:50:39] Speaker 05:
Big deal.

[00:50:39] Speaker 05:
Correct.

[00:50:40] Speaker 05:
He did say the Merck-ISIS collaboration.

[00:50:42] Speaker 05:
That's a very big deal, right?

[00:50:43] Speaker 05:
To the collaboration.

[00:50:45] Speaker 05:
most important to what you want to translate it into the laboratory work of Merck and ISIS?

[00:50:54] Speaker 00:
No, Your Honor, I'm not.

[00:50:55] Speaker 00:
I'm just quoting him verbatim when he says it was the most important collaboration and what the court found having viewed his demeanor and all of the evidence presented at trial.

[00:51:04] Speaker 00:
The court found, as a matter of fact, that it is not credible the compounds that were never made, used, or tested during a collaboration

[00:51:13] Speaker 00:
were considered by Merck to be the most important work of the collaboration.

[00:51:16] Speaker 04:
And so the point is that she, the judge, concluded that at this moment in time, Dr. Duret is trying to convey to the jury with this statement that maybe could be read a couple of different ways, that he nevertheless is trying to convey, to transmit to the jury, this was really important to the work we were working on because

[00:51:40] Speaker 04:
this is, we ourselves contemplated this particular subject matter, so that's why I amended the claim the way I did.

[00:51:48] Speaker 04:
That's, but that, he didn't say it exactly in those terms and so therefore we're trying to figure out if in fact that's how she interpreted it and there, and then is that

[00:51:59] Speaker 04:
a fair interpretation of what he said.

[00:52:01] Speaker 04:
Do you see where we are?

[00:52:02] Speaker 00:
I do, Your Honor, and I think that the court made it very clear how she interpreted it, and she interpreted it as a matter of fact.

[00:52:08] Speaker 00:
So the standard is, was she clearly erroneous in looking at Dr. Durrett, listening to what he said, looking at his demeanor, and coming to the conclusion that he wasn't telling the truth, he wasn't credible?

[00:52:22] Speaker 00:
that compounds that were never made, used, or tested during a collaboration were considered by Merck to be the most important work of the collaboration.

[00:52:30] Speaker 00:
Was she clearly erroneous there?

[00:52:32] Speaker 00:
How can we say sitting here when she was sitting there listening to him and watching him?

[00:52:38] Speaker 00:
And that was what she concluded as a matter of fact.

[00:52:41] Speaker 03:
Well, it clearly couldn't have been the most important thing to the collaboration while the collaboration was going on, because they didn't find it, didn't test it, didn't know about it at that time.

[00:52:50] Speaker 00:
And that's what she said.

[00:52:52] Speaker 03:
And so in the after effect, looking backwards, once you see what Clark got to tell you about a specific compound, you could say, gee, is that something that we were really trying to find and look for in our collaboration?

[00:53:06] Speaker 03:
Of course it was, because it was the gold mine.

[00:53:12] Speaker 03:
I read it at five specific points, and she found that Durant was untrustworthy.

[00:53:19] Speaker 00:
correct, Your Honor, and she based that on her own view of his demeanor and on the totality of his testimony and the rest of the facts that they just didn't hold up with his explanation.

[00:53:29] Speaker 03:
What harm befell Gilead other than suffering an infringement verdict against it?

[00:53:39] Speaker 03:
What harm fell to Gilead from the misconduct of her

[00:53:44] Speaker 00:
having to defend against the patents.

[00:53:47] Speaker 00:
And that, in fact, is what the court found, is that these patents at issue came as a result of unconscionable actions.

[00:53:55] Speaker 00:
And they resulted from these series up.

[00:53:57] Speaker 04:
But I guess what if the patents, despite any shenanigans that happened, what if these claims are, in fact, fully supported by the written description and also fully enabled, and so therefore

[00:54:12] Speaker 04:
whatever happened here, whatever mischief happened here, didn't actually infect the validity of the patent?

[00:54:18] Speaker 00:
It infected the creation of the patent.

[00:54:22] Speaker 00:
And so what the court found, again, as a matter of fact, was that but for, and those were her terms, but for this improper conduct, then they would have never, and I'm going to try to find the exact quote here,

[00:54:38] Speaker 04:
Oh, it's a fact-finding 104.

[00:54:39] Speaker 00:
104, thank you.

[00:54:41] Speaker 00:
But for the improper participation, he would never have narrowed the claims.

[00:54:45] Speaker 00:
That's, again, a finding of fact.

[00:54:47] Speaker 00:
Was she clearly erroneous after having heard everything he said?

[00:54:50] Speaker 00:
We say obviously not.

[00:54:53] Speaker 00:
And that led up to, that was a series of steps.

[00:54:57] Speaker 00:
First, she said Dr. Durrett waited for the structure to publish.

[00:55:02] Speaker 00:
so that he could claim he got it from a publication, rather than admitting it was not from improper.

[00:55:08] Speaker 05:
Did the district court find that he had the Clark application before February 1st, 2005?

[00:55:18] Speaker 00:
She made no such finding, because Dr. Durrett was all over the place as to when he saw it.

[00:55:23] Speaker 00:
So she made no such factual finding as to when he did it.

[00:55:25] Speaker 04:
And she also made the finding that he waited until the application was published.

[00:55:31] Speaker 04:
potential inconsistency in her analysis.

[00:55:35] Speaker 00:
She did that because of the temporal link.

[00:55:37] Speaker 00:
18 days after it was published, he amended the claims without any kind of an office action on the part of the packed office.

[00:55:43] Speaker 04:
No, we get that, but we're trying to figure out what happened here.

[00:55:47] Speaker 04:
One theory is that Clark application didn't influence him.

[00:55:52] Speaker 04:
Why?

[00:55:52] Speaker 04:
Because he didn't have it, maybe because he didn't know it.

[00:55:55] Speaker 04:
Then the other counters fact is that

[00:56:00] Speaker 04:
He did know about it because he was waiting.

[00:56:03] Speaker 04:
He was waiting like a hawk for that application to publish.

[00:56:06] Speaker 04:
And then once he learned the application published, why wouldn't he likewise also have read it?

[00:56:12] Speaker 04:
And then if he had read it, why wouldn't it be painfully clear that the content was directed to 2'-methyl-lup-fluorine down?

[00:56:25] Speaker 04:
Can you fit these two pieces together?

[00:56:28] Speaker 00:
I can, Your Honor, which is that there is no explanation, and the court points that out.

[00:56:33] Speaker 00:
We never got an explanation from Dr. Durrett why he amended the claims when he did.

[00:56:40] Speaker 00:
The patent had been pending, the application had been pending for months.

[00:56:44] Speaker 00:
There had been no office action asking them to narrow the claims.

[00:56:47] Speaker 05:
That's not quite true.

[00:56:48] Speaker 05:
We never got an explanation.

[00:56:49] Speaker 05:
He says, must have been the triggering event.

[00:56:52] Speaker 05:
I don't remember, but must have been.

[00:56:55] Speaker 05:
What did the district court's findings imply about what the district court believed about whether he had Clark before February 1, 2005?

[00:57:09] Speaker 05:
Your position is yes, of course he did, right?

[00:57:12] Speaker 00:
Well, you're on asking two questions.

[00:57:14] Speaker 00:
So first, what were the district court's findings?

[00:57:17] Speaker 00:
The district court findings were, and we can then infer that the district court believed he had

[00:57:23] Speaker 00:
the Clark application because the district court said she believed that he waited until it was published and then wrote claims to cover it, and that he waited until it was published to give the appearance that he found it from a public source.

[00:57:39] Speaker 00:
And then the next step is, and but for obtaining it improperly, he never would have narrowed the claims.

[00:57:46] Speaker 00:
That's a three-step process.

[00:57:47] Speaker 00:
It starts at paragraph 101, 102, 103, 104, as your honor points out.

[00:57:52] Speaker 00:
And then she goes on, so that goes to the 499, and then she goes on and talks about the business misconduct vis-a-vis the 712.

[00:57:59] Speaker 04:
So what is Gilead's position?

[00:58:01] Speaker 04:
Is Gilead's position that yes, he did have the Clark application before he filed the amendment, and yes, he looked at it?

[00:58:09] Speaker 00:
I think if we're going to believe that you're looking at your competitor,

[00:58:13] Speaker 00:
Let me back up.

[00:58:14] Speaker 00:
He found out on the phone that it was going to publish because in that phone call, they said that they had a patent that covered this structure and it was soon to be published.

[00:58:23] Speaker 00:
So he, this is in the March, the St.

[00:58:26] Speaker 00:
Patrick's day call.

[00:58:27] Speaker 00:
Correct.

[00:58:29] Speaker 00:
Correct.

[00:58:29] Speaker 00:
So yes, we can, we can assume I'm trying to be true to the record since he never admitted one way or another.

[00:58:37] Speaker 00:
He said in hindsight, well, it must've been the triggering event, but he never said that.

[00:58:42] Speaker 00:
And he still waffled on when he saw it and the impact that it had on him.

[00:58:47] Speaker 00:
But he was very clear that Clark application aside, his motivation for narrowing the claims wasn't because of the Clark application.

[00:58:56] Speaker 00:
It wasn't a kings down situation.

[00:58:58] Speaker 00:
He never testified that, oh, I saw it.

[00:59:01] Speaker 00:
I saw they were doing something we already covered.

[00:59:03] Speaker 00:
And I wanted to make sure it was clear with the patent office.

[00:59:05] Speaker 00:
So I went down and amended the claims.

[00:59:08] Speaker 05:
Can I ask you, before you turn to the 712, which is an important thing,

[00:59:12] Speaker 05:
The district court said at finding a fact 116 that I think was pretty much just picking up on something in your proposed finding 171.

[00:59:25] Speaker 05:
Your proposed finding is at 22090 of the appendix and I'll read yours.

[00:59:31] Speaker 05:
Patent attorney Durrett did not say, you're talking about the deposition,

[00:59:36] Speaker 05:
did not say that he did not remember a call or that he could not be sure, but instead definitively stated, I wasn't on it.

[00:59:44] Speaker 05:
It seems to me the second half is true and the first is false.

[00:59:48] Speaker 05:
He said, I'm going to get, I will now personally guess several dozen times.

[00:59:55] Speaker 05:
I don't recall at the beginning of the deposition.

[01:00:00] Speaker 05:
And then he transitions in the sort of page 29 to 38 range.

[01:00:05] Speaker 05:
to being very sure, very sure because he searches his memory, he says, and he would have remembered it and he doesn't remember it, so it must not have happened.

[01:00:15] Speaker 05:
And then later on, your own attorney essentially does a follow-up right near the end, 177 or something, and he says, I want to be sure.

[01:00:30] Speaker 05:
Are you saying you weren't on the call or you don't remember?

[01:00:33] Speaker 05:
And I roughly half a dozen times, he says, I don't remember, I don't remember, I don't remember, I don't remember.

[01:00:39] Speaker 05:
So what were you doing saying to the court, Durette did not say that he did not remember a call.

[01:00:44] Speaker 00:
So that finding a fact that your honor is talking about at page 116, I mean, at paragraph 116, that comes after the court is quoting specific Q and A's from Dr. Durette.

[01:00:57] Speaker 00:
where he's asked, are you sure of that?

[01:00:59] Speaker 00:
Meaning, are you sure you weren't on the call?

[01:01:01] Speaker 00:
Yes.

[01:01:02] Speaker 00:
How are you so sure 11 years later that you were never told what the structure was for the 6130 compound?

[01:01:08] Speaker 00:
The answer is the structure was not revealed to me by individuals at Merkur.

[01:01:12] Speaker 00:
Otherwise, I'm positive about it.

[01:01:14] Speaker 05:
Right.

[01:01:14] Speaker 05:
So the true thing to say about the deposition is that he said 25 times or so, I don't recall.

[01:01:21] Speaker 05:
And he said maybe eight or 10 times, I wasn't on it.

[01:01:25] Speaker 05:
He said both things.

[01:01:26] Speaker 05:
So what were you doing saying to the court he didn't say the first thing?

[01:01:30] Speaker 00:
What we were talking about is quoting when he was absolutely, positively 100% sure.

[01:01:35] Speaker 00:
And his honor, Judge Cleveringer, is right.

[01:01:37] Speaker 00:
There was a break.

[01:01:38] Speaker 00:
It doesn't reflect how long it was.

[01:01:40] Speaker 05:
That's why I mentioned pages 1 to 29, where he said, I don't recall, before he somehow transitioned into being sure of himself.

[01:01:48] Speaker 03:
What 116 is saying with respect to the foregoing 113, 114,

[01:01:55] Speaker 03:
he did not say he did not remember.

[01:01:57] Speaker 03:
That is to say, he was certain as opposed to saying he did not remember.

[01:02:02] Speaker 03:
As opposed to saying that I think what the presiding judge is talking about is the possibility that 116 could be interpreted to mean that at no time during his deposition did he ever say he didn't recall, which you would have to agree would be incorrect.

[01:02:18] Speaker 00:
That is correct.

[01:02:19] Speaker 03:
If you look at 116 to say what 116 is trying to say is,

[01:02:25] Speaker 03:
Dr. Durette did not say, in the cut above, he did not say, he did not remember.

[01:02:32] Speaker 03:
That's a contradistinction between not recalling and saying directly.

[01:02:38] Speaker 00:
Correct, Your Honor.

[01:02:39] Speaker 03:
That's what I understood you to be saying how you read 116.

[01:02:42] Speaker 00:
Yes, and that's how we read it.

[01:02:44] Speaker 00:
She was talking about the passages right before it.

[01:02:46] Speaker 03:
If 116 were read, on the other hand, to say that at no time during his deposition did he ever say, I did not recall being on the call, that of course would be incorrect.

[01:02:57] Speaker 00:
That's right, Your Honor.

[01:02:57] Speaker 03:
We are not saying... Because your own counsel is the one that allowed him after the break, and his counsel got him to start not recalling.

[01:03:07] Speaker 03:
which was a smart thing for them to do, right?

[01:03:11] Speaker 03:
And you nailed that down at the end.

[01:03:14] Speaker 00:
And then, Your Honor, that's not the only place where the court discusses Dr. Durrett's whether he's sure or not sure about being on the call.

[01:03:22] Speaker 00:
If we then go to page 47 and from 47 and 48 and 49 of the court's opinion, the court at length again quotes Dr. Durrett and not just

[01:03:38] Speaker 00:
How could you be so sure you weren't on the call?

[01:03:42] Speaker 00:
Not just he was sure he wasn't on the call, he gave a lengthy explanation as to why he wouldn't have been on the call.

[01:03:48] Speaker 00:
And that is what the court found particularly offensive, in fact described as sanctimonious.

[01:03:54] Speaker 00:
I couldn't have been on the call.

[01:03:55] Speaker 00:
It would have been wrong for me to be on the call.

[01:03:57] Speaker 00:
I was prosecuting the Merck ISIS docket.

[01:03:59] Speaker 00:
If I'd gotten on the call, it would have been a conflict of interest.

[01:04:03] Speaker 00:
It could have tainted my judgment.

[01:04:05] Speaker 00:
He went on and on about why he could

[01:04:08] Speaker 00:
not have possibly been on the call.

[01:04:10] Speaker 00:
And that the court again after that made lengthy findings of facts starting at line 11 on page 49 and comparing what he said at his deposition to what he said at trial and finding again that he was just not credible.

[01:04:26] Speaker 00:
That the bottom line is that Dr. Durrett denied being on the call.

[01:04:30] Speaker 00:
His counsel did a good job of getting him to back off a little bit and say, well, I don't remember.

[01:04:35] Speaker 00:
But at the time, the only reason that he would have denied being on the call is to hide the fact that the structure was obtained improperly.

[01:04:44] Speaker 00:
And they did everything in their power, and the court so held that they did everything in their power to try to cover that up.

[01:04:51] Speaker 05:
Will you talk about the 712 now?

[01:04:53] Speaker 00:
Yes, I will, Your Honor.

[01:04:54] Speaker 00:
So first of all, I want to clear up something that counsel said, which is that there was no misconduct findings as to the 712.

[01:05:02] Speaker 00:
Actually, the court did find

[01:05:05] Speaker 00:
that there was business misconduct as to the 7-1-12.

[01:05:09] Speaker 00:
There is this footnote.

[01:05:13] Speaker 00:
So the footnote simply reads the court's finding.

[01:05:17] Speaker 04:
Could you give us the page?

[01:05:18] Speaker 00:
Oh, absolutely.

[01:05:19] Speaker 00:
So we start with page 16, paragraph 91E of the court's opinion.

[01:05:25] Speaker 05:
The footnote is on page 61.

[01:05:27] Speaker 00:
Yes, Your Honor.

[01:05:28] Speaker 00:
So we work up to the footnote.

[01:05:29] Speaker 00:
So to put the footnote in context

[01:05:32] Speaker 00:
Let's see what the court said about business misconduct vis-a-vis the 712.

[01:05:35] Speaker 00:
At page 16, paragraph 91E, Merck was required to recuse Dr. Durrett from further prosecution of the Merck-ISIS patent applications, plural, in order to comply with Merck's obligations.

[01:05:50] Speaker 00:
91F, Merck and Dr. Durrett's failure to recuse Dr. Durrett from further prosecution of the Merck-ISIS patent applications, plural, was an improper business practice.

[01:06:01] Speaker 00:
Now we move to page 45.

[01:06:02] Speaker 05:
And just to be clear, Dr. Durette was never on the 712 application.

[01:06:07] Speaker 00:
Oh, no, he filed it.

[01:06:08] Speaker 05:
He filed the 712.

[01:06:09] Speaker 00:
Yes, he filed the 712.

[01:06:10] Speaker 00:
When?

[01:06:11] Speaker 00:
He filed the 712, I believe, shortly before he retired.

[01:06:14] Speaker 00:
So that would have been around 2010.

[01:06:16] Speaker 00:
2010?

[01:06:16] Speaker 00:
Yeah, 2010 or so.

[01:06:18] Speaker 04:
But when he filed the 2010, were the original claims filed covering or specifically targeting

[01:06:29] Speaker 04:
to methyl deploring.

[01:06:30] Speaker 00:
Not specifically targeting.

[01:06:32] Speaker 04:
That was later in time.

[01:06:33] Speaker 00:
That was later in time where Mr. Bergman picked it up.

[01:06:37] Speaker 00:
But basically there would have been nothing for Mr. Bergman to pick up if Dr. DeRette hadn't filed the application.

[01:06:44] Speaker 00:
So what the court found vis-a-vis the 712, specifically if we go to page 45, line 27 through page 46, line 8, the court said

[01:06:57] Speaker 00:
and I won't read the whole thing, but the bottom line is it was, in fact, wrong for Merck to allow Dr. Tourette to continue to prosecute the 499 and 712 patent applications.

[01:07:10] Speaker 03:
That's at line 12, A46.

[01:07:12] Speaker 03:
Line 12, line 46.

[01:07:14] Speaker 00:
Yes, Your Honor.

[01:07:15] Speaker 00:
And then also on page 46, lines 10 through 13, Merck's subsequent decision to allow Dr. Tourette to continue to prosecute the 499 and 712

[01:07:26] Speaker 00:
with full knowledge of the structure of Pharmacet PSI 6130 constitutes unacceptable business conduct."

[01:07:33] Speaker 00:
And then the court finishes on that same page at lines 21 through 23.

[01:07:38] Speaker 00:
I'm sorry.

[01:07:39] Speaker 00:
Which page are we on?

[01:07:40] Speaker 00:
I'm sorry.

[01:07:40] Speaker 00:
46, Your Honor.

[01:07:41] Speaker 00:
I'm going too fast.

[01:07:42] Speaker 00:
I apologize.

[01:07:43] Speaker 00:
I've got this clock in front of me that's telling me.

[01:07:46] Speaker 05:
We did not fit that strict.

[01:07:48] Speaker 05:
You probably have about five or six minutes.

[01:07:50] Speaker 00:
All right.

[01:07:51] Speaker 00:
I'll slow down then.

[01:07:52] Speaker 00:
On page 46, lines 10 through 13,

[01:07:55] Speaker 00:
The court then says Merck's subsequent decision to allow Dr. Tourette to prosecute the 499 and 712 with full knowledge of the structure of PSI 6130 constitute unacceptable business conduct.

[01:08:11] Speaker 00:
And then the court goes on that same page, page 46, at lines 21 through 23, saying... Ties it to Keystone.

[01:08:18] Speaker 00:
Ties it to Keystone.

[01:08:20] Speaker 00:
that these patents that resulted from this series of unconscionable acts are now asserted against Gilead, which is then the harm to Gilead, a pharmaceutical successor in interest.

[01:08:29] Speaker 03:
Patents in the plural.

[01:08:32] Speaker 00:
And at first she only refers to it in the plural, but then she specifically, in case there's any doubt about it, she calls out the 712.

[01:08:40] Speaker 00:
And she says that Merck's failure to have Dr. Durrett recuse himself after he improperly learned the structure

[01:08:49] Speaker 00:
was business misconduct as to the 712.

[01:08:52] Speaker 00:
Now, how do we then read footnote five that appears toward the end?

[01:08:58] Speaker 00:
All footnote five says, and I'll read it verbatim, it's on page 61, the court's finding of improper business conduct related to the March 2004 call was not considered by the court.

[01:09:12] Speaker 05:
So you want to separate that from what happened after the call.

[01:09:15] Speaker 00:
Exactly.

[01:09:15] Speaker 00:
So she's saying the call

[01:09:18] Speaker 00:
That goes to the 499, his saying, I'm within the firewall, his not telling them I'm prosecuting.

[01:09:23] Speaker 05:
And only the 499 was even pending at the time.

[01:09:25] Speaker 00:
Exactly.

[01:09:26] Speaker 00:
So it couldn't have gone to the 712 at that point because the 499 was the only one pending.

[01:09:31] Speaker 00:
Then his failure to recuse himself and Merck's failure to have him recuse himself now taints going forward, including the filing of the 712 application.

[01:09:40] Speaker 00:
So the court found unequivocally there was business misconduct as to the 712.

[01:09:46] Speaker 00:
And that footnote is only talking about the actual call itself and not using that vis-a-vis the 712.

[01:09:55] Speaker 00:
So I wanted to clear that up because I think it's a very important point.

[01:09:57] Speaker 03:
To the extent that the call is taken off of the table with regard to improper business conduct with regard to the 712 is the trial testimony that raises the

[01:10:16] Speaker 03:
inference for the derivation issue, that applies both to the 712 and the other patent, right?

[01:10:21] Speaker 03:
Correct.

[01:10:22] Speaker 03:
Because they have the common spec in the WD argument.

[01:10:25] Speaker 03:
If it succeeds, it impales both patents, right?

[01:10:29] Speaker 00:
Correct, Your Honor.

[01:10:29] Speaker 00:
And let's say hypothetically, the doctor direct innocently got on the call.

[01:10:34] Speaker 00:
Let's say getting on the call wasn't business misconduct.

[01:10:36] Speaker 00:
It was, and the court so found.

[01:10:38] Speaker 00:
But let's say he innocently did.

[01:10:39] Speaker 00:
He didn't know that it was going to be an NS5B inhibitor.

[01:10:43] Speaker 00:
The court found he did.

[01:10:45] Speaker 00:
He didn't know there was a firewall.

[01:10:47] Speaker 00:
And so he innocently gets on and now he hears the structure and realizes it's dead center in the Merck ISIS work that he is handling.

[01:10:58] Speaker 00:
At that point, no business misconduct has taken place, hypothetically.

[01:11:01] Speaker 00:
His failure to recuse himself and Merck's failure to have him recuse himself now taints everything going forward.

[01:11:08] Speaker 04:
But just why is that necessarily so if, hypothetically, the Clark application

[01:11:15] Speaker 04:
is somehow its disclosure is verbatim word for word for every word that he heard on that phone call.

[01:11:23] Speaker 04:
And then it's public information.

[01:11:26] Speaker 04:
He reads it.

[01:11:27] Speaker 04:
Yes, it's still him that, after that, files the amendment.

[01:11:32] Speaker 04:
But I guess, is there a way to detain a tainted person, thanks to the fact that now the information is free and clear for all to see, including Dr. Duret himself?

[01:11:45] Speaker 00:
And the answer is, no, there is not a way to detain a tainted person.

[01:11:49] Speaker 00:
Why not?

[01:11:49] Speaker 00:
Because once he learns that he has a conflict.

[01:11:52] Speaker 00:
And the same thing happens to we attorneys all the time.

[01:11:55] Speaker 00:
We're representing one person.

[01:11:57] Speaker 00:
We're in the middle of a discussion.

[01:11:58] Speaker 00:
We learn for the first time that that person is going to implicate another one of our clients.

[01:12:03] Speaker 05:
We've got to get out.

[01:12:04] Speaker 05:
I'm sorry.

[01:12:04] Speaker 05:
Let me ask a slightly variation.

[01:12:08] Speaker 05:
Even if Dr. DeRette was not detainable, why wasn't Merck

[01:12:15] Speaker 00:
They would have been if he had recused himself, but he didn't.

[01:12:19] Speaker 00:
And that's why we're here.

[01:12:20] Speaker 00:
There were multiple steps along the way where we didn't have to end up where we ended up.

[01:12:25] Speaker 00:
Recuse Dr. Durrett and don't tell the next prosecutor who picks it up what Dr. Durrett learned.

[01:12:34] Speaker 00:
We wouldn't be here.

[01:12:36] Speaker 00:
Dr. Durrett continues to prosecute.

[01:12:38] Speaker 00:
Don't lie at your deposition.

[01:12:40] Speaker 00:
I don't know if we'd still be here if he hadn't lied at his deposition.

[01:12:45] Speaker 00:
Once you're caught lying, your deposition, don't come into court and lie to the court.

[01:12:52] Speaker 00:
Well, but he did.

[01:12:54] Speaker 00:
And once his attorneys know that he's going to recant, tell someone, tell the court that he's going to recant.

[01:13:03] Speaker 00:
Don't wait as the court found in her opinion for opening statement to give a heads up that Dr. Durrett's going to be changing his testimony.

[01:13:12] Speaker 00:
I was faced with cross-examining Dr. Durrett.

[01:13:14] Speaker 00:
It was like drinking from a fire hose.

[01:13:16] Speaker 00:
I had no idea what next.

[01:13:19] Speaker 00:
He would come up with these page long, non-responsive answers to simple yes or no questions.

[01:13:24] Speaker 05:
Well, right at the beginning.

[01:13:25] Speaker 05:
No, he had it at the beginning of his trial testimony and he had his story he wanted to get out and he found the first more or less appropriate question to get it out.

[01:13:36] Speaker 05:
But you knew that story was going to come or he was going to repeat the

[01:13:41] Speaker 05:
the story from the deposition, right?

[01:13:45] Speaker 00:
It was going to be one of the two.

[01:13:46] Speaker 05:
And do I remember right, you all did, you canceled the depositions of the 30B6 witness about the due diligence?

[01:13:55] Speaker 05:
Correct.

[01:13:56] Speaker 05:
And even though that would have been Merck's official testimony about that call?

[01:14:03] Speaker 00:
In retrospect, maybe we shouldn't have, we might have gotten yet a third story as to

[01:14:09] Speaker 00:
why the claims got narrowed.

[01:14:10] Speaker 05:
But you don't think it's fair that both sides knew after, at least after May of 2015, exactly what the evidence was going to be, and you just stayed silent about each other, you hoping to create this wonderful credibility problem basis for a trial that otherwise would be focused elsewhere, and they're waiting just to

[01:14:36] Speaker 05:
spring the cleansed version, or not quite cleansed, but a much more clean version at trial.

[01:14:43] Speaker 00:
Well, Your Honor, we only knew that Dr. Duret had lied at his deposition.

[01:14:48] Speaker 00:
We did not know what he was going to say when he came to trial.

[01:14:51] Speaker 00:
And that, with my limited time, if I could clear that one issue up also, Merck is trying to make it sound like we injected Dr. Duret into the case.

[01:15:00] Speaker 00:
Merck actually all along intended to call Dr. Durrett.

[01:15:03] Speaker 05:
Did they move to exclude his testimony at trial?

[01:15:05] Speaker 00:
They did not.

[01:15:06] Speaker 00:
What they moved to exclude was the fact that when he was on the call, he was under a confidentiality agreement.

[01:15:12] Speaker 00:
That's all they moved to exclude.

[01:15:13] Speaker 00:
They told the court at the pre-trial conference that they would be calling him at trial.

[01:15:18] Speaker 00:
And when they agreed to make him available for us to call first,

[01:15:22] Speaker 00:
It was only under the condition they be allowed to do their direct examination at the same time.

[01:15:26] Speaker 04:
Just to clarify, didn't they file motions in Lemonade to clear out all of this testimony about anything that has to do with the prosecution?

[01:15:35] Speaker 04:
Because in the end, all that really matters is the content of the application vis-a-vis the subgenus claims?

[01:15:43] Speaker 00:
What they moved to exclude were our equitable defenses, that we weren't allowed to argue to the jury any of our equitable defenses.

[01:15:50] Speaker 00:
They did not move to exclude.

[01:15:52] Speaker 00:
They were successful in getting the court to have the jury not answer the derivation question if the jury found we hadn't met our burden on written description or enablement.

[01:16:01] Speaker 00:
They never moved to exclude, for example, Dr. Durrett.

[01:16:05] Speaker 00:
They fully intended to call him.

[01:16:06] Speaker 00:
They told the court that at the pretrial conference.

[01:16:08] Speaker 00:
And what did they intend to call him for?

[01:16:10] Speaker 00:
Exactly what they used him for, which was to testify as to written description and enablement and that the claims were, in fact, fully enabled

[01:16:19] Speaker 00:
and fully supported by the written description.

[01:16:22] Speaker 00:
And that they did at length at appendix citations 19948 through 19954, and then stood up.

[01:16:32] Speaker 00:
And it was interesting to hear counsel from Merck say, we all agree Dr. Durrett was a bad witness.

[01:16:38] Speaker 00:
Merck stood up in closing and said to the jury three times that Dr. Durrett was an honest man.

[01:16:45] Speaker 00:
They vouched for him three times.

[01:16:47] Speaker 00:
And so when the court found that they made him a centerpiece of their case from opening statement to closing argument, that was factually correct.

[01:16:56] Speaker 00:
They did.

[01:16:56] Speaker 03:
I have a question that comes from an observation, if not a holding, by the district court at the end of her opinion that there hasn't been any attention focused on in the brief or at the oral argument.

[01:17:12] Speaker 03:
On page 64.

[01:17:14] Speaker 03:
talking about the balancing of equities at line 17 through 19.

[01:17:20] Speaker 03:
The court says there was a significant public harm regarding false testimony and improper business conduct that permeated this suit.

[01:17:31] Speaker 03:
The notion of public harm resonates with what the Supreme Court has talked about, about why it is sometimes an unequal unclean hands is found.

[01:17:41] Speaker 03:
Do you have a sense of what she was talking about, what the nature of the public harm is?

[01:17:46] Speaker 00:
Yes, very much so.

[01:17:47] Speaker 00:
Dr. Durrett was an attorney.

[01:17:49] Speaker 00:
He was an officer of the court.

[01:17:51] Speaker 00:
That's one of the things she found was so egregious, is that when an officer of the court comes into court and takes the most important oath you can take to tell the truth and nothing but the truth, and then proceeds to lie, the public is harmed.

[01:18:06] Speaker 00:
The entire judicial system is harmed.

[01:18:09] Speaker 00:
The judge did not come to this issue lightly or quickly.

[01:18:14] Speaker 03:
What about the public harm regarding the improper business conduct?

[01:18:19] Speaker 00:
That is very interesting because the public harm there is that no business is going to want to go into any kind of a collaboration with another business if they can't trust that the information they're exchanging will not be used for improper purposes.

[01:18:37] Speaker 03:
Is this the notion that within the industry people respect various firewalls and they respect non-financial agreements because why on earth otherwise would somebody deliver over their specific compound?

[01:18:50] Speaker 03:
Unless they can be sure that it's only going to be used in a friendly way.

[01:18:55] Speaker 00:
And it's critical to research the pharmaceutical industry where you've got a little company like Pharmacet, for example, and a huge company like Merck, they need Merck.

[01:19:03] Speaker 00:
They need the bigger companies to help them do their research.

[01:19:06] Speaker 03:
But they can't trust me.

[01:19:07] Speaker 03:
Was there discussion anywhere at the trial about the nature?

[01:19:10] Speaker 03:
I can understand the public harm regarding false testimony.

[01:19:13] Speaker 03:
I wouldn't need testimony to me to be able to write an opinion in which I would say that certainly was involved in this case.

[01:19:21] Speaker 03:
But what about the role of confidentiality agreements in collaboration, the role of firewalls?

[01:19:32] Speaker 03:
testimony at trial about that as an industry practice?

[01:19:35] Speaker 00:
Yes, Your Honor.

[01:19:36] Speaker 00:
There was substantial testimony about it and how this- Where might I find that?

[01:19:40] Speaker 03:
Which witness or- I realize that the briefs didn't focus on this point, but it does seem rather important to me if there's public harm from private conduct.

[01:19:51] Speaker 03:
If I- The court can't ignore that.

[01:19:56] Speaker 00:
If we look, I believe, at page 57 of the court's opinion, the court's talking about Kingstown, and we look at lines 13.

[01:20:10] Speaker 00:
Well, let me preface it.

[01:20:12] Speaker 00:
She said, Dr. Durette testified he amended the claims to cover the most important compounds, and so on.

[01:20:16] Speaker 00:
When pressed at trial, he refused to cleanly admit that he amended them to cover structures you saw in the Clark application, et cetera.

[01:20:22] Speaker 00:
Then she goes on and talks about,

[01:20:25] Speaker 00:
Even if that were not the case, the court finds Keemstown's holding is premised entirely on the assumption that a patentee learns of a competitor's product through legal and ethical means.

[01:20:34] Speaker 00:
Here, Merck learned PSI 6130, pharmacist's crown jewel, and that was actual testimony at trial, was it?

[01:20:41] Speaker 00:
It's crown jewel, during its due diligence of pharmacist.

[01:20:43] Speaker 03:
Bring the marketplace to a halt.

[01:20:45] Speaker 03:
I see that.

[01:20:46] Speaker 00:
There we go.

[01:20:46] Speaker 00:
That's where the court, she doesn't give transcript citations, but she's basing that on the testimony that was heard at trial.

[01:20:55] Speaker 04:
Ask another question.

[01:20:57] Speaker 04:
Why not?

[01:20:59] Speaker 04:
Thank you, Mr. Presiding Judge.

[01:21:03] Speaker 03:
This is a town hall meeting.

[01:21:07] Speaker 04:
Yeah, more like a committee hearing today.

[01:21:11] Speaker 04:
Going back to the kind of jack-in-the-box fun zone of Duret's deposition, at 822-349,

[01:21:24] Speaker 04:
Page 71 of the deposition, the judge at one part, one place in her opinion, also points to this particular testimony as casting doubt on whether Mr. Dr. Durrett would have thought the Pharmisat publication to be important.

[01:21:45] Speaker 04:
And I couldn't quite understand what he meant here.

[01:21:47] Speaker 04:
This is page 71 of the deposition at A22349.

[01:21:54] Speaker 03:
And this is where... Which line are we talking about?

[01:21:58] Speaker 04:
Well, it starts at line eight.

[01:22:06] Speaker 03:
By the way?

[01:22:06] Speaker 04:
By the way.

[01:22:07] Speaker 04:
This is where Dr. Diret appears to be volunteering some insights about what he would understand from the Clark application.

[01:22:19] Speaker 04:
He's saying how the B, the base, can be purine and a

[01:22:26] Speaker 04:
Pyramidine, I don't know if I'm pronouncing this correctly.

[01:22:28] Speaker 00:
Yeah, you are, Your Honor.

[01:22:29] Speaker 00:
That's a single base or a double base.

[01:22:31] Speaker 00:
Right.

[01:22:31] Speaker 04:
And then the questioner asks, well, why does this matter?

[01:22:35] Speaker 04:
And then he answers that basically that the definition of B would have been indefinite because of such a large number of structures.

[01:22:47] Speaker 04:
So it would have had no impact even if I had seen that publication in my narrowing the definition of B to a Pyramidine ring.

[01:22:56] Speaker 04:
And I just want to make sure I understand this answer correctly because it feels like it's a binary choice between a single ring and a double ring.

[01:23:07] Speaker 04:
So what is, can you understand what Dr. Dredd is suggesting here that it would be indefinite because the application is directed to both the single ring and versions that are double ring?

[01:23:22] Speaker 00:
I would guess that what that means is because it's directed to both

[01:23:26] Speaker 00:
you've taken potentially a billion compounds and doubled them into two billion compounds.

[01:23:32] Speaker 00:
Because if you're only focused on single ring, then obviously at least you've gotten the base out of the way, and now you can figure out the sugar, which is still billions of compounds.

[01:23:40] Speaker 00:
But if you could either have an infinite number of sugars with two different bases, then you've just doubled your amount of compounds.

[01:23:51] Speaker 00:
That's my guess.

[01:23:53] Speaker 00:
It's not the cleanest answer in the world.

[01:23:55] Speaker 00:
You don't think that the Clark application was indefinite?

[01:23:59] Speaker 00:
No, I do not.

[01:24:02] Speaker 00:
No, Your Honor, I definitely.

[01:24:03] Speaker 00:
May the record reflect, no, I do not.

[01:24:05] Speaker 03:
That's another case, I think.

[01:24:07] Speaker 00:
For another day.

[01:24:09] Speaker 00:
The court has no further questions.

[01:24:11] Speaker 04:
No further questions.

[01:24:12] Speaker 00:
Thank you very much.

[01:24:12] Speaker 00:
Thank you very much.

[01:24:15] Speaker 05:
Mr. Lamkin, 10 minutes.

[01:24:22] Speaker 05:
I think that roughly evens things out.

[01:24:25] Speaker 05:
It's going to be.

[01:24:26] Speaker 01:
Thank you for indulging us that 10 minutes.

[01:24:28] Speaker 01:
We've gone a while already.

[01:24:29] Speaker 01:
So I wanted to start with the 712.

[01:24:33] Speaker 01:
And whether or not you can find wrongful conduct somehow gives any unfair advantage anything that taints the 712.

[01:24:41] Speaker 01:
And the difficulty is this.

[01:24:43] Speaker 01:
The district court does not find any change to the 712 that traces to Dr. Dorat, that Dr. Dorat proposed, that has a linkage in any way, shape, or form to any of the misconduct.

[01:24:55] Speaker 01:
The only thing the district court identifies, and this is page 61 of the opinion, is that they share a common specification and that Dr. Durrett filed both of the applications.

[01:25:05] Speaker 01:
But neither of those produced any wrongful harm to Gilead or any advantage to Merck.

[01:25:11] Speaker 01:
The specification is shared.

[01:25:13] Speaker 01:
No impact in the specification itself is untainted.

[01:25:16] Speaker 01:
It traces all the way back to 2002 before any of these events happened that Dr. Durrett filed both.

[01:25:22] Speaker 01:
Unless Dr. Durrett does something to bring

[01:25:25] Speaker 01:
Gilead's invention within the claims, you cannot argue that somehow or another, Gilead was harmed by the changes to the 712.

[01:25:34] Speaker 01:
But none of the changes to the 712 occur until 2011, when two patent prosecutors passed Mr. Durrett.

[01:25:41] Speaker 01:
And the ability to trace anything back to Dr. Durrett or any misconduct, the trail runs cold.

[01:25:46] Speaker 01:
So what does the district court have next on the 712?

[01:25:49] Speaker 01:
That the 712 and the 499 are asserted in the same case.

[01:25:54] Speaker 01:
And that for that reason, if the district court only renders the 499 unenforceable, Merck will escape without a penalty.

[01:26:03] Speaker 01:
And that, I think, gives up the problem with the district court's decision.

[01:26:06] Speaker 03:
712 lies in the ambit of the Merck ISIS collaboration, doesn't it?

[01:26:11] Speaker 03:
Certainly.

[01:26:12] Speaker 01:
And I would not say that they're totally unrelated.

[01:26:14] Speaker 01:
And if there was business misconduct with regard to that collaboration?

[01:26:18] Speaker 01:
Of course.

[01:26:19] Speaker 01:
But I think when we're talking about the nexus,

[01:26:22] Speaker 01:
Judge Bryson's articulation of the nexus is probably on the map, Basque.

[01:26:25] Speaker 01:
You're looking for a nexus between wrongful conduct and some unfair advantage in granting the relief that is sought by the party.

[01:26:33] Speaker 01:
And the mere fact that it's there touches me.

[01:26:35] Speaker 03:
Well, the same possible connection to derivation arguments and whatnot applies to both patents.

[01:26:40] Speaker 03:
Right, but I don't think.

[01:26:41] Speaker 03:
The possibility that you will have muddied the waters and you've made Gilead's problems in dealing with its

[01:26:49] Speaker 03:
potential challenge on derivation, muddier and more confused that Durette did all of that.

[01:26:55] Speaker 03:
And that applies to both patents.

[01:26:58] Speaker 03:
Well, I think that would be at the point where we're... For you, that's far too remote.

[01:27:03] Speaker 03:
It's extant.

[01:27:04] Speaker 03:
You can't deny that there is possible impact on the litigation of the derivation argument because of this back and forth from what Durette did, right?

[01:27:18] Speaker 01:
I think that reduces, Your Honor, to the notion that there is a possible impact because they're in the same case and they share a specification.

[01:27:24] Speaker 01:
But the in the same case cannot be enough, because I think that would be contrary to Keystone and this court decision in consolidation.

[01:27:32] Speaker 03:
It's not just in the same case, and it's conduct that does impact in a more general way than you want to think the law permits.

[01:27:41] Speaker 01:
I think if one have just, it has some tangential relationship.

[01:27:44] Speaker 01:
It's in the same case, they share a spec, and that's enough.

[01:27:48] Speaker 01:
that I think that we have a much harder case.

[01:27:50] Speaker 03:
And from the perspective of your adversary and of the court, Duret, he sullied the environment.

[01:27:58] Speaker 03:
He fouled the ground of the court.

[01:28:06] Speaker 03:
And he wasn't responsible for filing the application in this other patent.

[01:28:12] Speaker 03:
So why isn't it sufficient that the remedy is

[01:28:16] Speaker 03:
As I said earlier, if you view unclean hands as a standing doctrine, are you entitled, if you have impersonal jurisdiction, your client to stand in front of a court and ask for any form of relief when you are responsible for the kind of conduct that the court found?

[01:28:33] Speaker 03:
Why is it wrong to say, no, you're out of here?

[01:28:36] Speaker 03:
Well, come back some other case.

[01:28:37] Speaker 03:
But your patent isn't unenforceable forever.

[01:28:40] Speaker 03:
This is not an equitable conduct.

[01:28:42] Speaker 01:
You've lost standing.

[01:28:44] Speaker 01:
And I think the answer comes from the case law, which is that unclean hands does not exist to render the property owner an outlaw.

[01:28:52] Speaker 01:
It does not mean he no longer has rights.

[01:28:55] Speaker 01:
And so the fact that you have unclean hands that infect one patent does not mean that your other property right, that's a distinct property right, somehow becomes unreliable.

[01:29:03] Speaker 03:
That's a distinct property right that is not entirely unrelated.

[01:29:07] Speaker 01:
It's not entirely, but I think consolidated aluminum is actually very insightful on this one.

[01:29:11] Speaker 01:
Because when Consolidated Aluminum looks at Keystone, it says, in Keystone, for each claim and each patent, there was a direct impact, a direct effect that affected the equity of what the relief was being sought.

[01:29:25] Speaker 01:
And in that case, they'd use an ill-gotten decree in order to get the imposition of a very, very onerous set of bonds with respect to every single one of the patents.

[01:29:37] Speaker 01:
And that analysis in Keystone of having to find an impact on each and every one of the patterns.

[01:29:42] Speaker 05:
You know, Keith, am I remembering right that, and maybe it's been studied, I'm sure it's been studied more carefully than I, but the Supreme Court opinion about the bond or the mention of the bond, I think it's kind of one passing sentence.

[01:29:58] Speaker 05:
And yet down the two and three or three through five or something, just

[01:30:04] Speaker 05:
they get captured within the courts ruling.

[01:30:09] Speaker 01:
And they get captured precisely because the district court finds that there was an advantage with respect to all of the patents, because an ill-gotten decree was used to impose an onerous bonding requirement with respect to all three patents.

[01:30:21] Speaker 01:
I think Consolidated Aluminum's analysis of that is actually very good, as well as Judge Bryson's, I would add.

[01:30:27] Speaker 01:
But Consolidated Aluminum itself would also be inconsistent in saying, oh, same case, therefore same patent.

[01:30:33] Speaker 05:
Right, but there's clearly more than that here, right?

[01:30:36] Speaker 05:
This is not just same case, this is same spec.

[01:30:40] Speaker 05:
By the time you file whatever the application was that led to the 712, whoever files it knows that it too can be amended, as it was indeed the next year by Dr. Durrett's successor, to do exactly what was done with the original 2002 application to become

[01:31:01] Speaker 05:
the February 2005 amendment.

[01:31:04] Speaker 05:
Not exactly the same, but to narrow it to in a similar way.

[01:31:10] Speaker 05:
They're not identical claims.

[01:31:11] Speaker 01:
But I do think at that point, Your Honor, we are in the land of not the district court's actual opinion, but speculation that somehow this was a stocking horse in 2007 that was put up because they're going to amend it later in 2011.

[01:31:22] Speaker 05:
No, because you don't need additional wrongfulness or scheming

[01:31:28] Speaker 05:
only the absence of a certain break in the chain of causation.

[01:31:35] Speaker 01:
I don't think that the district court found a continuity in the chain of causation from the business misconduct through to the 712.

[01:31:42] Speaker 01:
I think that's entirely absent.

[01:31:43] Speaker 01:
The justice court used the phrase, the trail ran cold, that it was a dead end to try and chase the 712 to direct.

[01:31:51] Speaker 01:
So what the district court's left with is common specification.

[01:31:54] Speaker 01:
But that specification is from 2002.

[01:31:55] Speaker 01:
It is untainted.

[01:31:57] Speaker 05:
Was there testimony about the 2011 amendment in the 712 and from the, I forget, the Bergman?

[01:32:06] Speaker 01:
Yes.

[01:32:09] Speaker 01:
Bergman testified and the district court did not rely and did not find that Bergman in any way had gotten any information from direct or otherwise that in any way tainted the 712, which is why you have that footnote, which says, I can't trace it to the business misconduct.

[01:32:24] Speaker 01:
in any effort to trace it to, for example, the fact that he continued his prosecution.

[01:32:29] Speaker 01:
As filed in 2007, the 712 did not cover the subocular metabolites.

[01:32:35] Speaker 01:
It simply didn't cover them.

[01:32:36] Speaker 01:
It wasn't until 2011 when a completely untainted patent prosecutor, two steps removed from Duret, amended it.

[01:32:43] Speaker 01:
I think that just goes too far.

[01:32:45] Speaker 01:
It's one thing to say Duret was a difficult, difficult witness, to say the least.

[01:32:51] Speaker 01:
To impute that to Mark,

[01:32:53] Speaker 01:
And then to Merck's counsel with some sort of a scheme to defraud when they offered the 30 v 6 witness, when they actually provided in the interrogatory response clear statements that Duret was there and therefore was required to destroy his evidence.

[01:33:05] Speaker 01:
And then go to counsel, and then all the way over to the 712 patent, where the connection is so remote, simply goes too far.

[01:33:12] Speaker 05:
And what do you make specifically of the passages, which I don't remember being highlighted in the briefs, but were highlighted very much by Ms.

[01:33:21] Speaker 05:
Brooks

[01:33:22] Speaker 05:
H49 and other places where there is actually some specific reference by the district court to the misconduct in non-recusal extending to all of the applications including the 712.

[01:33:38] Speaker 01:
So obviously when the district court has her conclusions a lot and reasons, those are not cited and so they weren't focused on.

[01:33:45] Speaker 01:
But I think the difficulty with those is the same as the difficulty you find throughout is that either

[01:33:50] Speaker 01:
You're missing the wrongful conduct on one side.

[01:33:52] Speaker 01:
For example, the fact it's a common specification.

[01:33:55] Speaker 01:
Or the fact that he testified that there was written description, not false.

[01:34:00] Speaker 01:
Or you're missing on the other side, the nexus, the critical nexus, the essential, necessary nexus, to some unfair advantage, which means the court that says, I can't give you relief because I would be abating inequity.

[01:34:12] Speaker 01:
But if the patent itself is not tainted, if it knows not a product, if it has no relation in that sense to the inequity underlying it,

[01:34:20] Speaker 01:
then you go too far in saying that unclean hands means I'm going to punish because otherwise you wouldn't have a penalty.

[01:34:25] Speaker 01:
You would suffer no loss.

[01:34:27] Speaker 01:
And that was the final bit of the district court's analysis, which is, gosh, it would be bad if this happened because Merck would suffer no penalty.

[01:34:34] Speaker 01:
But there's other ways to penalize misconduct.

[01:34:37] Speaker 01:
There's sanctions.

[01:34:38] Speaker 01:
There's contempt.

[01:34:39] Speaker 04:
She also said it cast a darkness over the entire litigation.

[01:34:42] Speaker 04:
It's a little dramatic, I understand.

[01:34:44] Speaker 04:
But it's more than just, I need to punish this Merck.

[01:34:49] Speaker 01:
And I think that cast a darkness rationale gives away the fact that the district court wasn't applying materiality.

[01:34:56] Speaker 01:
Because materiality requires a nexus between the wrongful conduct and some unfair advantage, some potential impact.

[01:35:03] Speaker 01:
And for the 712 in particular, it's just not there.

[01:35:06] Speaker 01:
And even for the 499, the district court and the page 52 cites rightful conduct as the basis.

[01:35:12] Speaker 01:
If there are no further questions, thank you so much.

[01:35:14] Speaker 01:
Thank you.

[01:35:15] Speaker 01:
Thanks to both counsel.

[01:35:16] Speaker 01:
The case is submitted.

[01:35:18] Speaker 02:
I'd probably would say.