Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
Gilead Sciences, Inc. v. Merck & Co., Inc., Appeal Nos. 2016-2302, -2615 (Fed. Cir. 2018)
In an appeal from a bench trial finding patents unenforceable, the Federal Circuit issued a rare decision on the doctrine of unclean hands. The doctrine of unclean hands in patent law arises from two twentieth-century Supreme Court cases: Keystone Driller Co. v. General Excavator Co., 290 U.S. 240 (1933) and Precision Inst. Mfg. Co. v. Automotive Maintenance Mach. Co., 324 U.S. 806 (1945). That doctrine relies on the equitable maxim “he who comes into equity must come with clean hands,” and has become the basis of the inequitable conduct defense in patent law. Thus, in recent years, the doctrine of unclean hands has almost entirely given way to the more fully developed doctrine of inequitable conduct, which concerns communications with the patent office during patent prosecution.
In Gilead, the Federal Circuit addressed conduct that may not have been subject to a claim of inequitable conduct, but still satisfied the Supreme Court’s standard for unclean hands, thus drawing a distinction between the two defenses.
In an appeal from the denial of a motion for a new trial following a jury verdict of noninfringement, the Federal Circuit affirmed. The patentee argued that the defendant had improperly invoked a “practicing the prior art” defense, which is not allowed. Collecting and analyzing the cases, the Federal Circuit held that the defendant’s invocation of the prior art in this case was not improper. The Court also held that it was not improper for the district court to limit introduction into evidence the fact that the defendant had sought reexam of the patent.