Idenix sues Gilead over patent

Idenix Pharmaceuticals (IDIX) files patent infringement lawsuit against Gilead Sciences (GILD) in France, Germany and the UK.

The suit pertains to European patent EP 1 523 489 that covers 2-methyl-2-fluoro nucleosides for the treatment of Hep C.

The company seeks remedies regarding Gilead's commercial activities with its drugs containing sofosbuvir.

Comments (4)
    , contributor
    Comments (25) | Send Message
    This seems to be a re-hashing of the lawsuit that Idenix lost against Gilead here in the United States. How do they think they will have better luck overseas?
    14 Mar 2014, 06:17 PM Reply Like
  • Camman1963
    , contributor
    Comments (76) | Send Message


    This is a case of a smaller player filing a meritless (nuisance) lawsuit against a much more successful rival hoping for an out-of-court settlement. [Idenix has a market cap of $447 Million. Gilead has a market cap of $72 Billion.]


    Gilead is what is right with US Biotech innovation: a great company doing real science that is saving lives.


    Idenix is an example of what is wrong with our legal system (patent trolling).


    Shame on Idenix.


    Long Gilead.


    I encourage you to read this entire text but have distilled the most important points below.



    On 22 March 2013, Idenix announced the United States Patent and Trademark Office Patent Trial and Appeal Board issued a decision in the first phase of ongoing interference concerning Idenix’s patent applications and an issued Gilead patent that covers certain 2'-methyl- 2'-fluoro nucleoside compounds useful in the treatment of HCV.


    Idenix was determined to have a later application filing than Gilead, thus designating the former as the “junior party” and the latter as the “senior party.”


    The second phase of the interference is expected to commence in 2Q13 and will determine which party was first to invent. The party who is deemed first to invent ultimately prevails in the interference.


    “The decision from the Board of Patent Appeals and Interferences validates Gilead’s perspective that we
    were the first to invent the compounds involved in the interference, as described in the ‘572 patent,” a Gilead spokesperson commented. Idenix declined to comment.


    Gilead’s patent was filed on April 24, 2004. The Idenix patent application, U.S. Application No. 12/131,868, was filed June 2, 2008. The ‘868 application claimed earliest priority to provisional application 60/392,350, filed June 28, 2002


    The USPTO granted Gilead’s claim to the benefit of the ‘368 provisional application filing date, finding that Gilead had established “constructive reduction to practice” as the claimed subject matter was sufficiently described and enabled, Mulholland noted.


    Idenix, on the other hand, was found not to have satisfied the requisite enablement threshold in its priority applications. The USPTO stated the Idenix teachings were incomplete, requiring “undue experimentation” for one skilled in the art to make and use the invention. The decision then denied Idenix’s benefit claims to its prior applications, including the ‘350 application, and a prior divisional application 10/608,907, filed June 27, 2003, he said.


    Given the change in the junior and senior party designations, it appears a case was made that Idenix’s provisional applications do not fully support the subsequent utility applications, said Sandra Thompson, a shareholder in the Orange County office of law firm Buchalter Nemer.


    Now Idenix must prove it conceived the nucleosides prior to Gilead and that Idenix was diligent in reducing the invention to practice from a period just before Gilead’s December 2002 date up until the date Idenix actually made the nucleosides or up until 2 June 2008, the date the USPTO has now concluded that Idenix filed an application satisfactorily describing the nucleosides, Patel explained. Five years is an incredibly long period of time to show diligence for an invention like this, he said.


    Lawrence Green, a shareholder with Boston IP law firm Wolf,. Greenfield & Sacks, agreed, indicating the demonstration of reduction to practice requires daily activity. Idenix does not sound like it has good evidence for this, Green said, adding he has never seen a party successfully provide sufficient evidence for such a long time duration.


    Idenix also did not claim to make the product any earlier than 27 June 2003, which is after Gilead’s presumptive invention date, so “that also does not bode well” for Idenix in view of the USPTO's decision, Patel said. It is not impossible, “but I would be shocked if [Idenix] was able to win on priority of invention if it also must establish it was diligent over a five year period” he said.
    15 Mar 2014, 11:33 AM Reply Like
  • tshaw9
    , contributor
    Comments (3) | Send Message
    I also agree that this is not going to turn into anything. I think Gilead is still a very strong buy.


    However, Camman where are you getting your numbers from. I am using Factset and as of today Gilead has a market value of 119 Billion, while Idenix has a 1.2 billion market value.
    18 Mar 2014, 12:53 PM Reply Like
  • Camman1963
    , contributor
    Comments (76) | Send Message
    Good catch.


    I got that from the article ("Idenix has a market cap of USD 447.4m. Gilead has a market cap of USD 72.8bn.") but that data is not new.


    Your numbers are correct.
    19 Mar 2014, 10:06 PM Reply Like
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