Therasense, Inc. et al. (Abbott) v. Becton, Dickinson and Company and Nova Biomedical Corporation, and Bayer Healthcare LLC

Docket No. 2012-1504

RADER, NEWMAN, DYK (dissent-in-part)
March 12, 2014

Brief Summary: Becton / Nova’s request for additional fees 35 U.S.C. § 285 denied because the “pre-existing inequitable conduct ruling was ‘not upheld on appeal’ as required by the…fee order” and Abbott’s appeal was determined not to be frivolous.

Summary: Becton and Nova appealed from DC denial of “exceptional” case fees (35 U.S.C. § 285). In March 2004, Becton sought a DJ of noninfringement as to Abbott’s US Pat. Nos. 6,143,164; 6,592,745; and 5,920,551 and Abbott sued Becton for infringement with respect to several Bectron products. The DC found nearly all of the asserted claims of the ’745 patent anticipated, certain claims of the ‘551 patent obvious and unenforceable due to inequitable conduct. The DC found the case exceptional and awarded Becton and Nova costs and fees of nearly $6 million. Abbott appealed to the FC and the inequitable conduct finding was first affirmed and then vacated by the en banc court (Therasense, FC 2011). The DC found inequitable conduct under the “new standard” as well. Becton then asked for the original fee award to be supplemented by costs incurred during the appeal, rehearing en banc and remand (about $2 million), which was denied. This opinion first explained that the “pre-existing inequitable conduct ruling was ‘not upheld on appeal’ as required by the…fee order” and “[a]s such, the district court did not err in denying Becton and Nova’s motion for additional fees predicated on the vacated determination of inequitable conduct.” Becton and Nova also characterized “Abbott’s continued pursuit of appellate review as a deliberate and malicious attempt to prolong the litigation and to deceive the district court” but presented “zero evidence of bad faith” (“Expressions of outrage and suspicion in the form of attorney argument are not evidence of bad faith.”) The FC panel concluded that Abbott’s appeal was not frivolous, as demonstrated by “a dissent and this court’s later decision to grant Abbott’s petition for rehearing en banc”. Becton and Nova also unsuccessfully attempted to obtain the fees paid for pursuing the additional fees in this appeal but this was denied as well (avoiding a “‘Kafkaesque judicial nightmare’ of infinite litigation to recover fees for the last round of litigation over fees” (Jean, US 1990)). Thus, the DC decision was affirmed. Judge Dyk argued that the appellate fee requests should have been granted because “the Supreme Court has held that all phases of litigation, including appellate proceedings, are to be treated as a unitary whole, not parsed into discrete parts” (citing Jean, US 1990).

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