Attorney Fees : CAFC Alert

CAFC Allows Willful Infringer to Continue Infringements for an “Ongoing Royalty” Due to “the Public’s Interest to Allow Competition in the Medical Device Arena”

Stephen Parker | February 16, 2012

Bard Peripheral Vascular, Inc., et al. v. W.L. Gore & Associates, Inc.

February 10, 2012

Panel: Gajarsa, Linn and NewmanOpinion by Gajarsa.  Dissent by Newman.

Summary

This decision concludes a forty-year-long story that began in 1973 between two cooperating individuals that independently filed patent applications for vascular grafts in 1974.  Those applications went to interference in 1983 and have been the subject of ongoing litigation since, concluding now in the current CAFC decision.  The Arizona district court from which the present case was appealed expressed that this was “the most complicated case the district court has [ever] presided over.”  In this case, the Gore inventor was the first to both 1) conceive of the invention and 2) file a patent application in 1974 (i.e., filing 6 months prior to the Bard inventor), but Gore lost in an interference before the Patent Office.  Now, Gore is found to be willfully infringing the patent that was awarded to Bard, and is subjected to doubled damages (i.e., totaling $371 million) and attorney’s fees (i.e., totaling $19 million).  However, despite these findings, the CAFC allows Gore to continue infringing, declining a permanent injunction and awarding reasonable royalties in the amount of between 12.5% to 20% for future infringements due to the weight of “the public interest to allow competition in the medical device arena.”


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Joint Inventorship of a novel compound may exist even if co-inventor only developed method of making

Bernadette McGann | January 25, 2012

Falana v. Kent State University and Alexander J. Seed

January 23, 2012

Panel:  Linn, Prost and Reyna.  Opinion by Linn.

Summary

The CAFC held that a putative inventor who envisioned the structure of a novel chemical compound and contributed to the method of making that compound is a joint inventor of a claim covering that compound.  One may be a joint inventor even if co-inventor’s contribution to conception is merely a method of making the claimed product and said co-inventor does not synthesize the claimed compound.


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Infringement Argument Contradicting Prosecution History and Based On Unreliable Expert Testimony Can Make The Case “Exceptional” Incurring Opponent’s Attorneys Fees

Sadao Kinashi | January 11, 2012

MarcTec, LLC v. Johnson & Johnson and Cordis Corp.

January 3, 2012

Panel:  Newman, Prost and O’Malley.  Opinion by O’Malley.

Summary

The CAFC affirmed the district court’s award of attorney fees and expert fees under 35 U.S.C. § 285.  During prosecution of the application, Applicant amended the claims to make clear that his invention required the application of heat to a heat-bondable material.  Applicant also distinguished the surgical device from stents in order to obtain allowance.   Patentee alleged infringement by accused stents having a coating sprayed at room temperature.  Patentee further argued that accused product’s coating is, in fact, bonded by heat. In support of this position, Patentee offered expert testimony that spraying the coating at nearly the speed of sound would cause an increase in temperature such that heat is involved in bonding the coating to the stent. The expert testimony also alleged that heat is used in some of the manufacturing steps before the coating is sprayed onto the accused product.   The court held that Patentee’s argument was baseless and frivolous and that Patentee acted in bad faith in bringing and pressing this suit.

CAFCは、米国特許法285条の例外的なケースとして相手方の弁護士費用と専門化証人の費用の支払いを命じた地裁の決定を維持した。問題の特許の審査過程において、出願人は、クレームを補正して、発明が熱を適用して結合する点で先行技術と異なることを主張し、また、本発明は、先行技術の血管を拡張するステントとは異なると主張した。この事件で特許権者は、常温でスプレーコーティングした被疑侵害者のステントを特許侵害で提訴した。そして、被疑侵害者のステントのコーティングにおいて熱が適用されていると主張した。特許権者の専門家証人は、音速に近いスプレーは温度上昇を伴うと主張し、また、スプレーコーティングの前に熱を使う工程があることもその根拠とした。裁判所は、特許権者の主張は根拠のない軽薄なものであり、不誠実なものであると判示した。


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