Marctec, LLC v. Johnson & Johnson
664 F.3d 907
| Fed. Cir. | 2012Background
- MarcTec sued Cordis in the Southern District of Illinois for infringement of the ’753 and ’290 patents.
- District court construed “bonded” to require heat bonding between a polymeric material and an implant, and held Cypher’s coating bonds at room temperature, leading to noninfringement.
- MarcTec appealed; the prior appeal affirmed the construction of “bonded” as heat bonding and the noninfringement ruling, while noting the claim-disclaimer issue regarding stents.
- The district court later held the case exceptional under 35 U.S.C. § 285 and awarded Cordis attorney and expert fees totaling $4,683,653.03.
- The district court found MarcTec acted in bad faith, pursued baseless infringement claims, and engaged in litigation misconduct, including mischaracterizing claim construction and relying on unreliable expert testimony.
- MarcTec appeals the § 285 exceptional-case ruling and the award of expert fees, arguing error in standard and discretion, which the court reviews de novo for the legal standard and for abuse of discretion on the fee awards.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court applied the correct standard for § 285 exceptional case. | MarcTec argues lack of subjective bad faith required. | Cordis argues bad faith and baseless claims support exceptional finding. | Yes; court properly found exceptional case based on bad faith and baseless claims. |
| Whether expert fees awarded under the inherent power were proper. | MarcTec contends no misconduct justifying expert fees. | Cordis contends expert fees are warranted due to misconduct and need to rebut junk science. | Yes; court did not abuse discretion in awarding expert fees under inherent authority. |
| Whether there was sufficient evidence of subjective bad faith and objective baselessness. | MarcTec asserts positions were reasonable; no subjective bad faith. | Cordis maintains baseless infringement positions and misrepresentations of law. | Yes; record supports subjective bad faith and objective baselessness. |
| Whether litigation misconduct independently supports § 285 award. | MarcTec challenges reliance on misconduct findings. | Cordis relies on documented misconduct such as mischaracterization of claim construction and unreliable expert testimony. | Yes; independent misconduct finding sustains exceptional-status award. |
| Whether prior issues limiting the scope of the patents affect the exceptional-case ruling. | MarcTec suggests prior scope limits negate the basis for exception. | Cordis contends the exceptional ruling rests on misconduct and baselessness, independent of prior scope. | No; the exceptional ruling stands on bad-faith and misconduct findings. |
Key Cases Cited
- Old Reliable Wholesale, Inc. v. Cornell Corp., 635 F.3d 539 (Fed. Cir. 2011) (two-step § 285 analysis; de novo standard for legal question, abuse of discretion for awards)
- Forest Labs., Inc. v. Abbott Labs., 339 F.3d 1324 (Fed. Cir. 2003) (clear and convincing standard; exceptional-case review framework)
- Aspex Eyewear Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305 (Fed. Cir. 2010) (objective baselessness and exceptional-case standards)
- Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc., 393 F.3d 1378 (Fed. Cir. 2005) (objective baselessness standard; need for objective evaluation)
- Rambus Inc. v. Infineon Techs. AG, 318 F.3d 1081 (Fed. Cir. 2003) (litigation misconduct supports exceptional-status awards)
- Takeda Chem. Indus., Ltd. v. Mylan Labs., Inc., 549 F.3d 1381 (Fed. Cir. 2008) (inherent authority sanctions standard; need for fraud or bad faith finding)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (specification is the best guide to term meaning; claim construction approach)
- iLOR, LLC v. Google, Inc., 631 F.3d 1372 (Fed. Cir. 2011) (objective baselessness requires objective assessment of merits)
- Digeo, Inc. v. Audible, Inc., 505 F.3d 1362 (Fed. Cir. 2007) (basis for exceptional-case finding in some contexts)
- Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314 (Fed. Cir. 2011) (read disputed claim language in light of specification and prosecution history)