Therasense, Inc. v. Becton, Dickinson and Company
745 F.3d 513
| Fed. Cir. | 2014Background
- Becton Dickinson & Co. and Nova Biomedical Corp. sued Abbott for fees after an eight-year patent infringement litigation in the Northern District of California and related proceedings in Massachusetts.
- The district court initially found the case exceptional and awarded costs and fees under 35 U.S.C. § 285, with a separate $5,949,050 attorney’s fees award conditioned on outcomes on appeal.
- En banc review reinstated the district court’s judgments on noninfringement, obviousness, and anticipation, but vacated its inequitable-conduct judgment and remanded for further proceedings.
- On remand, the district court again found inequitable conduct and reinstated the fee award, then Becton and Nova sought additional fees (appellate/remand, fees-on-fees) and various post- and pre-judgment interest calculations.
- Abbott appealed the denial of the additional fees; the district court reinstated the prior fee award and denied further requests, and Abbott paid the balance due.
- This court reviews § 285 determinations for abuse of discretion and post-judgment interest de novo; the Ninth Circuit recognizes fees-on-fees are excludable to the extent not prevailing on fee petitions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether appellate/remand fees can be awarded independent of trial-phase exceptionalism. | Becton & Nova: appellate/remand fees should be awarded as part of the inclusive whole. | Abbott: appellate fees require the appeal itself to be an independent exceptional event. | No; the district court did not abuse its discretion in denying appellate/remand fees where the appeal was not independently exceptional. |
| Whether fees incurred to secure a fee award (fees-for-fees) may be awarded. | Becton & Nova: fees-for-fees should be recoverable as part of the fee process. | Abbott: fees-for-fees should be excluded unless the fee petition itself is successful. | No; the district court properly denied additional fees-for-fees beyond the original award. |
| Whether post-judgment interest should accrue from August 21, 2008 (the exceptional-case date) or from the reinstatement of the fee award. | Becton & Nova: post-judgment interest should run from the exceptional-case date. | Abbott: post-judgment interest should accrue from the most recent judgment after vacatur/remand. | From the date of the reinstated fee award; post-judgment interest accrues from that later date. |
Key Cases Cited
- Rohm & Haas Co. v. Crystal Chem. Co., 736 F.2d 688 (Fed.Cir.1984) (fee award allocation across phases treated as an inclusive whole)
- Jean v. INS, 496 U.S. 154 (U.S. 1990) (treat civil actions as inclusive wholes; fees should reflect overall success)
- Hensley v. Eckerhart, 461 U.S. 424 (U.S. 1983) (guides reasonableness and allocation of fees)
- Mathis v. Spears, 857 F.2d 749 (Fed.Cir.1988) (fees-on-fees discretion; prevailing party analysis)
- Kilopass Tech., Inc. v. Sidense Corp., 738 F.3d 1302 (Fed.Cir.2013) (abuse of discretion in fee awards; exceptional-case standards)
- Taltech Ltd. v. Esquel Enters. Ltd., 604 F.3d 1324 (Fed.Cir.2010) (post-judgment interest dispute standards)
- Thérasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed.Cir.2011) (en banc, standard for inequitable conduct; remand procedures)