TransWeb, LLC v. 3M Innovative Properties Co.
812 F.3d 1295
| Fed. Cir. | 2016Background
- 3M sued TransWeb for patent infringement on patents covering plasma-fluorinated and hydrocharged nonwoven filter media; TransWeb counterclaimed for declaratory judgment of invalidity and noninfringement and asserted antitrust counterclaims.
- At a 1997 filtration-industry expo, TransWeb’s founder Ogale testified he distributed samples of plasma‑fluorinated T‑Melt P material more than one year before 3M’s patent priority date; whether those samples were distributed was dispositive for invalidity.
- A jury found claims of the ’458 patent invalid (prior public use and obviousness), found both asserted patents unenforceable for inequitable conduct, and found 3M liable under Walker Process for enforcing a fraudulently procured patent.
- The district court awarded TransWeb trebled antitrust damages including approximately $26 million largely consisting of trebled attorney fees incurred defending the infringement suit.
- On appeal 3M challenged (1) sufficiency of corroboration for Ogale’s prior‑use testimony and the obviousness finding, (2) the inequitable‑conduct/unenforceability finding, and (3) the Walker Process damages award (whether attorney fees can constitute antitrust damages).
Issues
| Issue | TransWeb's Argument | 3M's Argument | Held |
|---|---|---|---|
| Sufficiency of corroboration for Ogale’s testimony of prior public use at the expo | Contemporaneous documents and correspondence (samples sent, offers for sale, patent filing) corroborate Ogale’s testimony | Oral testimony by an interested party is insufficient absent independent corroboration of each material fact | Court: corroboration adequate under rule‑of‑reason; no clear error in denying JMOL on non‑invalidity |
| Obviousness (claims involving hydrocharging plasma‑fluorinated material) | Hydrocharging was known and nothing in prior art would have deterred applying it to plasma‑fluorinated media | Plasma fluorination discourages further treatments (cites Angadjivand) and objective indicia (commercial success, unexpected results) support nonobviousness | Court: jury rationally found claims obvious; objective indicia did not compel reversal |
| Inequitable conduct / unenforceability (failure to disclose TransWeb samples) | 3M knowingly withheld but‑for material prior art and misled PTO; specific intent shown by circumstantial evidence | 3M disputed intent, timing, and materiality of disclosures | Court: findings of materiality and specific intent supported; unenforceability affirmed (no abuse of discretion) |
| Walker Process liability — attorney fees as antitrust damages | Attorney fees incurred defending the infringing suit flowed from the anticompetitive act of suing on a fraudulently obtained patent and thus constitute antitrust injury and §4 damages | Attorney fees did not affect market competition and therefore are not proper antitrust injury/damages | Court: attorney fees are a recoverable antitrust injury/damage here; trebled fees affirmed |
Key Cases Cited
- Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (standard for materiality and specific intent in inequitable conduct)
- Walker Process Equip. v. Food Mach. & Chem. Corp., 382 U.S. 172 (U.S. 1965) (fraudulently procured patents can give rise to Sherman Act liability)
- Atlantic Richfield Co. v. USA Petroleum Co., 495 U.S. 328 (U.S. 1990) (antitrust injury must stem from competition‑reducing aspect of defendant’s conduct)
- Brunswick Corp. v. Pueblo Bowl‑O‑Mat, Inc., 429 U.S. 477 (U.S. 1977) (limitations on recoverable antitrust damages and relation to antitrust injury)
- Kearney & Trecker Corp. v. Cincinnati Milacron Inc., 562 F.2d 365 (6th Cir. 1977) (attorney fees defending infringement suit can be §4 antitrust damages when litigation furthers an anticompetitive scheme)
- Fleming v. Escort, Inc., 774 F.3d 1371 (Fed. Cir. 2014) (rule‑of‑reason approach to corroboration of oral inventor testimony)