Last Month at the Federal Circuit - February 2012


In this issue: Claim Construction Not Based on the Intrinsic Record and Pursuit of Baseless Infringement Action Result in a $5 Million Fee Award; Market Need Properly Linked to the Invention Can Be Probative of Long-Felt Need and Supportive of Nonobviousness; The Existence of a Case or Controversy in a Patent Suit Must Be Evaluated on a Claim-by-Claim Basis; Lack of Assignment Provision in a Consulting Agreement Leads to Loss of Patent Rights; Scientist Who Contributed to the Method of Making a Novel Compound Is a Joint Inventor of a Claim Covering That Compound; Statements During Reexamination Can Be Considered During Claim Construction; and Means-Plus-Function Claims Found Not Indefinite After Waiver of Argument in District Court.

In MarcTec, LLC v. Johnson & Johnson, No. 10-1285 (Fed. Cir. Jan. 3, 2012), the Federal Circuit affirmed the district court’s exceptional case finding under 35 U.S.C. § 285 and held that the district court did not abuse its discretion in awarding attorney and expert witness fees of nearly $5 million under its inherent authority. The Federal Circuit agreed that MarcTec, LLC (“MarcTec”) (1) acted in bad faith in filing a baseless infringement action and continuing to pursue it despite no evidence of infringement; and (2) engaged in vexatious and unjustified litigation conduct that unnecessarily prolonged the proceedings and forced Cordis Corporation and Johnson & Johnson (collectively “Cordis”) to incur substantial expenses. The Court also found that the circumstances justified the district court’s grant of expert witness fees because “(1) Cordis was forced to incur expert witness expenses to rebut MarcTec’s unreliable and irrelevant expert testimony which was excluded under Daubert; and (2) the amount Cordis was required to expend on experts was not compensable under § 285.” Slip op. at 24-25. See this month’s edition of Last Month at the Federal Circuit for a full summary of this decision.

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