Abbvie Inc. et al. v. Mathilda and Terence Kennedy Institute of Rheumatology Trust

Case Number: 1:11-cv-02541-PAC

In a matter related to Case no. 1:13–cv-01358–PAC, Abbvie requested attorney and expert fees following the court’s determination that U.S. Patent No. 7,846,442 (“Methods of treating rheumatoid arthritis with an anti-TNF-alpha antibodies and methotrexate”) was invalid for obviousness-type double patenting. Abbvie argued, and the court agreed, that one of defendant Kennedy’s arguments to the court contradicted what it told the USPTO, and that another argument was “dubious given [Kennedy’s] prior representations.” Nevertheless, Judge Crotty concluded that Kennedy’s factual and legal contentions were not frivolous or made in bad faith, and did not meet the Octane Fitness standard for an exceptional case. He noted that Kennedy was the patentee and the defendant, and so could “reasonably pursue various legal theories in defense of its presumptively valid patent.”

Abbvie also asked for expert fees, but the court said that to justify an award of expert fees, the case must go sufficiently beyond exceptional within the meaning of § 285. As the case was not exceptional, no expert fees were awarded.