By Dennis Crouch
MarcTec LLC v. Johnson & Johnson and Cordis Corp. (Fed. Cir. 2012) (O’Malley, J.) on appeal from the Southern District of Illinois
In this decision, the appellate panel (Judges Newman, Prost, and O’Malley) focused on the question of whether the district court properly found the case “exceptional” leading to the award of attorney fees and expenses of over $4 million. Its answer – Yes.
The patents in suit are directed to various surgical implants heat-bonded to antibiotic-containing polymer material. The district court construed the term “bonded” in a way that excluded the accused Cordis devices and thus resulted in a summary judgment of non-infringement. That decision was affirmed on appeal in 2010.
On remand, the district court determined that the case was “exceptional” because the patentee MarcTec’s attorneys had “engaged in litigation misconduct.” The particular misconduct was that MarcTec alleged theories of claim construction and infringement that were clearly incorrect.
MarcTec engaged in litigation misconduct when it: (1) misrepresented both the law of claim construction and the constructions ultimately adopted by the court; and (2) introduced and relied on expert testimony that failed to meet even minimal standards of reliability, thereby prolonging the litigation and the expenses attendant thereto.
Regarding its claim construction argument, the court found that MarcTec had improperly argued for a plain meaning interpretation of the term “bonded” despite clear language in the specification and prosecution history that contradicted the plain meaning being advanced. In the process, MarcTec misrepresented the law on claim construction and encouraged the court to ignore the specification unless it found an insoluble “ambiguity” in the claim language. This mischaracterization of the law coupled with its unsupported allegations of infringement was sufficient to support the conclusion of litigation misconduct.