THERASENSE, INC. (now known as Abbott Diabetes Care, Inc.) AND ABBOTT LABORATORIES, Plaintiffs-Appellees,
BECTON, DICKINSON AND COMPANY AND NOVA BIOMEDICAL CORPORATION, Defendants-Appellants, AND BAYER HEALTHCARE LLC, Defendant
Appeal from the United States District Court for the Northern District of California in Nos. 04-CV-2123, 04-CV-3327, 04-CV-3732 and 05-CV-3117, Judge William H. Alsup.
CLARA J. SHIN, Covington & Burling, LLP, of San Francisco, California, argued for plaintiffs-appellees. With her on the brief was PHILIP A. SCARBOROUGH.
BRADFORD J. BADKE, Ropes & Gray, LLP, of New York, New York, argued for defendants-appellants Becton, Dickinson and Company, et al. With him on the brief was SONA DE.
Before RADER, Chief Judge, NEWMAN, and DYK, Circuit Judges. OPINION filed by Chief Judge RADER. Dissenting-in-part opinion filed by Circuit Judge DYK.
Rader, Chief Judge.
Becton, Dickinson and Company (Becton) and Nova Biomedical Corporation (Nova) appeal the denial of various fees sought based on an eight-year long patent infringement suit in the United States District Court for the Northern District of California involving patents owned by Therasense, Inc. (now known as Abbott
Diabetes Care, Inc.)
and Abbott Laboratories (collectively, Abbott). Because this court agrees with the district court that Becton and Nova are not entitled to fees on fees, pre-judgment interest, and post-judgment fees calculated specifically from the date the district court deemed the case exceptional, this court affirms.
In March 2004, Becton sued Abbott in the United States District Court for the District of Massachusetts seeking a declaratory judgment of non-infringement of U.S. Patent Nos. 6,143,164 ('164 patent) and 6,592,745 ('745 patent). The product at issue was Becton's blood glucose test strip, called the BD Test Strip. In response, Abbott sued Becton for patent infringement in the Northern District of California alleging that Becton's BD Test Strip infringed the '164 patent, the '745 patent, as well as U.S. Patent No. 5,820,551 ('551 patent). The district court in Massachusetts transferred its case to the Northern District of California. Abbott then sued Nova, Becton's supplier, alleging infringement of the same patents. In August 2005, Abbott sued Bayer Healthcare LLC (Bayer), alleging that Bayer's Microfill and Autodisc blood glucose strips infringed the '551 and '745 patents. The Northern District of California consolidated all of the cases.
The district court granted summary judgment of non-infringement for all defendants with respect to all asserted claims of the '164 and '745 patents. Therasense, Inc. v. Becton, Dickinson & Co., 560 F.Supp.2d 835, 854, 880 (N.D. Cal. 2008). The district court also found nearly all of the asserted claims of the '745 patent to be invalid due to anticipation. Id. Following a bench trial, the district court determined that claims 1-4 of the '551 patent were invalid due to obviousness. Therasense, Inc. v. Becton, Dickinson & Co., 565 F.Supp.2d 1088, 1127 (N.D. Cal. 2008), vacated in part, 649 F.3d 1276, 1296 (Fed. Cir. 2011) (en banc). The district court also held the '551 patent unenforceable for inequitable conduct. Id. On August 21, 2008, the district court found the case concerning the '551 patent to be exceptional and awarded Becton and Nova costs and fees under 35 U.S.C. § 285. On March 19, 2009, the district court determined that Abbott owed Becton and Nova $5,949,050 in attorney's fees with payment specifically due " following the exhaustion of all appeals... regarding the validity and unenforceability of the '551 patent, if the Court's inequitable conduct judgment is upheld on appeal." J.A. 14578.
Abbott appealed the district court's judgments of invalidity, unenforceability, and non-infringement. Abbott did not appeal the August 21, 2008 exceptional case finding or the March 19, 2009 fee award. On appeal, a panel of this court unanimously upheld the judgments of non-infringement and invalidity. Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1289, 1311 (Fed. Cir. 2010), vacated, 374 Fed. App'x. 35 (Fed. Cir. 2010). On the issue of unenforceability, a divided panel affirmed. Id. at 1312-25 (Linn, J., dissenting). Abbott then petitioned for rehearing en banc, which was granted. Therasense, 374 Fed. App'x. at 35.
Sitting en banc, this court reinstated, and affirmed, the panel decision regarding the district court's judgment of obviousness, non-infringement, and anticipation. Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1297 (Fed. Cir. 2011) (en banc). However, after altering the standard for inequitable conduct, the en banc court vacated the ...