Federal Circuit Upholds Northern District's Attorney's Fees Award

Posted on July 1, 2008 by R. David Donoghue

Nilssen v. Osram Sylvania, Inc., No. 2007-1998, -1348 Slip. Op. (Fed. Cir. June 17, 2008).

The Federal Circuit affirmed Judge Darrah's award of defendant's/appellee's attorney's fees – click here to read the Blog's post about the inequitable conduct opinion. Judge Darrah previously held and the Federal Circuit previously affirmed that plaintiffs committed inequitable conduct by, among other things: (1) falsely claiming small entity status; (2) failing to disclose material prior art to the PTO; and (3) failing to disclose related litigation to the PTO. Judge Darrah then held that the case was exceptional based upon plaintiff's inequitable conduct, filing of a frivolous suit, and litigation misconduct. Because the case was exceptional, Judge Darrah awarded defendants their attorney's fees.

The Federal Circuit agreed with plaintiffs, holding that an inequitable conduct finding did not require a case be deemed exceptional. But the Court held that Judge Darrah's findings were supported by evidence and, therefore, were within his discretion.

Judge Newman dissented, stating:

The court today promotes unexceptional trial procedures and non-culpable prosecution errors into an "exceptional case" of such severity as to warrant the award of attorney fees. That is not what the status, or precedent, or policy contemplates. I respectfully dissent.

 

Check the following blogs for more on this opinion:

Tags: , , , , , , ,

Inequitable Conduct, Frivolous Claims and Litigation Misconduct Make a Case Exceptional

Posted on February 9, 2007 by R. David Donoghue

Judge Darrah, after finding each of the eleven patents-in-suit unenforceable for inequitable conduct, held that the suit was exceptional based upon the inequitable conduct, the filing of several frivolous claims which were previously dismissed and misconduct at trial, providing the Court the discretion to award attorney's fees.  The court also did a detailed analysis of defendants' Bill of Costs and awarded defendants some or all of their requested costs for service of process, court reporters, witnesses and experts, among others.  Of note, the Court held that expert fees, including the expert's hourly rates, were recoverable for time spent on expert reports, deposition and related preparation, and other time spent in responding to discovery, but not for time spent attending other expert depositions in the case.

Tags: , , , , , ,

31 Flavors of Inequitable Conduct Before the PTO

Posted on July 18, 2006 by R. David Donoghue

Nilssen v. Osram Sylvania, Inc., __ F. Supp.2d __, 2006 WL 1891807, (N.D. Ill. July 5, 2006) (Darrah, J.).

After a six-day inequitable conduct bench trial, Judge Darrah held each of the eleven patents-in-suit unenforceable based upon the pro se plaintiff/inventor’s inequitable conduct before the Patent & Trademark Office (“PTO”). Plaintiff’s inequitable conduct included: submitting misleading affidavits to the PTO; improperly claiming small entity status; falsely claiming priority dates to avoid prior art; failing to disclose related litigation during prosecution; and failing to disclose material prior art to the PTO during prosecution. The Court, however, refused to hold that all patents related to the patents-in-suit were unenforceable under the unclean hands doctrine.

This opinion provides a detailed primer on the many types of misconduct that an applicant may commit before the PTO.  It also serves as a cautionary tale for inventors considering prosecuting patent applications pro se.

Tags: , , , ,