See No Evil, Speak No Evil

Speak No EvilIn this case, MarcTec comes out as the biggest loser for arguing that what it said before wasn’t really what it meant. Also, this case shows that the “Hey, look over here!” approach is not a successful litigation distraction tactic. In fact, both of these moves ended up costing MarcTec not only its own costs, but Cordis’ as well. Read on to get the juicy background in this case.

MarcTec, LLC v. Johnson & Johnson and Cordis Corp., No. 2010-1285 (Fed. Cir. Jan. 3, 2012) (Judges Newman, Prost, and O’Malley)

How We Got Here

MarcTec sued Cordis for infringing two patents. The patents cover a surgical implant on which heat is used to bond an antibiotic-containing polymer to the implant. Cordis manufactures and sells a stent known as the Cypher stent. Cordis’ product sprays an antibiotic-containing polymer onto the stent, and the polymer bonds at room temperature.

While prosecuting its patents, MarcTec overcame rejections by the examiner by: (1) highlighting the fact that its invention used a material that required heat, and (2) distinguishing its invention, which it described as “an assembly for use in surgical applications in humans,” from a piece of prior art that disclosed “intraluminal graft,” i.e., stents.

Based on the specification and the prosecution history, the district court said that the term “bonded” in MarcTec’s claims means “bonded by the application of heat.” The district court also concluded that MarcTec had given up stents during prosecution in order to get its patents allowed. Cordis, however, makes a stent—not a surgical device—and the coating on its stent bonds at room temperature. Given these differences, Cordis asked for a judgment that its product does not infringe.

MarcTec responded by presenting expert testimony that Cordis’ process does involve heat for bonding because, if one sprayed the coating on at nearly the speed of sound, the temperature would increase and generate heat energy used in bonding. The district court was beyond unimpressed by this argument, called it “neither reliable nor relevant,” and excluded it because it didn’t meet the standards of admissible evidence.

The district court ruled that the doctrine of prosecution history estoppel blocked MarcTec from arguing that it had rights to non-heat-based bonding. It granted Cordis’ motion for summary judgment of noninfringement, but it didn’t address the stent question. The Federal Circuit agreed with the district court’s conclusion. This brings us to the current case.

The Request for Attorney and Expert Fees

After the Federal Circuit’s opinion on the merits were issued, Cordis asked the district court to order MarcTec to pay its (Cordis’) attorney and expert fees. In the U.S., courts don’t often make the loser pay; the winning party must cross a pretty high threshold to show that it’s entitled to a fee award. Cordis had to show that this is an “exceptional case” under 35 U.S.C. § 285, which means the losing party engaged in behavior like “willful infringement, fraud or inequitable conduct in procuring a patent, misconduct during litigation, [or] vexatious or unjustified litigation.” If there’s no litigation misconduct, attorney fees are also justified when a case is “(1) brought in subjective bad faith; and (2) objectively baseless.”

Cordis argued that MarcTec had committed a lot of litigation no-no’s, including mischaracterizing the district court’s claim construction, as well as claim construction law to avoid evidence it didn’t like, and offering “junk science” as evidence. Cordis also said that MarcTec acted in bad faith when it continued to advance the litigation even after it had evidence that Cordis’s process is different from the subject matter covered by MarcTec’s patents. The district court agreed with Cordis on both points and granted Cordis’ motion.

The Federal Circuit agreed as well. The court said that MarcTec’s positions during prosecution clearly didn’t line up with its positions during the litigation. For example, MarcTec disclaimed stents to get its patents, and then, in litigation, it tried to argue that it disclaimed only an “intraluminal graft” and not a stent. (They’re the same thing.) Also, MarcTec tried to argue that the court should only look at the claims to determine the meaning of the term “bonding,” even though case law is clear that the court should also consider the specification and prosecution history—which happen to be inconsistent with MarcTec’s proposed claim construction. Finally, on appeal, MarcTec tried to argue that the district court didn’t actually conclude that MarcTec had engaged in litigation misconduct. The district court’s opinion, though, specifically used the phrase “litigation misconduct.”

As a final point, MarcTec argued the district court shouldn’t have awarded expert witness fees because the attorney fee award under § 285 was enough of a remedy for MarcTec’s misconduct. Cordis said that the money it had to spend rebutting MarcTec’s “junk science” testimony went above and beyond attorney fees. The Federal Circuit sided with Cordis and affirmed the district court’s expert fee award.

All in all, MarcTec ended up with over $4.6 million in extra fees for talking out of both side of its mouth.

Read the entire MarcTec opinion, if you like.

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