Opinion
95 Civ. 8833 (RPP)
January 25, 2002
Thomas H. Beck, Esq., Fitzpatrick, Cella, Harper Scinto, New York, NY., for Plaintiff.
Philip E. Roux, Esq., Clifford Chance Rogers Wells LLP, New York, NY., for Defendants.
OPINION AND ORDER
Having reviewed the letter from attorneys for Bristol-Myers Squibb Company ("Bristol") dated January 17, 2002 and the letter from attorneys for Rhône-Poulenc Rorer, Inc., Centre National De La Recherche Scientifique, and Rhône-Poulenc Rorer, S.A. (collectively "RPR") dated January 24, 2002, the Court, being fully familiar with the facts and circumstances of this case, finds that this case is "exceptional" within the meaning of 35 U.S.C. § 285. In Superior Fireplace Co. v. Majestic Prod. Co., 270 F.3d 1358 (Fed. Cir. 2001), relied on by RPR, the Court remanded the case to the District Court for findings on the exceptional case issue because it had failed to make such findings although there was indicia of the patent holders' lack of good faith. It was not a case, such as this case, in which the district court had already found intentional inequitable conduct rendering the patent unenforceable. Indeed the Federal Circuit in Superior Fireplace, 270 F.3d at 1377-78, cited with approval Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1481-82 (Fed. Cir. 1998) ("[f]indings of exceptional case have been based on a variety of factors; for example, willful or intentional infringement, inequitable conduct . . ., vexatious or unjustified litigation, or other misfeasant behavior"); Cambridge Prods., Ltd. v. Penn Nutrients, Inc., 962 F.2d 1048, 1050-51 (Fed. Cir. 1992) ("In the case of awards to prevailing accused infringers . . . `exceptional cases' are normally those of bad faith litigation or those involving fraud or inequitable conduct by the patentee in procuring the patent"). These holdings are consistent with Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp., 267 F.3d 1370, 1380 (Fed. Cir. 2001), A.B. Chance Co. v. RTE Corp., 854 F.2d 1307, 1312 (Fed. Cir. 1988), and Korody-Colyer Corp. v. General Motors Corp., 780 F.2d 1293, 1294-95 (Fed. Cir. 1985), cited by Bristol in its letter of January 17, 2002.
The cases cited by RPR as raising an issue as to whether this case is exceptional are not on point. In Gardco Manufacturing, Inc. v. Herst Lighting Co., 820 F.2d 1209, 1215 (Fed Cir. 1987), the district court had refused to award attorney's fees because it had found that "Gardco had failed to establish that Peerless acted in bad faith or intentionally misled the PTO." That case is markedly different from this case where intentional inequitable conduct by RPR was found. In Rohm Haas Co. v. Crystal Chem. Co., 736 F.2d 688, 693-94 (Fed. Cir. 1984), the Federal Circuit's decision that attorney's fees were not appropriate was based on the fact that its holding with regard to inequitable conduct had broken new ground on the subject of fraud on the Patent and Trademark Office ("PTO") and it would not be unfair to require Crystal Chem. Co. to bear its own legal fees for Robin Haas' failure to comply with a new standard. This case does not require the breaking of new legal ground, but rather is grounded on propositions firmly entrenched in the law. InMolins PLC v. Textron, Inc., 48 F.3d 1172, 1186-87 (Fed. Cir. 1995), certain of the district court's findings of inequitable conduct before the PTO as to one party were reversed by the Federal Circuit. Accordingly, the Federal Circuit remanded the case to the district court for reconsideration of its findings that the case was exceptional and that attorney fees should be awarded. This case does not involve such a situation.
The cases cited by RPR do not raise an issue as to whether this case is exceptional within the meaning of 35 U.S.C. § 285. Accordingly, RPR has not shown that additional briefing by the parties is necessary. Based on the facts set forth in its opinion of January 15, 2002 finding intentional inequitable conduct by RPR before the PTO and the conduct of this litigation with which the Court is very familiar, the Court finds that this case is an exceptional case for which Bristol is entitled to attorneys fees. The proposed judgment enclosed with Bristol's letter of January 17, 2002 is found to be satisfactory to the Court and will be signed today. Pursuant to Rule 54(d)(2)(B) the motion for attorneys fees must be filed within 14 days of the entry of judgment.
IT IS SO ORDERED.