Federal Circuit Declines to Award Attorney Fees in Inventorship Dispute

Federal CircuitUniv. of Utah v. Max-Planck-Gesellschaft Zur Foerderung der Wissenschaften e.V., (Fed. Cir. Mar. 23, 2017) (Before O’Malley, Reyna, and Wallach, J.) (Opinion for the court, Reyna, J.)

At issue is whether the district court abused its discretion in declining to award attorney fees to Max Planck. The case involved an inventorship dispute over the “Tuschl II patents,” for certain RNAi discoveries, and owned by Max Planck. March 2000, the Max Planck inventors published an article describing certain RNAi discoveries. A month later, Dr. Bass of the University of Utah published a review article discussing the Max Planck article and offering some hypotheses regarding RNAi. The Tuschl II patents were filed on subject matter that was influenced by testing Dr. Bass’ hypotheses. The University of Utah sued Max Planck, alleging that Dr. Bass is either a sole or joint inventor of the Tuschl II patents.

Dr. Bass made several admissions during a deposition that undermined the University’s allegation that she is the sole inventor, and the University withdrew those claims. Left only with joint inventorship, the district court granted Max Planck’s motions for summary judgment. The court held that mere existence of an article in the public domain that influences an inventor’s work is insufficient to establish collaborations.  Co-inventors must actually collaborate with each other, which required greater interaction than reliance on the Bass article by the Max Planck inventors. Max Planck sought attorney fees alleging, inter alia, that the University knew its claims were meritless.

The district court found the case was not objectively unreasonable, was not an “exceptional case,” and denied the motion for fees. According to the district court, the University’s claims were predicated on valid interpretations of the law and were not objectively unreasonable such that this case could be differentiated from most patent cases.

The Federal Circuit affirmed. On appeal, Max Planck argued that the district court erred in failing to follow the “framework” established by Octane Fitness, LLC v. Icon Health & Fitness, Inc. Specifically, it failed to consider the substantive weakness of the University’s case. It did not address the factors discussed in Octane Fitness, such as bad faith, objective unreasonableness, frivolousness, motivation. The Court disagreed. Octane Fitness provides guidelines for assessing an “exceptional case,” that stands out from others with respect to the substantive strength of a party’s litigating position. The district court was not constrained to this analytical framework and its explanation was sufficient as grounds for concluding that the University’s case was not “exceptional.” The district court was in the best position to understand and weigh the issues, and was not obligated to reveal an exhaustive assessment of its conclusion.

The Court will not second-guess a district court’s finding that a case was not “exceptional” so long as the Court reasonably explained why the case does not stand out from other patent cases. A district court is not constrained to a specific or formulaic approach proposed in cases like Octane Fitness.



The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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