Patent Law

Three Strikes

By Gary Odom and Jordan Kuhn

Bayer Bioscience appealed to the CAFC in a third round of the battle against Monsanto, pleading for the reversal of the district court decision granting attorney fees to Monsanto under 35 U.S.C. § 285, warranted due to Bayer's exceptional inequitable conduct. Not wanting to disappoint, Bayer failed to challenge the district court's discretionary determination to award attorney fees, instead clinging to battles already lost, only to lose again.

Monsanto v. Bayer Bioscience (CAFC 2007-1299)

This was the third round before the CAFC. The four patents originally at issue related to transgenic corn products: 5,254,799; 5,545,565; 5,767,372; & 6,107,546.

Round one: after initially granting "summary judgment to Monsanto, holding that all four patents were unenforceable due to inequitable conduct, that certain patent claims were invalid, and that the '565 patent was not infringed;" Bayer appealed. The CAFC reversed claim construction on a term, vacated, and remanded for trial. Bayer dropped all but the '565 patent.

Round two: asserted claims of the '565 patent were found invalid and non-infringed, and additionally all four patents unenforceable for inequitable conduct. The CAFC affirmed.

In the current appeal, Bayer appeals the final judgment of the district court granting attorney fees to Monsanto under 35 U.S.C. § 285. The district court concluded that attorney fees were warranted because Bayer's inequitable conduct in the prosecution of the four patents made the case exceptional. See 35 U.S.C. § 285 (allowing for award of attorney's fees in "exceptional cases"); Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp., 267 F.3d 1370, 1380 (Fed. Cir. 2001) (holding that a party may prove the existence of an exceptional case by showing inequitable conduct before the PTO).

Attorney fees are only awarded in "exceptional cases" at the discretion of the district court. This discretion may be challenged, but Bayer failed to dispute, instead arguing once again against the finding of inequitable conduct.

Whether a case is exceptional under § 285 is a factual question reviewed for clear error. Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1460 (Fed. Cir. 1998). The district court's decision to award attorney fees after finding a case exceptional is reviewed for abuse of discretion. Id. In the instant case, Bayer does not challenge the discretionary determination to award attorney fees. Rather, Bayer argues only that the district court erred in finding that each of the four patents was procured through inequitable conduct.

The CAFC wouldn't have it.

The law of the case "prevent[s] the relitigation of issues that have been decided" absent narrow exceptional circumstances. Gould, Inc. v. United States, 67 F.3d 925, 930 (Fed. Cir. 1995) (quoting Jamesbury Corp. v. Litton Indus. Prods., Inc., 839 F.2d 1544, 1550 (Fed. Cir. 1998)). Under the law of the case doctrine "a court adheres to a decision in a prior appeal in the same case unless one of three exceptional circumstances exist: (1) the evidence in a subsequent trial is substantially different; (2) controlling authority has since made a contrary decision of the law applicable to the issues; or (3) the earlier ruling was clearly erroneous and would work a manifest injustice." Id.

Bayer already appealed the district court's judgment that all four patents were unenforceable for inequitable conduct in the 2007-1109 appeal, and in the disposition of that appeal this court explicitly affirmed the district court's findings that there was inequitable conduct in the prosecution of each of the four patents. Monsanto III, 514 F.3d at 1241-42,1243 n.18. As none of the exceptions to the law of the case applies, we cannot revisit our prior holding. Bayer has presented no other argument for reversing the district court's grant of attorney's fees. Accordingly, the judgment of the district court is affirmed.

Affirmed.

Full post as published by The Patent Prospector on April 23, 2008 (boomark / email).