Intellectual Property Law

Sue L. Robinson: Fees Motion Incorrect Vehicle for Analyzing Enforceability

By Karen E. Keller, Andrew A. Lundgren et al.

On Friday, District Judge Sue L. Robinson resolved an atypical motion for attorney fees. By its motion, a prevailing defendant sought reimbursement on the ground that plaintiff alleged inequitable conduct rendered the subsequent litigation frivolous. The catch? The Court never actually ruled on the unenforceability issue:

"Given the fact that plaintiff's claims of infringement asserted against defendants have been dismissed with prejudice, defendants are asking me to make a substantive determination as to the validity of a patent, under the guise of a motion for attorney fees, when a court would not otherwise have jurisdiction to do so. I decline to undertake such an analysis."

Novo Nordisk A/S v. Sanofi-Aventis, C.A. No. 05-645-SLR (D. Del. Sept. 26, 2008) (Robinson, J.).

Full post as published by Delaware IP Law Blog on September 30, 2008 (boomark / email).