Law Students

Medtronic Navigation, Inc. v. Brainlab Medizinische Computersysteme GMBH

By atharkhan

Opinion: www.cafc.uscourts.gov/opinions/09-1058.pdf

Notes:

• Awards of attorney fees under 35 U.S.C. 285 are reviewed under a highly deferential standard. (Factual findings in section 285 determination are reviewed for clear error; legal conclusions are reviewed without deference; determination of whether and in what amount to award fees is reviewed for abuse of discretion.)
• Enforcement of patent rights that are reasonably believed to be infringed does not entail special penalty when the patentee is unsuccessful.
• There is a presumption that an assertion of infringement of a duly granted patent is made in good faith. Clear and convincing evidence is required to overcome that presumption and show that the patentee?s infringement claims were vexatious, unjustified, or frivolous, and were pursued in bad faith.
• Absent misrepresentation to the court, a party is entitled to rely on a court?s denial of summary judgment and JMOL, as well as the jury?s favorable verdict, as an indication that the party?s claims were objectively reasonable and suitable for resolution at trial.
• An attorney is ethically bound to make reasonable arguments on behalf of his client, even if the attorney disagrees with them. (A lawyer should not be sanctioned for failing to abandon his client?s case at the drop of a summary judgment motion, unless there is no colorable defense to the motion that can be advocated and no possible merit to any argument that can be advanced.)
• A court may assess attorney fees when a party has acted in bad faith, vexatiously, wantonly, or for oppressive reasons. In the same vein, we have required a finding of fraud or abuse of the judicial process before a trial court can invoke its inherent sanctioning power, and we have stated that a case must be sufficiently beyond “exceptional” within the meaning of section 285 to justify . . . a sanction under the court?s inherent power.
• The threshold of bad faith conduct for purposes of sanctions under the court?s inherent powers is at least as high as the threshold of bad faith conduct for sanctions under § 1927. So sanctions that are impermissible under § 1927 are also impermissible under a district court?s inherent powers.
• The inherent authority of federal courts to punish misconduct before them is not a grant of authority to do good, rectify shortcomings of the common law . . . or undermine the American rule on the award of attorneys? fees to the prevailing party. It is a residual authority, to be exercised sparingly.
• Inherent power should be reserved for those cases in which the conduct of a party or an attorney is egregious and no other basis for sanctions exists.
• Inherent power to award fees should be used sparingly and reserved for egregious circumstances.

Full post as published by Atharkhan on April 26, 2010 (boomark / email).