Synthon IP v. Pfizer, No. 05-1267 (E.D. Va. 2007)
Last month the Federal Circuit invalidated three key claims of Pfizer's Norvasc patent and currently a district court in Washington, D.C. is deciding whether to allow a flood of Norvasc generics on the market. But the news for Pfizer hasn't been all bad lately. Though it might be small consolation, a district court in Virginia recently awarded Pfizer $3.2 million in attorney's fees and costs in a case in which Synthon (who is also one of the Norvasc generic applicants) accused Pfizer of infringing its patent on a process for making amlodipine, the active ingredient in Norvasc.
As we previously reported, last August a jury in the Eastern District of Virginia found that Pfizer did not infringe Synthon's amlodipine process patent (U.S. Patent No. 6,653,481). As we also reported, in February Judge T.S. Ellis, III (of the same court) found the '481 patent unenforceable due to inequitable conduct. Pfizer subsequently filed a motion for attorney's fees and costs pursuant to 35 USC 285. On April 16, Judge Ellis granted Pfizer's motion.
Under 35 USC 285, courts hearing patent disputes "in exceptional cases may award attorney's fees to the prevailing party." The prevailing party must prove the exceptional nature of the case by clear and convincing evidence. Even if that burden is met, the district court has discretion to determine whether an award of attorney's fees is appropriate in the circumstances.
In a nine-page Order, Judge Ellis explained that "the Federal Circuit has recognized many types of misconduct that may create an exceptional case for purposes of awarding fees, including inequitable conduct before the PTO, litigation misconduct such as vexatious or unjustified litigation or frivolous filings, and willful infringement." According to Judge Ellis, "[t]hese principles, applied here, compel the conclusion that this case is appropriately deemed 'exceptional' in light of Synthon's inequitable conduct before the Patent and Trademark Office." He continued:
And significantly, while Synthon's inequitable conduct before the PTO is alone sufficiently compelling to render this case exceptional, it should also be noted that Synthon's litigation strategy and conduct in the course of these proceedings further supports an exceptional case finding. Indeed, a review of the record as a whole makes clear that Synthon copied and sought patents on what it knew to be Pfizer's work and then, once those patents had issued, filed against Pfizer what it knew, or should have known with reasonable investigation, was a baseless suit for willful infringement of two invalid patents.
Although Judge Ellis granted Pfizer's motion, he didn't give Pfizer everything it asked for. He reduced Pfizer's request for fees and nontaxable costs and expenses by 20% due to what he called "unnecessary work and excessiveness." He also refused Pfizer's request for reimbursement of $345,000 in expert witness fees, as well as Pfizer's request for pre-judgment interest.