Marctec, LLC v. Johnson & Johnson and Cordis Corporation

A litigation position which is unsupported by the intrinsic record, because it ignores both the specification and prosecution history, may be found frivolous and support a finding of vexatious litigation misconduct.

Marctec, LLC (“MarcTec”) appealed from the final judgment of the United States District Court for the Southern District of Illinois declaring this case exceptional under 35 U.S.C. §285 (“§285″) and awarding attorney and expert fees to Cordis Corporation and Johnson & Johnson (collectively “Cordis”). During prosecution of two patents, MarcTec limited claims to “heat bonding” to overcome prior art and achieve patentability. Although MarcTec attempted to minimize the role of the patents’ specifications, the district court construed the term “bonded” to mean “bonded by the application of heat.” Under the doctrine of claim differentiation claims cannot be broadened “beyond their correct scope, determined in light of the specification and the prosecution history and any relevant extrinsic evidence.” Additionally, “a case may be deemed exceptional under §285 where there has been… ‘misconduct during litigation, vexatious or unjustified litigation, conduct that violates Federal Rule of Civil Procedure 11, or like infractions.’” Here, “MarcTec acted in bad faith in filing a baseless infringement action and continuing to pursue it despite no evidence of infringement; and engaged in vexatious and unjustified litigation conduct that unnecessarily prolonged the proceedings and forced Cordis to incur substantial expenses.” The Court of Appeals for the Federal Circuit AFFIRMED the case was exceptional under §285 and the award of attorney fees and expert fees to Cordis in the amount of $4,683,653.03.