The U.S. Supreme Court’s recent ruling in Octane Fitness v. Icon Health and Fitness is widely expected to make it easier to put losing patent plaintiffs on the hook for attorney fees. But easier doesn’t mean easy, as Judge William Bryson of the U.S. Court of Appeals for the Federal Circuit made clear on Monday in an IP fight unfolding in East Texas.
Bryson, sitting by designation in U.S. district court in Marshall, reaffirmed a prior ruling that Globus Medical Inc. isn’t entitled to recover attorney fees it shelled out successfully fighting a disgruntled inventor’s patent claims. Globus’ lawyers at Duane Morris had urged Bryson to reconsider that ruling in light of the Supreme Court’s April 29 decision in Octane. (Hat tip to Texas-based blogger and practitioner Michael Smith.)
The plaintiff, a neurosurgeon named Sabatino Bianco, alleged that he showed Globus his designs for a spacer system that makes spinal surgery safer. According to Bianco, the medical device company stole his ideas and filed for patents based on them. He sued Globus in 2012, alleging trade secrets misappropriation. He also sought a court order that he deserves coinventor status on the Globus patents. Bianco is represented by Steven Zager and Charles “Chad” Everingham IV of Akin Gump Strauss Hauer & Feld. Everingham is a former judge in the Eastern District of Texas.
Bianco had mixed fortunes in the case. In January, a jury awarded him $4.3 million in lost profits, as we reported here. But Bryson ruled for Globus on the correction of inventorship claims, writing in a March 6 order that “the devices disclosed in the Globus patents are significantly different from the device disclosed in Dr. Bianco’s drawings.”
The Duane Morris partners representing Globus, Thomas Sankey and Matthew Taylor, asked for an unspecified amount of attorney fees on April 2. They argued that Globus’ correction of inventorship claims were frivolous, because “aside from his bare testimony, all that Bianco submitted to support his claims of inventorship was a crude sketch he made.”
Bryson rejected the request on April 17. In deciding whether the litigation qualified as an “exceptional” case that might merit an attorney fee award, he looked at whether Bianco’s positions were objectively baseless and brought in subjective bad faith—the so-called Brooks Furniture standard that the Federal Circuit ushered in a decade ago.
The Supreme Court decided Octane less than two weeks later, replacing the Brooks Furniture test with a more defense-friendly standard for deeming cases exceptional and thus subject to fee-shifting. But Bryson dug in his heels in Monday’s order. He wrote that, even under the new standard, Globus “has failed to satisfy its burden” to show that the case was exceptional.