Losing patent owner hit with $4.7M fee award for bringing, persisting in frivolous claim

This case will go into a lot of brief banks — and will probably be cited by companies telling patent trolls to get lost.

MarcTec LLC sued Johnson & Johnson and its Cordis subsidiary. The lawsuit alleged that a coronary-artery stent manufactured by Cordis infringed two patents owned by MarcTec.

There was just one minor problem: When the inventor was negotiating with the patent examiner to have the patent application “allowed,” the inventor had (metaphorically) drawn a line in the sand as to what did or did not constitute infringement. The Cordis stent was clearly on the non-infringing side of the line.

That seems not to have deterred MarcTec: Its counsel put an expert witness on the stand to “explain” why the Cordis stent really did infringe after all. The trial judge didn’t buy the “explanation,” which seems to have struck him as a mix of speculation and wishful thinking.

The trial judge held that MarcTec had brought a frivolous claim, based on a manifestly-unreasonable assertion of infringement, and continued to pursue the claim in bad faith even after it should have been clear that the claim was meritless. The trial judge declared the case “exceptional” and awarded the defendants some $4.7 million in attorneys’ fees and expenses. The appeals court affirmed. MarcTec LLC v. Johnson & Johnson, No. 2010-1285 (Fed. Cir. Jan. 3, 2012).