# United States **Court of Appeals**  **for the Federal Circuit**

______________________ THERASENSE, INC. ( now known as Abbott Diab etes Care, Inc. ) AND ABBOTT LABORATORIES, Plaintiffs

- Appellees,

v.
BECTON, DICKINSON AND COMPANY AND NOVA BIOMEDICAL CORP ORATION, Defendants

- Appellants,

AND

BAYER HEALTHCARE LLC , Defendant.

______________________
2012

- 1504

______________________ Appeal from the United States District Court for the Northern Dist rict of California in No s

. 04

- CV

- 2123, 04

- CV

- 3327, 04

- CV

- 3732 and 05

- CV

- 3117, Judge William H. Alsup.

______________________
Decided: March 12, 2014

______________________
C LARA J. S HIN , Covington & Burling, LLP, of San Francisco, California, argued for plaintiffs

- appellees. With her on the brief was P HILIP A. S CARBOROUGH

.THERASENSE , INC

. v. BECTON , DICKINSON AND COMPAN Y 2

B RADFORD J. B ADKE , Ropes & Gray, LLP, of New York, New York, argued for defendants

- appellants Be cton, Dickinson and Company, et al. With him on the brief

was S ONA D E

.

______________________
Before R ADER , Chief Judge, N EWMAN , and D YK , Circuit Judges. Opinion for the court filed by Chief Judge R ADER

. Dissenting

- in

- part opinion filed by Circuit Judge D YK

. R ADER , Chief Judge

. Bect on, Dickinson and Company (Becton) and Nova Biomedical Corporation (Nova) appeal the denial of var ious fees sought based on an eight

- year long patent i nfringement suit in the United States District Court for the Northern District of California involving patents owned by Therasense, Inc. (now known as Abbott Diabetes Care, Inc.) and Abbott Laboratories (collectively
, Abbott)

. Because this court agree s with the district court that Becton and Nova are not entitled to fees on fees, pre

- judgment inte rest, and pos t- judgment fees calculated specifically from the date the district court deemed the case exceptional
, this court affirm s. I. In March 2004, Becton sued Abbott in the United States District Court for the District of Massachusetts seeking a declaratory judgment of noninfringement of U.S. Patent Nos. 6,143,164 (’164 patent) and 6,592,745 (’745 patent)

. The product at issue was Becton’s blood glucose test strip
, called the BD Test Strip

. In response, Abbott sued Becton for patent infringement i n the Nort hern District of California alleging that Becton’s BD Test Strip infringed the ’164 patent , the ’745 patent , as well as U.S. Patent No. 5,820,551 (’551 patent) . The district court in Massachusetts transferred its case to the NorthernTHERASENSE , INC

. v. BECTON , DICKINSON AND COMPAN Y 3

District of California. Abbott then sued Nova , Becton’s supplier, alleging infringement of the same patents. In August 2005, Abbott sued Bayer Healthcare LL C (Bayer ), alleging that Bayer’s Microfill and Autodisc blood glucose strips infringed the ’551 and ’745 patents . The Northern District of California consolidated all of the cases. The district court granted summary judgment of non

infringement for all defendants with respect to a ll asser ted claims of the ’164 and ’745 patents. Therasense, Inc. v. Becton, Dickinson & Co. , 560 F. Supp. 2d 835, 854, 880 (N.D. Cal. 2008). The district court also found nearly all of the asserted claims of the ’745 patent to be invalid due to anticipation. Id. Following a bench trial, the district court determined that claims 1

– 4 of the ’ 551 patent were inv alid due to obviousness. Therasense, Inc. v. Becton, Dicki nson & Co. , 565 F. Supp. 2d 1088, 1127 (N.D. Cal. 2008), vacated in part , 649 F.3d 1276, 1296 (Fed. Cir. 2011) (en banc)

. T he district court also held the ’551 patent une nforceabl e for inequitable conduct. Id. On August 21, 2008, the district court found the case concerning the ’551 patent to be exceptional and awarded Becton and Nova costs and fees under 35 U.S.C. § 285

. O n March 19, 2009, the district court determined that Abbott owed Becton and Nova $5,949,050 in attorney’s fees with payment specifically due “following the exhaustion of all appeals . . . regarding the validity and unenforceability of the ’551 patent, if the Court’s inequitable conduct judgment is upheld on appeal

. ” J.A. 14578. Abbott appealed th e district court’s judgments of inv alidity, unen forceability, and nonin fringement. Abbott did not appeal the August 21, 2008 exceptional case finding or the March 19, 2009 fee award. On appeal, a panel of this court unanimously u pheld the judg ments of noninfring ement and invalidity

. Therasense, Inc. v. Becton, Dickinson & Co. , 593 F.3d 1289, 1311 (Fed. Cir. 2010), vacated , 374 Fed. App ’ x. 35 (Fed. Cir. 2010). On the issue of unenforc eability, a divided panel affirmed. Id. at 1312

- 25 (Linn, J.,THERASENSE , INC

. v. BECTON , DICKINSON AND COMPAN Y 4

dissenting). Abbott then petitioned for rehearing en banc
, which was granted

. Therasense , 374 Fed. App ’ x. at 35. Sitting en banc, th is court reinstated, and affirmed, the panel decision regarding the district court’s judgment of obviousness, noninfringe ment, and anticipation

. Th erasense, Inc. v. Becton, Dickinson & Co. , 649 F.3d 1276, 1297 (Fed. Cir. 2011) (en banc). However, after altering the standard for inequitable conduct, the en banc court

v acated the district court’s inequitable conduct judgment and remanded for further proceedings. Id . at 12 85

. Applying the new standard o n remand
, the district court concluded anew that the ’551 patent was procured through inequitable conduct

. Therasense v. Becton, Dic kinson and Co. , 864 F. Supp. 2d 856, 858 (N.D. Cal. 2012)

. Becton and Nova then moved to supplement the original fee award with (1) appellate and remand fees and expen ses; (2) fees spent seeking additional fees; (3) pre

- judgment interest on fees ; and (4) post

- judgment interest calculated from the 2.18% rate effective August 21, 2008, i.e., the date the district court found this case to be exceptional. On May 22, 2012, the district court reinstated its March 19, 2009 fee award and added post

- judgm ent interest calculated from May 22, 2012

. The district court denied Becton and Nova’s motion for additional fees and interest in all other respects. J.A. 1.4

– 1.5. On December 3, 2012, Abbott paid Becton and Nova the balance specified in the reinstated March 19, 2009 fee award plus $6,389.12 in post

- judgment interest

. Becton and Nova appeal ed the district court’s denial of additional fees

. This court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

II

. Attorney’ s fees are authorized by statute upon a di strict court’s finding that a case is exceptional

. 35 U.S.C. § 285. A find ing that a case is “exceptional” involvesTHERASENSE , INC

. v. BECTON , DICKINSON AND COMPAN Y 5

underlying factual determinations which are reviewed for clear error

. Wedgetail Ltd. v. Huddleston Deluxe, Inc. , 576 F.3d 1302, 1304 (Fed. Cir. 2009). T his court reviews a district court’s a ward or denial of such fees for an abuse of discretion. Id

. Willfulness and litigation misconduct are among the reasons that a court may find a case to be exceptional. Kilopass Tech., Inc. v. Sidense Corp.
, 738 F.3d 1302
, 1311 (Fed. Cir. 2013) ; MarcTec, LLC v. Joh nson & Johnson , 664 F.3d 907, 916 (Fed. Cir. 2012). This court reviews a district court’s denial of fees on fees for an abuse of discretion. Mathis v. Spears , 857 F.2d 749, 761 (Fed. Cir. 1998 ). T his court reviews de novo a determin ation of post

- judgment interest. Taltech Ltd. v. Esquel Enters. Ltd. , 604 F.3d 1324, 1335 (Fed. Cir. 2010).

II I.
Becton and Nova first contend that they are entitled to itemized appellate and remand fees because the district court’s August 21, 2008 exceptional case finding “perm eated” the appeal and remand phases

. They argue that these additional fees and costs should receive treatment independent of those awarded at the trial phase

. For the appeal and remand phases, Becton and Nova claim fees and costs tota ling $ 70,591 for the appeal, $9 27,093 for rehearing en banc , and $354,213 for remand . Becton and Nova also claim that the cost of pursuing these additional fees before the district court was $17,700
, not including the present appeal

. Thus, Becton and Nova seek at least an additional $1,3 47 ,2 97 , to which they would add $569,861 in post

- judgment interest calculated specifically from August 21, 2008 as well as any pre

- judgment inte rest , yet to be determined

. C ivil litigation often includes numerous phas es. But a
case should be viewed more as a n “ inclusive whole ” rather than as a piecemeal process when analyzing fee

- shifting under § 285

. Comm ’ r, INS v. Jean , 496 U.S. 154, 161

– 62 (1990) (“Any given civil action can ha ve numerous phases.THERASENSE , INC

. v. BECTON , DICKINSON AND COMPAN Y 6

While the parties’ postures on individual matters may be more or less justified . . . fee

- shifting statutes[] favor[] treating a case as an inclusive whole , rather than as atomized line

- items

. ”) . A s this court observed in Rohm & Haas Co. v. Crystal Chem ical Co.
, parties often task the trial court with allocating costs and attorney’ s fees, ho wever, “[n] either § 285 nor its legislative history disti nguishes between awarding attorney fees in the district court and in the appellate court .” 736 F.2d 688, 692 (Fed. Cir. 1984) . Indeed
, § 285 does not bar the trial court from award ing fees for the entire case , including any subs equent appeals

. Jean , 496 U.S. at 160 (“[I] t is appropriate to allow the district court discretion to determine the amount of a fee award, given its ‘ superior understanding of the litigation and the desirability of avoiding frequent appellate review of what essentially are factual matters. ’” ) (quot ing Hensley v. Eckerhart , 461 U.S. 424, 437 (1983) ).
In this case , t he district court’s March 19, 2009 fee o rder expressly contemplated an appeal. Indeed, the district court determined that Abbott owed $5,949,050 “following the exhaustion of all appeals . . . [and only ] if the Court’s inequitable conduct judgment is upheld on appeal .” J.A. 14578. T his court vacated the district court’s inequitable conduct judgment
, thereby vacating the March 19, 2009

o rder by its express terms

. Therasense
, 649 F.3d at 1296

. While the district court still f ound inequitable conduct on remand
, its pre

- existing inequitable conduct ruling was not “ upheld on appeal ” as required by the March 19, 2009 fee order

. As such, t he district court did not err in den ying Becton and Nova’ s motion for additional fees predicated on the vacated determination of inequi table conduct. As an alternative theory, Becton and Nova assert that Abbott’s appeal and petition for rehearing en banc qualify independently as exceptional circumstances

. The law provides for appellate and remand fees where those stages of litigation are deemed independently exceptional within the meaning of § 285

. See Rohm & Haas , 736 F.2dTHERASENSE , INC

. v. BECTON , DICKINSON AND COMPAN Y 7

at 692

– 93 ( interpreting § 285 as applicable only where the appeal itself is exceptional
, and declining to award such fees where the court did not feel that the litigant truly “frustrated presentation of this case” ) ; s ee also Mathis
, 857 F.2d at 752 (finding the appeal itself to be exceptional and observing that the patentee in requesting rehe aring exhibited “ignorance of reality and a persistent penchant for wasting judicial resources”)

. Analogizing Abbott’s conduct to that of the patentee in Mathis
, Becton and Nova characterize Abbott’s continued pursuit of appellate review as a deliberate an d malicious attempt to prolong the litigation and to deceive the di strict court

. In Mathis
, the appeal “lack[ed] even a min imally arguable basis and . . . [wa]s in major part frivolous . . . [because of] record distortions, manufactured facts, and implausible and unsupportable legal arguments.” 857 F.2d at 761. In contrast, Becton and N ova present zero evidence of bad faith

. Expressions of o utrage and susp icion i n the form of attorney argument are not evidence of bad faith . N or does the mere act of pursuing appellate review— available as a matter of right and frequently necessary to preserve fu ture rights of appeal

— by itself suggest an abuse of the legal system

. He re , a dissent and this court’ s later decision to grant Abbott’s petition for rehearing en banc both demonstrate that Abbott’s appeal was not frivolous. Therasense , 593 F.3d at 1311 (Linn, J., dissenting)
, vacated , 374 Fed. App ’ x. 35 (Fed. Cir. 2010)

. Abbott developed its appeal based on the facts and reasonable legal arguments. And Abbott did , in fact, ultimately suc ceed on appeal in vaca ting the underlying judgment of inequitable conduct

. Therasense
, 649 F.3d at 1296. In this regard, § 285 only awards fees to the “ prevailing ” party. 35 U.S.C. § 285 (“ The court in exceptional cases may award reasonable attorney fees to the prevailing party. ”) (emphasis added). Abbott prevailed on appe al with respect to inequitable conduct . Thus, even if the a ppeal itself is deemed exce p-THERASENSE , INC

. v. BECTON , DICKINSON AND COMPAN Y 8

tional , Becton and Nova cannot be deemed the “ prevai ling ” parties

. F or all the foregoing reasons , the district court did not abuse its discretion by declining to award fees for appeal, rehearing, and remand on the basis that Becton and Nova failed to establish that the appeal itself was exceptional.
Becton and Nova also argue that Abbott forced them to incur additional legal expenses on appeal and remand before paying the fees owed through trial. Citing to Mathis
, Becton and Nova claim that Abbott owes fees and
expenses for pursuing these addi tional fees
, and any fees for th e appeal regarding fees

. 857 F.2d at 756 (awarding attorney’ s fees expressly for the preparation of the fee submission). B ut see Jean
, 496 U.S. at 163 (noting that such “ fees for fee litigation should be excluded to the extent that the applicant ultimately fails to prevail in such litiga tion” and that such exceptions to fee litigation

“ theoretically can spawn a ‘Kafkaesque judicial nigh tmare’ of infinite litigation to recover fees for the last round of litigation over fees ”) (citing Hensley , 461 U.S. at 437 (explaining that a request for attor ney ’ s fees should not result in a second major litigation )). Regardless, a district court may exercise broad discr etion in awarding fees and setting the amount s of fees

. See Kilopass
, 738 F.3d at 1312 ; Mathis , 857 F.2d at 754. In this case , the district court specifically declined to find the appeal exceptional within the meaning of § 285 because the app eal itself was not frivolous and Becton and Nova presented no evidence of bad faith. To the contrary, the district court found that “Abbott had a legitimate interest to appeal the six million dollars in attorney’s fees. . . . There was no litigation miscon duct nor any other reason to find that Abbott’s appeal was an exceptional case warranting supplemental fees . . . .” J.A. 1.4. Moreover, the question of whether to award “fees for fees,” be yond the context of § 285
, is not unique to patentTHERASENSE , INC

. v. BECTON , DICKINSON AND COMPAN Y 9

law. It therefo re bears additional considera tion that the Ninth Circuit, in keeping with Jean
, recognizes that fees on fees are deemed “excluda ble ” and that no award of fees is “a utomatic. ” Thompson v. Gomez , 45 F .3d 1365, 1368 (9th Cir. 1995) ( citing Jean
, 496 U.S. at 164 n.10 ). As such, the district court retains substantial discretion in fixing the amount of an y award. Jean , 496 U.S. at 16 3. For all the foregoing reasons, t he district court’ s decision not to award fees on fees to Becton and Nova is affirmed

. Becton and Nova also seek post

- judgment interest ca lculated specifically from August 21, 2008, the date the district court found this case to be exceptional. However, where a previous judgment is vacated, any post

- judgment interest must be determined based on the more recent judgment. Taltech , 604 F.3d at 1334

– 35. The district court therefore did not err in conclud ing that post

- judgment interest should accrue only from the date of its order reinstating the prior fee award of $5,949,050

. Nor did the district court err in denying Becton and Nova pre

judgment interest. Appellants’ remaining arguments have been fully considered but are unpersuasive.
IV. For the foregoing reasons, the district court’s decision to reinstate its award of attorney ’ s fees under § 285 and to deny Becton and Nova’s motion for piecemeal fees beyond the original award amount is affirmed.
AFFIRMED

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ THERASENSE, INC. ( now known as Abbott Diab etes Care, Inc. ) AND ABBOTT LABORATORIES, Plaintiffs

- Appellees,

v.
BECTON, DICKINSON AND COMPANY AND NOVA BIOMEDICAL CORP ORATION, Defendants

- Appellants,

AND

BAYER HEALTHCARE LLC , Defendant.

______________________
2012

- 1504

______________________ Appeal from the United States District Court for the Northern Distri ct of California in No s. 04

- CV

- 2123, 04

- CV

- 3327, 04

- CV

- 3732 and 05

- CV

- 3117, Judge William H. Alsup.

______________________

D YK , Circuit Judge , dissenting in part

. This appeal raises two principal questions: first, whether the district court erred in concluding that an award of appellate attorney’s fees “is only warranted where the appeal itself is an exceptional case,” and se cond, whether the distric t court erred in denying feesTHERASENSE , INC

. v. BECTON , DICKINSON AND COMPAN Y 2

incurred in securing a fee award without explanation

. The majority affirm s the district court on both questions. I respectfully dissent.
I. F EES FOR THE A PPEAL The district court limited its original fee award to fees incurred before the appeal and in that order did not address fees for the appeal. After the appeal and remand, the district court denied appellate fees because it conclu ded the appeal was not exceptional. I recognize that a district court has considerable discretion to reduce a fee award
, see generally Bywaters v. United States , 670 F.3d 1221, 1228

- 32 (Fed. Cir. 20 12), and if I were sitting as a district judge, I too might be reluctant to award fees for our en banc proceeding . But the district court here did not exercise its discretion either in the original order (where the issue was not decided) or in the remand o rder . Rather, the district court concluded in the remand order that it could not award appellate fees unless the appeal was independently exceptional. The majority agrees. This holding, it seems to me, is contrary to Supreme Court precedent, and will potentially cause problems in future

cases. I would reverse and remand for the district court to reconsider the appellate fee requests under the correct legal standard.
The district court concluded that section 285 requires a party seeking fees to establish th at each stage of the litigation for which it requests fees is independently exceptional. With respect to other fee

- shifting statutes
, the Supreme Court has held that all phases of litigation
, including appellate proceedings, are to be treated as a unitary whole, not parsed into discrete parts. Comm’r, INS v. Jean , 496 U.S. 154, 161

– 62 (1990) ( “Any given civil action can have numerous phases. While the parties’ postures on individual matters may be more or less just ified, the [Equal Access to Justice Act, 28 U.S.C. § 2412(d)]

— like other fee

- shifting statutes

— favors trea t-THERASENSE , INC

. v. BECTON , DICKINSON AND COMPAN Y 3

ing a case as an inclusive whole, rather than as atomized line

- items.”). In view of the Court’s admonition that all fee

- shifting statutes should be interpreted in the same
way, Indep. Fed’n of Flight Attendants v. Zipes , 491 U.S. 754, 758 n.2 (1989), and in the absence of any textual support, I see no reason why section 285 should be inte rpreted diff erently. N or has the majority identified any such reason

. Of co urse, for our court to award appellate fees , we must find the appeal itself to be exceptional. S ee Rohm & Haas Co. v. Crystal Chem

. Co. , 736 F.2d 688, 692 (Fed. Cir. 1984). But nothing in Rohm & Haas suggest ed that the trial court must find an appeal excep tional to award appellate fees. In another case , we ordered a district court to award appellate fees where the “totality of proceedings” constituted an exceptional case

. PPG Indus

. , Inc. v. Cel anese Polymer Specialties Co. , 840 F.2d 1565, 1569 (Fed. Cir. 1 988). And Jean , a later case by the Supreme Court, reaffirmed that multi

- stage litigation shoul d be treated as a unitary whole, and that appellate fees should be treated as part of the whole.
T he majority affirms the district court’s denial of fees in part on the basis that Becton Dickinson and Nova were not “prevailing parties ” in the original appeal and en banc proceedings. Majority Op. at 7-8 (internal quotation marks omitted)

. But t he Supreme Court has held that the phrase “prevailing party” appl ies to any party “who has established his entitlement to some relief on the merits of his claims.” Hanrahan v. Hampton , 446 U.S. 754, 756

– 57 (1980); see also Hensley v. Eckerhart , 461 U.S. 424, 433 & n.7 (1983) (“prevailing party” is “a generous formulatio n that brings the plaintiff only across the statutory thres hold”). Becton Dickinson and Nova prevailed on invalidity and noninfringement at both stages of the appeal

. They ultimately prevailed on inequitable conduct as well. B y establishing their entitleme nt to relief on the merits of their claims, Becton Dickinson and Nova were thus “pr e-THERASENSE , INC

. v. BECTON , DICKINSON AND COMPAN Y 4

vailing parties” under the standard set forth by the S upreme Court even if they did not completely prevail at each stage

. II. F EES FOR F EES The majority also upholds the d istrict court’s refusal to allow any fees accrued in the process of securing an award of fees. The Supreme Court in Jean made clear that awards of such fees

- for

- fees should reflect the degree to which the original fee request was successful. See 496 U.S. a t 16 3 n.10 (“[ F] ees for fee litigation should be e xcluded [only] to the extent that the applicant ultimately fails to prevail in such litigation.” (internal quotation marks omitted)). It follows that fees for successful fee petitions should be allowed.
No case of which I am aware has upheld the blanket denial of such fees. Even the Ninth Circuit case on which the majority relies made clear that fees should be allowed for successfully securing fees. Thompson v. Gomez , 45 F.3d 1365, 1368 (9th Cir. 1995) (“Fe es for fee litigation are excludable . . . ‘ to the extent that the applicant ultimately fails to prevail in such litigation.’” (quoting Jean , 496 U.S. at 163 n.10)) . In an earlier opinion, the Ninth Circuit surveyed fees

- for

- fees precedent extensive ly and concluded that “federal courts

. . . have uniformly held that time spent in establishing the entitlement to and amount of the fee is compensable.” In re Nucorp Energy, Inc. , 764 F.2d 655, 659 –6 0 (9th Cir. 1985). The court explained that this was because “i t would be inconsistent with the pu rpose of the [act authorizing fees] to dilute a fees award by refusing to compensate the attorney for the time reason ably spent establishing and negotiating his rightful claim to the fee.” Id. at 660 (alteration and internal quotation marks omitted) . Here, even under the majority’s view, Becton Dickinson and Nova were entitled to substantial fees. The district court was required to allow fees to secure those fees

.THERASENSE , INC

. v. BECTON , DICKINSON AND COMPAN Y 5

I would remand to the district court to reconsider Be cton D ickinson and Nova’s fees requests . I respectfully dissent from the majority’s affirmance. 1

1 I agree with the majority on the issues of pre

judgment and post

- judgment interest.