United States Court of Appeals 

for the Federal Circuit ______________________ 

THERASENSE, INC. (now known as Abbott Diabetes Care, Inc.) AND ABBOTT LABORATORIES,

Plaintiffs-Appellees,

v.

BECTON, DICKINSON AND COMPANY AND 

NOVA BIOMEDICAL CORPORATION,

Defendants-Appellants,

AND

BAYER HEALTHCARE LLC,

Defendant.

______________________ 

2012-1504

______________________ 

Appeal from the United States District Court for the 

Northern District of California in Nos. 04-CV-2123, 04-

CV-3327, 04-CV-3732 and 05-CV-3117, Judge William H. 

Alsup.

______________________ 

Decided: March 12, 2014

______________________ 

CLARA J. SHIN, Covington & Burling, LLP, of San 

Francisco, California, argued for plaintiffs-appellees. 

With her on the brief was PHILIP A. SCARBOROUGH. 
2 THERASENSE, INC. v. BECTON, DICKINSON AND COMPANY

BRADFORD J. BADKE, Ropes & Gray, LLP, of New 

York, New York, argued for defendants-appellants Becton, Dickinson and Company, et al. With him on the brief 

was SONA DE. 

______________________ 

Before RADER, Chief Judge, NEWMAN, and DYK, Circuit 

Judges.

Opinion for the court filed by Chief Judge RADER. 

Dissenting-in-part opinion filed by Circuit Judge DYK. 

RADER, Chief Judge. 

Becton, Dickinson and Company (Becton) and Nova 

Biomedical Corporation (Nova) appeal the denial of various fees sought based on an eight-year long patent infringement 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 agrees with the district court that Becton 

and Nova are not entitled to fees on fees, pre-judgment 

interest, and post-judgment fees calculated specifically

from the date the district court deemed the case exceptional, this court affirms. 

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 in the Northern 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 Northern 
THERASENSE, INC. v. BECTON, DICKINSON AND COMPANY 3

District of California. Abbott then sued Nova, Becton’s 

supplier, alleging infringement of the same patents. In 

August 2005, Abbott sued Bayer Healthcare LLC (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 noninfringement for all defendants with respect to all asserted 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 invalid due to obviousness. Therasense, Inc. v. Becton, Dickinson & Co., 565 F. Supp. 2d 1088, 1127 (N.D. Cal. 2008), 

vacated in part, 649 F.3d 1276, 1296 (Fed. Cir. 2011) (en 

banc). The district court also held the ’551 patent unenforceable 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. On 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 the district court’s judgments of invalidity, unenforceability, and noninfringement. 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 upheld the judgments of noninfringement 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 unenforceability, a divided panel affirmed. Id. at 1312-25 (Linn, J., 
4 THERASENSE, INC. v. BECTON, DICKINSON AND COMPANY

dissenting). Abbott then petitioned for rehearing en banc, 

which was granted. Therasense, 374 Fed. App’x. at 35.

Sitting en banc, this court reinstated, and affirmed,

the panel decision regarding the district court’s judgment 

of obviousness, noninfringement, and anticipation. Therasense, 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 

vacated the district court’s inequitable conduct judgment 

and remanded for further proceedings. Id. at 1285. 

Applying the new standard on remand, the district 

court concluded anew that the ’551 patent was procured 

through inequitable conduct. Therasense v. Becton, Dickinson 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 expenses; (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-judgment 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 appealed 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 district court’s finding that a case is exceptional. 35 U.S.C. 

§ 285. A finding that a case is “exceptional” involves
THERASENSE, INC. v. BECTON, DICKINSON AND COMPANY 5

underlying factual determinations which are reviewed for 

clear error. Wedgetail Ltd. v. Huddleston Deluxe, Inc., 576 

F.3d 1302, 1304 (Fed. Cir. 2009). This court reviews a 

district court’s award 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. Johnson & 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). This court reviews de novo a determination of post-judgment interest. Taltech Ltd. v. Esquel 

Enters. Ltd., 604 F.3d 1324, 1335 (Fed. Cir. 2010).

III. 

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 “permeated” 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 totaling $70,591 for the appeal, $927,093 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 $1,347,297, to which they would add

$569,861 in post-judgment interest calculated specifically 

from August 21, 2008 as well as any pre-judgment interest, yet to be determined. 

Civil litigation often includes numerous phases. But a 

case should be viewed more as an “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 have numerous phases. 
6 THERASENSE, INC. v. BECTON, DICKINSON AND COMPANY

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.”). As this court observed in Rohm & 

Haas Co. v. Crystal Chemical Co., parties often task the 

trial court with allocating costs and attorney’s fees, however, “[n]either § 285 nor its legislative history distinguishes 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

awarding fees for the entire case, including any subsequent 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.’”) 

(quoting Hensley v. Eckerhart, 461 U.S. 424, 437 (1983)).

In this case, the district court’s March 19, 2009 fee order 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. This court vacated the district court’s inequitable 

conduct judgment, thereby vacating the March 19, 2009 

order by its express terms. Therasense, 649 F.3d at 1296. 

While the district court still found 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, the district court did not err in denying

Becton and Nova’s motion for additional fees predicated 

on the vacated determination of inequitable 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.2d 
THERASENSE, INC. v. BECTON, DICKINSON AND COMPANY 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”); see also Mathis, 

857 F.2d at 752 (finding the appeal itself to be exceptional 

and observing that the patentee in requesting rehearing 

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 and malicious

attempt to prolong the litigation and to deceive the district court. In Mathis, the appeal “lack[ed] even a minimally 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 Nova present zero

evidence of bad faith. Expressions of outrage and suspicion in the form of attorney argument are not evidence of

bad faith. Nor does the mere act of pursuing appellate 

review—available as a matter of right and frequently

necessary to preserve future rights of appeal—by itself 

suggest an abuse of the legal system. 

Here, 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 succeed on appeal in vacating 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 appeal with respect to inequitable 

conduct. Thus, even if the appeal itself is deemed excep-
8 THERASENSE, INC. v. BECTON, DICKINSON AND COMPANY

tional, Becton and Nova cannot be deemed the “prevailing” parties. 

For 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 additional fees, and any fees 

for the appeal regarding fees. 857 F.2d at 756 (awarding 

attorney’s fees expressly for the preparation of the fee 

submission). But 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 litigation” and that such exceptions to fee litigation 

“theoretically can spawn a ‘Kafkaesque judicial nightmare’ 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 attorney’s fees should 

not result in a second major litigation)). 

Regardless, a district court may exercise broad discretion in awarding fees and setting the amounts 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 appeal 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 misconduct 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,” beyond the context of § 285, is not unique to patent 
THERASENSE, INC. v. BECTON, DICKINSON AND COMPANY 9

law. It therefore bears additional consideration that the 

Ninth Circuit, in keeping with Jean, recognizes that fees

on fees are deemed “excludable” and that no award of fees 

is “automatic.” 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 any award. Jean, 496 U.S. at 163.

For all the foregoing reasons, the district court’s decision 

not to award fees on fees to Becton and Nova is affirmed. 

Becton and Nova also seek post-judgment interest calculated 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 concluding 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 prejudgment 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 Diabetes Care, Inc.) AND ABBOTT LABORATORIES,

Plaintiffs-Appellees,

v.

BECTON, DICKINSON AND COMPANY AND

NOVA BIOMEDICAL CORPORATION,

Defendants-Appellants,

AND

BAYER HEALTHCARE LLC,

Defendant.

______________________ 

2012-1504

______________________ 

Appeal from the United States District Court for the 

Northern District of California in Nos. 04-CV-2123, 04-

CV-3327, 04-CV-3732 and 05-CV-3117, Judge William H. 

Alsup.

______________________ 

DYK, 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 second, whether the district court erred in denying fees 
2 THERASENSE, INC. v. BECTON, DICKINSON AND COMPANY

incurred in securing a fee award without explanation. The 

majority affirms the district court on both questions. I 

respectfully dissent.

I. FEES FOR THE APPEAL

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 concluded 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. 2012), 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 order. 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 that 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 justified, the [Equal Access to Justice Act, 28 U.S.C. 

§ 2412(d)]—like other fee-shifting statutes—favors treat-
THERASENSE, INC. v. BECTON, DICKINSON AND COMPANY 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 interpreted differently. Nor has the majority identified any 

such reason. 

Of course, for our court to award appellate fees, we 

must find the appeal itself to be exceptional. See Rohm & 

Haas Co. v. Crystal Chem. Co., 736 F.2d 688, 692 (Fed. 

Cir. 1984). But nothing in Rohm & Haas suggested that 

the trial court must find an appeal exceptional 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. Celanese Polymer Specialties Co., 840 F.2d 1565, 1569 (Fed. 

Cir. 1988). And Jean, a later case by the Supreme Court, 

reaffirmed that multi-stage litigation should be treated as 

a unitary whole, and that appellate fees should be treated 

as part of the whole. 

The 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 the Supreme Court has held that the 

phrase “prevailing party” applies 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 formulation 

that brings the plaintiff only across the statutory threshold”). Becton Dickinson and Nova prevailed on invalidity 

and noninfringement at both stages of the appeal. They 

ultimately prevailed on inequitable conduct as well. By 

establishing their entitlement to relief on the merits of 

their claims, Becton Dickinson and Nova were thus “pre-
4 THERASENSE, INC. v. BECTON, DICKINSON AND COMPANY

vailing parties” under the standard set forth by the Supreme Court even if they did not completely prevail at 

each stage. 

II. FEES FOR FEES

The majority also upholds the district 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. at 163 n.10 (“[F]ees for fee litigation should be excluded [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) (“Fees 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 extensively 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, 659–60 (9th Cir. 1985). The court explained that 

this was because “it would be inconsistent with the purpose of the [act authorizing fees] to dilute a fees award by 

refusing to compensate the attorney for the time reasonably 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 COMPANY 5

I would remand to the district court to reconsider Becton Dickinson and Nova’s fees requests. I respectfully 

dissent from the majority’s affirmance.1

1 I agree with the majority on the issues of prejudgment and post-judgment interest.