SAN FRANCISCO – Patent lawsuits in California may have gotten more
complicated, thanks to a recent decision by the U.S. District Court for the
Northern District of California, in which justices awarded nearly $8 million in
attorney’s fees – including pre-suit costs.
If nothing else, this decision, tied to a patent lawsuit, is
one that gives both plaintiffs and defendants something to think about, Eric
Caligiuri, attorney at Weintraub Tobin, told the Northern California Record.
“For defendants, it’s sort of another arrow in the quiver to
knock down their opponent’s arguments, but it’s really more to consider for the
plaintiffs,” Caligiuri said. “For plaintiffs, it might bring them pause. It
might make you think about the risk that you’re taking.”
In civil cases, the general rule is that you don’t get
attorney’s fees. There are exceptions, by statute or contract, but the standard
that rates as exceptional is a difficult standard to meet, Caligiuri said. In a
pair of 2014 decisions, (Highmark Inc. v. Allcare Health Management System
Inc., and Octane Fitness LLC v. ICON Health and Fitness Inc.), the state Supreme Court “lowered the bar,” he said, as far as what a plaintiff must show.
The decision in the case in question, Alzheimer’s Institute
of America v. Eli Lilly & Co. et al., awarded Eli Lilly approximately $4,445,492 and Elan Pharmaceuticals approximately
$3,435,130. The judgment included
$245,780 in pre-suit fees, after another court’s finding that Alzheimer’s Institute
of America’s 2010 lawsuit alleging patent infringement incorrectly identified
the true owner of patents for Alzheimer’s detection.
In this case, the exceptional standard was met in a motion
for attorney’s fees, said the justices of the District Court in the Eastern
District of Pennsylvania, where a question had arisen regarding the true owner
of the patent that
claimed Eli Lilly and Elan had infringed upon.
In August 2011, a Pennsylvania district court found that the
Alzheimer’s Institute of America was not in fact the holder of those patents,
and evidence at trial revealed a conspiracy between the Alzheimer’s Institute
of America’s principal and other individuals to incorrectly identify the owner
of the gene mutations.
After the Eastern District of Pennsylvania justices’
decision in 2011 regarding the exceptional standard and attorney’s fees, the
District Court for Northern District of California noted that this case met the
exceptional standard and reported that defendant Elan had engaged counsel
during a pre-suit investigation after getting a letter from the Alzheimer’s
Institute raising the question of licensing discussions. The court deemed those
fees reasonable and recoverable.
“It’s not extremely
common to get pre-suit fees, but it does happen more often lately,” Caligiuri
Caligiuri said that he would tell individuals with a
potential patent lawsuit to really think about it before filing the paperwork and
taking someone to court.
“Really consider your case. Work with an attorney
and make sure that you’re bringing a legitimate case,” Caligiuri said. “For defendants, I’d say to have a good
attorney who knows the current and changing laws. Make sure they know what
defenses are available.”