Facts

Abbott filed patent infringement suits against Defendants' sale and manufacture of glucose monitors and test strips for diabetic patients. Abbott asserted four different patents against Defendants Becton Dickinson and Nova Biomedical ("BD/Nova"), two of those four patents were also asserted against Defendant Bayer.

On April 3, 2008, U.S. District Judge Martin J. Jenkins of the of the Northern District of California entered summary judgment of non-infringement in Defendants BD/Nova's favor on the first two '164 and '745 patents, entered summary judgment of invalidity on the second '745 patent, and entered summary judgment of no literal infringement on the third '551 patent. U.S. District Judge William H. Alsup of the of the Northern District of California then took over the case.

On June 24, 2008, following a bench trial on the issues on enforceability and validity of the '551 patent involving all Defendants, the court held that patent invalid and unenforceable for inequitable conduct by Abbott's agents. The District Court, on August 21, 2008, found the case concerning the '551 patent to be exceptional, and subsequently awarded both defendants their attorney's fees. Bayer and Abbott resolved the fee amount by agreement. The court later awarded BD/Nova nearly $6 million in attorney's fees.

On August 8, 2008, following a jury trial on the fourth and final '890 patent asserted only against defendants BD/Nova, the jury rendered a verdict of invalidity. Abbott appealed on all four patents. On January 25, 2010, the Federal Circuit Court of Appeals affirmed in all respects, ruling in Defendants' favor on all four patents. Although no issues of liability remain on any of the four patents, Abbott then petitioned for rehearing on the sole issue of unenforceability of the '551 patent, which petition was granted.

On May 25, 2011, an en banc Federal Circuit in a split decision raised the standards for inequitable conduct. The majority opinion did not opine on the facts of the case at hand. Rather, it remanded the case to the District Court for further proceedings under the new Therasense standards.

On March 27, 2012, Judge Alsup reinstated his previous holding, again finding the '551 patent to be unenforceable for inequitable conduct, even under the new heightened standards established by the en banc Federal Circuit. On April 9, 2012, Abbott and Bayer agreed to reinstate their prior agreement on fees. On May 22, 2012, the District Court reinstated its $6 million attorney fee award to BD/Nova with interest going forward.

Result

BENCH DECISIONS: Summary judgments of no-infringement by defendants Becton Dickinson and Nova Biomedical of U.S. Patent Nos. 6,143,164 and 6,592,745; Summary judgment of invalidity of U.S. Patent No. 6,592,745 affirmed; judgment of invalidity of U.S. Patent No. 5,820,551 affirmed; unenforceability of U.S. Patent No. 5,820,551 reinstated on remand. JURY VERDICT: Invalidity of U.S. Patent No. 5,628,890 affirmed.

Other Information

Abbott has again appealed the unenforceability of the third patent, which appeal is pending.