PENNSYLVANIA RECORD

A federal judge in Philadelphia has denied a motion by AstraZeneca Pharmaceuticals to

recover attorney fees in a case against Teva Pharmaceuticals in which the former prevailed over the latter in a patent infringement civil action.

In a July 26 memorandum, U. S. District Judge William H. Yohn, sitting in the Eastern District of Pennsylvania, denied a motion by both AstraZeneca and IPR Pharmaceuticals Inc. to recover lawyers’ fees arising out of a case in which Teva had filed suit against AstraZeneca alleging that the latter’s Crestor prescription drug formulation infringed on one or more of claims of Teva’s patent.

AstraZeneca soon moved for summary judgment, conceding that its Crestor formulation infringed on Teva’s patent, but simultaneously arguing that Teva’s asserted patent claims were invalid because it had conceived of, and reduced to practice, its drug formulation before Teva conceived of the subject matter of the patent.

Yohn ended up granting summary judgment to AstraZeneca, holding that Teva’s asserted claims were invalid because of AstraZeneca’s prior invention.

As the prevailing party, AstraZeneca timely filed a motion for attorney’s fees, the memorandum states, but Yohn initially denied the motion because Teva had filed an appeal with the federal circuit.

The federal appeals court ended up affirming Yohn’s decision to grant summary judgment to AstraZeneca, and the drug company soon renewed its motion to collect lawyers’ fees.

In his memorandum, Yohn wrote that he denied the motion because AstraZeneca has not met its burden to show “by clear and convincing evidence that this case is ‘exceptional.’”

The Patent Act, Yohn wrote, allows a court discretion to award reasonable attorney’s fees to the prevailing party if the court deems that the case is “exceptional.”

A case is deemed exceptional only when there has been some “material inappropriate conduct” related to the matter, the ruling states, such as willful infringement, fraud or inequitable conduct in procuring the patent, misconduct during litigation, vexatious or unjustified litigation, conduct that violates the federal Rules of Civil Procedure or other infractions.

AstraZeneca had argued that it is entitled to attorney’s fees because Teva brought the case primarily for “purposes of harassment, maintained [an] untenable position in the face of overwhelming evidence that AstraZeneca had invented first, and engaged in litigation misconduct by delaying resolution of this dispute,” the ruling states.

AstraZeneca contended that when Teva filed suit, it knew, or should have known, that priority of invention was a “critical issue,” according to the memorandum.

In denying the attorney’s fees, Yohn wrote that he could not conclude that Teva’s argument was “frivolous or objectively baseless.”

“This was clearly a legitimate legal issue brought in good faith,” the judge wrote. “Nor is there clear and convincing evidence that Teva made this argument in bad faith.”