Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. Reckitt Benckiser, the maker of Mucinex cough medication asserted its patent rights covering a formulation of Mucinex against generic drug makers. At a bench trial, Reckitt failed to prove infringement, including offering what the Court referred to as “flawed” and “unreliable” expert testimony. The defendants moved for an “exceptional” case determination and attorneys’ fees under the patent statute. The Court determined that the case was not exceptional, and denied a fee award. The opinion is here. The Court, however, was rather direct with Reckitt: “In the Court’s final analysis, it is a close call as to whether this Court should find the case to be ‘exceptional’ within the meaning of § 285. Reckitt’s various unsuccessful ‘bites at the apple’ in the different cases, in different courts (described above), is of concern to the Court. Yet, the Court is not prepared to find that Reckitt’s reliance on Dr. Davies’ testing was entirely baseless or its litigation conduct so egregious as to warrant fees. Reckitt, however, is forewarned: further ‘bites at the apple,’ through future litigation over the same patents, will likely be viewed as unreasonable or abusive by any court, subjecting Reckitt to fees under Section 285.”

2. In a brief update regarding Judge Alan Albright’s patent docket and procedures in the Waco division of the Western District of Texas, Judge Albright has very detailed procedures to expeditiously and efficiently handle patent cases. He has accumulated a number of patent cases (~200) since joining the bench last year. He continues to modify and refine his procedures and preferences to make patent cases more efficient to litigate, and his court more desirable for patent litigants. According to Law360’s reporting on Judge Albright’s recent talk to the AIPLA here, he is willing to listen to short briefs on tape while he is driving, and aiming to have trials within 12-14 months after claim construction, among other procedures intended to streamline patent litigation. If you represent a patent litigant and can support personal jurisdiction and venue in Waco, Texas, Judge Albright may be a good option to preside over your case.

3. Wells Fargo tagged with a $200 million jury verdict in Marshall, Texas for, according to the jury, willfully infringing patents related to mobile check deposit technology. Because the infringement was found to be willful, the plaintiff will likely ask for enhancement of damages up to three-fold. There are likely to be numerous post-trial motions and an appeal; but, Judge Gilstrap already rejected the argument that the patents are invalid under Section 101 of the Patent Act for being directed to an abstract idea. This jury verdict reinforces the Eastern District of Texas as a good district for plaintiffs, if venue can be established there.