We will be discussing one California antitrust case with patent law implications and one patent case pertaining to costs in litigation during our weekly SoCal IP Institute meeting on Monday, November 28, 2011. Brief synopses are presented below.

In re Cipro Cases I & II, D056361 (Cal. App. Oct. 31, 2011) (attached). On appeal, Plaintiffs made a number of contentions related to to a pre-existing agreement between Bayer and other, potential generic manufacturers of a patented drug.  The thrust of the plaintiffs arguments was that the agreement between Bayer and those potential generics manufacturers unlawfully restrained trade in contravention of antitrust laws.  After numerous trials related to these issues, the trial court in this case found that the agreement did not.

The California Appellate Court held that a settlement regarding a patent does not violate the Cartwright Act if the settlement restrains competition only within the scope of the patent, unless the patent was procured by fraud or the suit for its enforcement was objectively baseless.  The agreements at issue in this case did not restrain competition beyond the exclusionary scope of the patent.  Accordingly, the appellate court concluded that they did not violate the Cartwright Act. They also concluded that plaintiffs’ claim that Bayer’s infringement suit against Barr was objectively baseless due to Bayer’s inequitable conduct before the U.S. Patent and Trademark Office (PTO) in procuring the patent was preempted by federal patent law because plaintiffs’ right to relief on that claim necessarily depends on resolution of a substantial question of federal patent law. Accordingly, the court affirmed the judgment.

In re Ricoh Company, Ltd. Patent Litigation, Case No. 2011-1199 (Fed. Cir. Nov. 23, 2011 (attached).  Ricoh appealed the decision of the Northern District of California awarding almost $1 million in costs associated with its litigation against Synopsis, Inc.  After a seven-year litigation, Ricoh lost.  Synopsis requested costs of $1.3 million which was granted, after a reduction to just under $1 million.

Ricoh appealed the grant contending that the costs associated with a document database, those associated with making copies and those associated with depositions and interpreters were improper.  Because the parties entered into an agreement to share costs related to the document database, it controlled and the grant of costs associated with that should not have been granted.  The court reversed that grant of costs.  The Federal Circuit found that the costs of copying were not adequately identified and, therefore, vacated for a more accurate determination at the district court.  The award of costs for depositions and interpreters, even those not used in the successful summary judgment motion, was affirmed.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, November 28, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.