• ICU Medical, Inc. v. Alaris Medical Sys., Inc. No. 2008-1077 (Fed. Cir. Mar. 13, 2009)
  • May 5, 2009 | Authors: Karen A. Gibbs; Bernadette M. Stafford
  • Law Firm: Crowell & Moring LLP - Irvine Office
  • The Court of Appeals for the Federal Circuit (“CAFC”) affirmed orders by the U.S. District Court for the Central District of California in favor of defendant Alaris Medical Systems, Inc. (“Alaris”). The CAFC accepted Alaris’s proposed construction of the term “spike” thus upholding the award of partial summary judgment of noninfringement. The CAFC also upheld the district court’s grant of summary judgment of invalidity under 35 U.S.C. § 112, ¶ 1 with respect to so-called “spikeless” and “tube” claims and affirmed its award of attorney fees and Rule 11 sanctions.

    ICU Medical, Inc. (“ICU”) sued Alaris for infringement of four U.S. patents related to valves used in medical intravenous setups. In June 2004, ICU asserted only U.S. Patent No. 6,682,509 (“the ’509 patent”) and its “spikeless claims.” ICU then filed an ex parte application for a temporary restraining order (“TRO”), which the district court denied. The district court explained that Alaris presented substantial questions of invalidity for the asserted spikeless claims of the ’509 patent. ICU then amended its complaint to assert claims from three other patents: U.S. Patent Nos. 5,685,866; 5,873,862; and 6,572,592.

    The district court concluded that Alaris was the prevailing party because Alaris established noninfringement of ICU’s spike claims (based on construction of the term “spike”) and invalidity of ICU’s spikeless claims (under 35 U.S.C. § 112, ¶ 1). The district court determined that the case was exceptional because ICU’s TRO/PI (preliminary injunction) request and the amended complaint’s assertion of the spike claims were objectively baseless and brought in bad faith. The CAFC affirmed the district court’s award of attorney fees.

    The CAFC found that the district court appropriately exercised its discretion in awarding attorney fees only for that portion of the litigation relating to: 1) the TRO/PI; 2) ICU’s assertion of the “spike” claims; and 3) ICU’s construction of the term “spike.” The district court had determined that ICU’s “frivolous construction and assertion of the ‘spike’ claims in the amended complaint, concurrently justified sanctions under Rule 11.” According to the district court, “[i]n contrast to its objectively baseless and bad faith litigation of the TRO/PI and ‘spike’ claims, ICU’s later unsuccessful litigation of the ‘spikeless’ claims involved tactics best characterized as overzealous or overly creative, as opposed to vexatious and frivolous.”