The opinion of the court was delivered by: O'neill, District Judge.
Braun sued Abbott and NP Medical for infringement of U.S. Patent No.
4,683,916. Defendants denied infringement and alleged that the Braun
patent was invalid. In addition, defendants asserted as affirmative
defenses, they also filed a counterclaim for declaratory judgment of
non-infringement, patent invalidity and non-enforceablilty and for "such
other and further relief as [the Court] deems just and proper."
Abbott asserted that it was entitled to damages for Braun's patent
misuse and, by Memorandum and Order of June 30, 1995, the trial court
permitted Abbott to offer evidence of such damages. The court specifically
based this decision on the Declaratory Judgment Act, which gives the
court discretion to grant necessary or proper relief based upon such a
judgment. See B. Braun Med., Inc. v. Abbott Laboratories, 892 F. Supp. 115,
116-17 (E.D.Pa. 1995)
Thereafter, considerable discovery ensued and, after a second jury
trial lasting approximately eight days in November-December, 1995, a jury
found that Abbott was not entitled to any damages for Braun's patent
misuse. The Court denied Abbott's motion for a new trial of the issue.
Braun asserts and Abbott does not deny that the eight-day misuse
damages trial involved thousands of documents and dozens of witnesses as
well as the filing of numerous pre-trial and post-trial papers. Braun
also asserts that it spent approximately $741,000 to defend against the
misuse damages claim. Abbott does not challenge this figure but states
that it is irrelevant.
Braun appealed from the district court's judgment that it had misused
and was equitably estopped from enforcing its patent, and that the
accused devices did not infringe the patent. Abbott cross-appealed
seeking attorney fees and damages for Braun's patent misuse. Apparently,
Abbott did not appeal from the judgment of patent validity or lack of
The Court of Appeals for the Federal Circuit iter alia:
1. Affirmed the district Court's judgment of
2. Reversed the judgment that Braun was equitably
estopped from suing defendants;
3. Affirmed the judgment that Abbott was not
entitled to damages for patent misuse;
4. Affirmed the district court's denial of attorney
With respect to patent misuse, the Court held as follows:
As we have mentioned, the patent misuse doctrine is
an extension of the equitable doctrine of unclean
hands, whereby a court of equity will not lend its
support to enforcement of a patent that has been
misused . . . Patent misuse arose, as an equitable
defense available to the accused infringer, from the
desire "to restrain practices that did not in
themselves violate any law, but that drew
anticompetitive strength from the patent right, and
thus were deemed to be contrary to public policy. . .
." When used successfully, this defense results in