Opinion
95 Civ. 8833 (RPP)
July 25, 2002
Fitzpatrick, Cella, Harper Scinto New York, NY, By: Thomas H. Beck, Esq. for Plaintiff.
Finnegan, Henderson, Farabow, Garrett Dunner LLP Washington, DC; By: Donald R. Dunner, Esq. and Doris Johnson Hines, Esq. for Defendants.
Clifford Chance Rogers Wells LLP New York, NY; By: Philip E. Roux, Esq., for Defendants.
OPINION AND ORDER
Plaintiff Bristol-Myers Squibb Company ("Bristol") has submitted an application for attorney fees based on the Court's determination that this case is an exceptional case under 35 U.S.C. § 285. See Final Judgment dated January 25, 2002. Defendants Rhône-Poulenc Rorer, Inc., Centre National De La Recherche Scientifique, and Rhône-Poulenc Rorer, S.A. (collectively, "RPR") object to Bristol's requests for expert witness fees, prejudgment interest, and computer research fees.
35 U.S.C. § 285 states: "The court in exceptional cases may award reasonable attorney fees to the prevailing party."
I. Overview of Bristol's Application for Attorney Fees
Bristol's application for attorney fees includes a request for attorney and paralegal fees in the amount of $20,736,194; a request for disbursements paid in the amount of $6,177,876; a request for expert witness fees in the amount of $2,578,159; and a request for prejudgment interest in the amount of $3,128,450.
II. Expert Witness Fees
Both parties recognize that 35 U.S.C. § 285 does not provide the explicit statutory authority necessary to award expert witness fees to the prevailing party beyond the statutory amounts provided in 28 U.S.C. § 1821. Bristol asks this Court, however, to exercise its "inherent power to impose sanctions for bad faith and vexatious conduct" to award Bristol the full amount of its expert witness fees.Amsted Indus., Inc. v. Buckeye Steel Castings Co., 23 F.3d 374, 378 (Fed. Cir. 1994); see also Mathis v. Spears, 857 F.2d 749 (Fed. Cir. 1988). Under Amsted, "a finding of fraud or abuse of the judicial process" is required "before a trial court can invoke its inherent sanctioning power to impose expert witness fees in excess of the section 1821(b) cap." Id.
Pursuant to 28 U.S.C. § 1821, Bristol would be entitled to expert witness fees in the amount of $48,069. (Solander Declaration in Support of Bristol's Accounting for Attorney Fees at Ex. 8.)
A. RPR's Intentional Fraud on the U.S. Patent and Trademark Office
The Court has previously determined that RPR intentionally obtained its `011 and `277 patents by fraud by taking advantage of the ex parte patent application process established in 1870 by Congress, which manifested Congress' confidence that the patent bar and their clients would act with integrity. See Opinion and Order dated January 15, 2002. Specifically, the Court found that RPR intentionally withheld the JACS article from the U.S. Patent and Trademark Office ("PTO") — throughout the entirety of the prosecution of the `011 patent and until very late in the prosecution of the `277 reissue patent, at a point where its significance to the validity of the underlying `011 patent would not be readily apparent to an examiner — in a successful effort to mislead the patent examiner into granting the inventors a patent, assigned to RPR, containing broader claims than were warranted by the inventors' experimental results. (Id.) RPR had sought to obtain a patent with as broad a scope as possible because, as shown by its own documents, it intended to use the patent not to develop taxol, but to block other pharmaceutical companies from developing products competitive to Taxotere, RPR's taxane analog. (Id. at 5-6.)
The JACS article is a scientific article written by the named inventors of the `011 and `277 patents entitled "A Highly Efficient, Practical Approach to Natural Taxol." The article, which was published in the Journal of the American Chemical Society in August 1988, describes the inventors' results of their semi-synthesis of taxol from 10-deacetylbaccatin III or baccatin III. Several of the article's statements, and in particular footnotes 13 and 16, are clearly inconsistent with the claims drafted by RPR's in-house patent agent, Mr. Pilard.
The evidence of RPR's intent to commit fraud on the PTO was clear and convincing. Jacques Pilard, the RPR patent agent responsible for (i) drafting the patent claims in the French patent application; (ii) maintaining RPR's file on patent and scientific developments relating to taxol; (iii) the prosecution of the `011 patent; (iv) the prosecution of the `277 reissue patent; and (v) the prosecution of the related European patent, was instructed by corporate officers at RPR to draft a patent broad enough to block competitors from bringing semi-synthetic Taxol to market so that RPR's semi-synthetic taxane derivative, Taxotere, would benefit. In a letter sent to Mr. Pilard dated January 29, 1988, P.E. Simon of the Grants and Licenses Section of RPR's Health Department wrote:
Mr. Guenard has informed us of the development of a new process of Taxol synthesis, in collaboration with the Grenoble team.
Although we are not interested in exploitation of Taxol, our Research Management would not consider it appropriate to leave this process without industrial protection.
For if a source of Taxol should become available by reason of this process, that would facilitate pursuit of clinical studies and, hence, the marketing of this anti-cancer agent before that of the derivatives we are now investigating. We are quite aware that a patent on this process would not constitute an absolute bar to third parties.
We therefore suggest, if C.N.R.S. is in agreement, filing applications in the C.N.R.S. name and at our expense in France and then in the principal countries in consideration for an exclusive license of the patents to RP SANTE.
(PX 130.) Having received these instructions, Pilard proceeded to draft the claims of the French priority patent, of which the `011 patent is a translation, very broadly so as to maximize RPR's ability to block competitors from developing and marketing semi-synthetic Taxol.
The documents and testimony in this case have revealed that Pilard had no scientific or other basis for drafting the claims of the `011 and `277 reissue patent in such a broad manner. The breadth of the claims was not supported, and in fact was contradicted by, the inventors' statements in the invention disclosure ("Modes Operatoires"), the document Mr. Pilard acknowledged he relied upon in drafting the claims of the `011 and `277 patents. (Opinion and Order dated January 15, 2002 at 14-15.) The breadth of the claims was further contradicted by the draft of the JACS article, authored by the inventors, which Mr. Pilard had read and had in his possession at the time he drafted the French patent application in March 1988. (Id. at 15-16.) Mr. Pilard's files contained no scientific tests, no notes, no memoranda or any other documents which supported the breadth of the claims. (Id. at 16.) In addition, none of the inventors could remember having provided Mr. Pilard with any information which would have supported the breadth of the claims drawn in the `011 and `277 reissue patents. (Id. at 16-19.)
At his deposition in January 1998, Mr. Pilard's explanation of his reasons for not providing the JACS article to Mr. Ellsworth Mosher, RPR's U.S. patent counsel during the prosecution of the `011 patent application, for filing with the PTO was inconsistent, floundering, and marked by long delays. For example, Mr. Pilard initially claimed that he believed that the JACS article was not material to the patent examiner's review of the `011 patent because the JACS article only applied to an `efficient approach' to making taxol, but later took the position that he could not remember what his intellectual approach had been in deciding not to submit the JACS article to U.S. patent counsel for the prosecution of the `011 patent application. (Opinion and Order dated January 15, 2002 at 24-25.)
Mr. Pilard, who refused to appear at the November 2001 hearing on inequitable conduct, was deposed in January 1998 and September 1999. Mr. Pilard's long delays in responding to questions during the deposition were significant because the evidence showed that he speaks and writes English with some fluency. Mr. Pilard has never contended that the failure to cite the JACS article to the PTO was the result of an oversight or failure to remember the JACS publication at the time of the filing of the `011 patent application.
Mr. Pilard could not recall having asked the inventors whether the statements in the JACS article only applied to `efficient' syntheses of taxol. (Opinion and Order dated January 15, 2002 at n. 23.) "The two independent experts that testified at the [inequitable conduct] hearing, Dr. Martin and Dr. Corey, both indicated that a person of ordinary skill in the art (a "POSA") in 1988 reading footnote 16 [of the JACS article] would have concluded that MOM was an unsuitable protecting group at any yield. Dr. Corey also testified that a POSA would read footnote 13 to state that TMS was not a suitable protecting group at any yield, while Dr. Martin testified that a POSA would find footnote 13 unclear as to whether TMS yielded any taxol." (Id. at 26-27.) Under either interpretation, the JACS article should have been provided to the patent examiner.
During his deposition, Mr. Pilard also gave numerous unbelievable answers, which demonstrated a willingness to give false testimony. For example, despite having been prepared for the January 1998 deposition by attorneys for RPR for three days, and despite the fact that the deposition took place over two years after this heavily litigated patent action had commenced and after Bristol had requested document discovery of his files, Mr. Pilard gave dissembling testimony, feigning lack of awareness of the litigation and lack of recall, during the morning of January 8, 1998. Mr. Pilard even feigned lack of recollection of the patent in suit:
Q: Do you recall there came a time when you prepared a patent application on behalf of CNRS scientists, Dr. Greene, Dr. Denis, Dr. Guenard, Dr. Gueritte?
A: Yes.
Q: What do you recall about your activities with respect to that patent application?
A: I prepared a patent application.
Q: What was the substance or the subject of the patent application?
A: I don't recall.
***
Q: I would like you to look at the cover page and to the end of the exhibit. And my question is going to be, sir, do you recall the substance of this patent application?
A: Now that you show it to me, it does bring some memories back, but nothing as to the substance.
Q: Well, do you —
A: I see the document and that's it.
Q: Do you recall that the patent application concerns a convergent synthesis of taxol in which the side chain, is reacted with the taxane core?
A: As you show it to me now, I could say yes, but if I hadn't seen the document, I couldn't say.
(Pilard Dep. dated Jan. 8, 1998 at 40-41, 52-53.) These answers, like numerous "I don't recall" answers given that morning, were unbelievable and demonstrate a willingness to give false testimony.
During the `277 reissue patent application process, Mr. Pilard's conduct exacerbated, rather than mitigated, his fraudulent conduct in obtaining the `011 patent. In the `277 reissue patent, RPR claimed several "intermediates" which had not been claimed in the `011 patent. RPR claimed these intermediates specifically to block, by use of the `011 patent's priority date in France, a newly patented process of Dr. Holton, licensed by Bristol, which provided for the development of semisynthetic taxol from a beta-lactam side chain. (PX 138, transcript of 11/16/01 at 475-479.)
During the prosecution of the `277 reissue patent, Mr. Pilard used a different law firm to act as RPR's U.S. patent counsel, which avoided scrutiny of the reissue patent by attorneys knowledgeable about the prosecution of the `011 patent. In his initial correspondence regarding the reissue patent application, Mr. Pilard sent Frederick F. Calvetti, RPR's new U.S. patent counsel, a copy of the JACS article, calling to Calvetti's attention that the article, which was being provided for his information, was published after the priority date. (PX 61.) Thereafter, Mr. Pilard informed Mr. Calvetti that persons at RPR had evaluated the JACS article and determined it to be irrelevant. (Opinion and Order dated January 15, 2002 at 35.) Mr. Pilard was clearly aware that numerous statements contained in the JACS article were inconsistent with the `011 patent, but he did not inform Mr. Calvetti about the significance of the JACS article or instruct him to turn over the JACS article to the patent examiner until over one year after the reissue patent application was filed and allowance was imminent. Mr. Calvetti, unaware of the significance of the JACS article, did not inform the patent examiner of the article's significance and the patent examiner did not review the JACS article until after he had already informed Mr. Calvetti that the reissue patent would be allowed.
Mr. Pilard's awareness of the significance of the JACS article is evidenced by (a) the fact that the copy of the JACS article provided to Mr. Calvetti had footnote 16 circled (the circle is shown on the fax copy bearing Pilard's sending fax number), (b) Mr. Pilard's remarks in a July 25, 1991 letter to Mr. Calvetti, and (c) Mr. Pilard's letter to the European Patent Office in January 1991. (See Opinion and Order dated January 15, 2002 at 34 n. 29, Hearing Transcript dated 11/16/01 at 470.)
B. The Abuse of Judicial Process
Once the `277 reissue patent had issued, RPR demanded royalties of Bristol for its sales of semi-synthetic Taxol. When negotiations broke down, Bristol was forced to commence this declaratory judgment action, which was filed almost contemporaneously with an action for patent infringement commenced by RPR. (Opinion 2/15/96.) Though Bristol was nominally the plaintiff in this suit, it was RPR who forced the ensuing litigation over the validity of the patents it had obtained by Pilard's abuse of the ex parte patent office process enacted by the Congress of the United States.
During the ensuing litigation, RPR abused the judicial process by obstructing discovery of evidence of its fraudulent conduct before the PTO. RPR's obstruction principally took five forms: (1) RPR's instructions to Mr. Mosher not to answer questions on the materiality of the JACS article to the prosecution of the `011 patent application in violation of Rule 30(d)(1) of the Federal Rules of Civil Procedure; (2) RPR's baseless claims that the attorney-client privilege applied to communications between Pilard/Savina and Mosher because Pilard/Savina were employees of RPR, a client of Mosher; (3) RPR's baseless claims that all communications between the inventors and RPR's in-house patent agents relating to the prosecution of the `011 patent application were privileged because the patent agents were acting under the direction and control of Mosher; (4) RPR's baseless claims that communications between the inventors and Pilard/Savina concerning the filing of patent applications in France should be privileged, as a matter of comity, because such communications are privileged in France under French secrecy law; and (5) RPR's delay in producing key documents and other "vexatious conduct." Amsted, 23 F.3d at 378.
(1) RPR's Instructions to Mr. Mosher Not to Answer Questions on the Materiality of the JACS Article to the Prosecution of the `011 Patent Application
On November 17, 1997, Bristol deposed Mr. Mosher, RPR's U.S. patent counsel for the prosecution of the `011 patent application. During the deposition, RPR instructed Mr. Mosher not to answer questions pertaining primarily to the question of whether the footnotes about failed experiments contained in the JACS article, constituted adverse "material information" that U.S. regulations required to be disclosed to the PTO during the prosecution of the `011 patent application in 1989. See Opinion and Order dated January 6, 1998 at 2.
Four days later, Bristol brought the matter of RPR's obstruction of the Mosher deposition to the attention of the Court. Bristol argued that RPR's obstruction was particularly egregious because Mr. Mosher was not subject to subpoena, was elderly, and lived in Alberta, Canada and his deposition had been arranged to take place in Washington, D.C. for his convenience.
After hearing argument from both parties and having reviewed the transcript of the Mosher deposition, the Court found that RPR had violated Rule 30 of the Federal Rules of Civil Procedure by instructing Mr. Mosher not to answer the questions at issue. RPR's contention that its instructions not to answer were justified by the distinction between an expert witness and fact witness was baseless because Rule 30(d)(1) only authorizes a party to instruct a deponent not to answer a question only when necessary to preserve a privilege, to enforce a limitation directed by the court, or to make a motion pursuant to Rule 30(d)(4). The Court also found that RPR's claim that Bristol's questions would necessarily require Mosher to disclose privileged information had not been "substantially justified" by RPR. (Opinion and Order dated January 6, 1998 at 13.) RPR was unable to "identif[y] specific privileged communications that would be revealed by having Mosher answer the questions which were posed to him by Bristol's counsel, nor establish that Mosher's work on the `011 patent was in anticipation of litigation." (Id. at 12.) The Court therefore ordered RPR to make Mosher available, at its expense, for a resumption of his deposition and sanctioned RPR, ordering it to reimburse Bristol for the cost of bringing the motion. (Id. at 14.)
In the weeks that followed the Court's order of January 6, 1998, RPR delayed scheduling the resumption of Mr. Mosher's deposition. In a letter dated February 12, 1998, counsel for Bristol wrote counsel for RPR stating that "we are awaiting dates" for the resumption of the Mosher deposition. (RPR's letter to the Court dated February 24, 1998 at tab D.) On March 5, 1998, RPR and Bristol scheduled Mr. Mosher's deposition for April 3, 1998 in Washington, D.C., subject to Mr. Mosher's health. (RPR's letter to the Court dated October 29, 1999 at tab 3.) On March 20, 1998, Dale Gibson, an attorney for Mr. Mosher in Alberta, Canada, informed counsel for RPR that Mr. Mosher was now unable to testify. (Id. at tab 6.) By improperly obstructing Mr. Mosher's deposition in November 1997, RPR successfully precluded Bristol from obtaining key testimony from Mr. Mosher on the subject of RPR's conduct before the PTO.
(2) RPR's Baseless Claims of Attorney/Client Privilege
RPR obstructed the production of key documents demonstrating RPR's intentional fraud on the PTO by making various claims that the documents were privileged. RPR claimed that (1) all communications between RPR's in-house patent agents and Mosher with regard to the prosecution of the `011 patent application were subject to attorney-client privilege; (2) all communications between the inventors and RPR's in-house patent agents relating to the prosecution of the `011 patent application were privileged because the patent agents were acting under the direction and control of Mosher; and (3) all communications between RPR's in-house patent agents and the inventors were entitled to attorney-client privilege as a matter of comity because such communications are entitled to an equivalent privilege under French secrecy laws.
Although the Court initially believed RPR's claims of privilege to be meritorious, as discovery progressed, the Court found that (a) the inventors had waived claimed privileges in documents filed with the patent office; (b) RPR had mischaracterized the nature of its communications with Mosher during the prosecution of the `011 patent application, that the documents for which privilege was claimed did not request or give legal advice or reflect legal advice, and that RPR's in-house patent agents had not performed any tasks under the direction and control of Mosher; and (c) that French secrecy laws were not applicable to in-house patent agents such as Pilard and Savina. A more detailed look at RPR's baseless claims of privilege follows.
(a) The Inventors' Waiver of AttorneyClient Privilege By Statements to the PTO
In February 1998, while still unaware that RPR's claims of privilege with regard to the prosecution of the `011 patent application were improper, the Court found (over baseless objections by RPR) that the named inventors of the `011 and `277 patents had waived their attorney-client privilege by virtue of their statements made to the PTO in connection with the `277 reissue patent.
The inventors of the `001 [sic] patent and the `277 reissue patent have waived their attorney-client privilege by their statements to the patent office on September 28, 1992 explaining why they had not previously made claims covering the intermediates, e.g. "applicants do not have even a basic knowledge of United States or French patent laws," "applicants were never advised to the contrary and applicants were and are unfamiliar with French patent law," "it was believed by applicants that all of what was disclosed would be protected and applicants were never advised to the contrary" and, "As noted above applicants were and are unfamiliar with United States patent law." Under these circumstances plaintiff is entitled to determine what legal advice the inventors had received concerning the French and United States patent laws and the scope of the patents applied for.
(Order dated February 6, 1998 at ¶ 4.) In accordance with this decision, the Court ordered RPR to produce the "invention disclosure and any communications regarding the scope of the `277 patent reissue application, including RPR's French priority application or regarding French or United States patent laws, between any of the inventors and the RPR patent agents or other attorneys prior to September 28, 1992, as requested by Bristol's letter of November 12, 1997."
As a result of the Court's Order dated February 6, 1998, RPR produced the Modes Operatoires invention disclosure to Bristol for the first time. The Modes Operatoires was a key document. It did not support the breadth of the claims in the `011 and `277 patents, but to the contrary, was consistent with statements made in the JACS article. In March 1998, Bristol used the Modes Operatoires, inter alia, to show that there was prima facie proof of fraud on the PTO sufficient to invoke the crime-fraud exception to the attorney-client privilege.
In April 1998, the Court found that Bristol had presented sufficient evidence to establish a prima facie case of fraud in the procurement of the `011 patent, thereby dispelling RPR's claims of attorney-client privilege for documents and testimony relevant to that issue. See Opinion and Order dated April 14, 1998. The Court found that:
In view of the motivation of Savina and Pilard, disclosed in the memorandum of the June 26, 1991 meeting, to oppose the Holton patent (Bristol Letter 2/2/98 at Tab 22), in view of Pilard's knowledge of the inventors' disclosure statement, in view of the publication of the JACS article in August 1988, and in view of Pilard's evident failure to forward the JACS article to U.S. patent counsel prosecuting the `011 patent for disclosure as a reference publication, there is a clear inference that Pilard knew or should have known that the withheld reference would be material to the patent examiner's review of the operability of all the patent's claims. Pilard was on clear notice from the inventors' disclosure statement that the TMS group was too fragile to survive the esterification process. This circumstantial evidence of fraudulent intent is sufficient proof.
(Id. at 13-14 (internal citations omitted).) The Court ordered RPR to produce "all of Mr. Pilard's files and the inventors' files, including the drafts of the JACS article as well as correspondence in the patent prosecution process." See Order dated April 14, 1998 at 15. The documents produced were corroborative of Pilard's lacking any scientific basis for the breadth of the claims in the French patent and the `011 patent.
(b) RPR's Misrepresentation of the Nature of its Communications and Interactions with Mr. Mosher During the Prosecution of the `011 Patent
RPR subsequently sought a writ of mandamus enjoining the Court's April 14, 1998 order dispelling RPR's attorney-client privilege based on the crime-fraud exception. On June 5, 1998, the Court of Appeals for the Federal Circuit granted RPR's petition for a writ of mandamus. In re Rhone-Poulene Rorer, Inc., 155 F.3d 569 (Fed. Cir. 1998).
On August 11, 1998, the Court issued an order restating and clarifying its April 14, 1998 order finding a prima facie case of fraud and ordering RPR to produce "all of the French patent agent's files and the inventors' files, including drafts of the JACS article and correspondence in the prosecution process." (Order dated August 11, 1998 at 4.) In so doing, the Court noted that it "is of the opinion that the Federal Circuit misconstrued its April 14, 1998 opinion." (Id. at 1.) RPR's motion for reconsideration of this order was denied.
RPR subsequently petitioned the Court of Appeals for the Federal Circuit for a writ of mandamus directing this Court to vacate its crime-fraud ruling. On December 2, 1998, the Federal Circuit denied this petition. In re Rhone-Poulenc Rorer, Inc., 178 F.3d 1309 (Fed. Cir. 1998).
RPR obstructed the production of key documents, including Mr. Pilard's correspondence with Mr. Mosher, on the grounds that the communications would reveal information privileged by the attorney-client relationship because (1) Pilard/Savina were employees of RPR, a client of Mr. Mosher during the prosecution of the `011 patent application and (2) Pilard/Savina had performed duties such as the gathering, analysis and transmission of relevant factual and technical information under the direction and with the authority of its outside patent attorneys. (See,e.g., RPR's Letter to the Court dated January 30, 1998 at 11-12.) The Court's in camera review of the documents for which RPR claimed a privilege showed that these claims of privilege were wholly unsupported by the content of the documents, all of which were solely in RPR's possession at the time it made these claims of privilege.
On June 5, 1998, the Court ordered RPR "to produce to the Court for in camera inspection all documents in the in-house French patent agents' files for which it is claiming a privilege, together with a copy of its privilege log pertaining to the documents produced for inspection." The Court's in camera inspection of these documents revealed that RPR had misrepresented the nature of RPR's communications and interactions with Mr. Mosher during the prosecution of the `011 patent and that its claims of privilege based on the patent agents working under the direction and authority of Mr. Mosher were baseless. See Order dated August 11, 1998. The Court found that:
The Court's in camera review was conducted in response to RPR's motion for reconsideration of its March 31, 1998 ruling that the attorney-client privilege under French law does not confer the equivalent attorney-client immunity on French patent agents as is enjoyed by patent attorneys in the United States. RPR then pointed to its alternate ground that the patent agents acted under Mosher's direction and with his authority. RPR's claims of attorney-client privilege under French law are discussed infra in subsection (3).
the correspondence reveals that Mosher was merely instructed to file a patent application translated into English by British patent agent, J.A. Kemp Co. ("Kemp") acting at the direction of in-house French patent agent, Pilard. All the documents provided to Mosher had been drafted by Pilard and Kemp. Neither Pilard nor Kemp sought legal advice from Mosher or were acting under his authority or control. Clearly, Pilard's communications involve a U.S. patent application. Accordingly, U.S. privilege law applies. Since Pilard and Kemp were not acting under Mosher's authority or control and were not entitled to practice law in the United States, and Mosher was not asked to render legal services to RPR S.A. France, Pilard's file on `011 and his communications, written or oral, with the inventors, Kemp and Mosher, as well as the Mosher file must be disclosed to opposing counsel.
(Order dated August 11, 1998 at 3 (citations omitted)); cf. 8 Wigmore, Evidence § 2292 (McNaughton rev. 1961) (discussing the general principle of the attorney-client privilege). Thus, this claim of privilege by RPR was unmasked and it became clear that Mosher had not been asked to render legal advice but only to file a translation of the French patent application, leaving the finger of responsibility for any failure to disclose the JACS article pointed solely at Mr. Pilard.
The Court expressed its displeasure with RPR's conduct, stating:
It is very troubling for the Court to find that the attorney/client privilege has been invoked by counsel to RPR when the documents clearly do not warrant the privilege. As a result of the non-disclosure, a request will undoubtedly be made to take [sic — retake] discovery from several witnesses involved. It is also troubling to note that the privilege log entries in several instances have been drafted so as to mask the use of J.A. Kemp Co. to translate patent applications and supporting documents into English for filing in the United States by suggesting that Kemp's services related to filings in other countries whereas the documents also expressly refer to filings in the United States. The Court also deplores the presentation of a privilege log arranged neither chronologically nor by subject matter, suggesting that the discovery documents, or the log, may have been arranged as a litigation tactic to inconvenience opposing counsel which, in this case, has had the added result of making the Court's review more difficult and more time-consuming.
(Order dated August 11, 1998 at 4-5 (citations omitted)).
(c) RPR's Baseless Claims of Privilege Based on French Secrecy Law
RPR's obstruction in the production of key documents relating to RPR's fraud in obtaining the `011 patent also included claiming that communications between the inventors and RPR's inhouse patent agents, Pilard and Savina, were privileged by French secrecy law which the Court should recognize as a matter of comity.
Initially, the Court accepted RPR's position. See Opinion and Order dated February 6, 1998 at 2-3. The Court based its decision on several provisions of French law cited by RPR — Article 378 of the French Penal Code, Article 422-54 of the French Intellectual Property Code, and the Declaration of Ledoux. See Opinion and Order dated March 31, 1998 at 3.
In March 1998, Bristol asked this Court to reconsider its ruling, citing for the first time French regulations concerning the professional secrecy obligations of patent agents, and relying in particular on Article 12, Section 12.3. See Opinion and Order dated March 31, 1998 at 3. Based on these regulations, Bristol argued that French patent agents did not have a privilege under French law, akin to the attorney-client privilege in the United States, to resist compelled discovery during civil and criminal judicial proceedings.
On March 31, 1998, having reviewed the French regulations concerning the professional secrecy obligations of patent agents, the Court found that RPR had not demonstrated that French patent agents' communications with a client are protected from the court's compulsory discovery in civil and criminal proceedings under French law. See Opinion and Order dated March 31, 1998. Accordingly, the Court ordered RPR to "produce all communications or memoranda prepared by the French patent agents which were not prepared pursuant to the authority of a U.S. patent agent." (Id. at 6-7.)
The Court would not discover that communications between Pilard and Mr. Mosher with regard to the prosecution of the `011 patent application were not privileged until August 1998.
RPR moved for reconsideration of the Court's order dated March 31, 1998, and the Court stayed its decision pending an evidentiary hearing with testimony from experts on French law. See Opinion and Order dated April 27, 1999 at 1. On December 2-3 1998, the Court held the evidentiary hearing on RPR's motion for reconsideration of the Court's order dated March 31, 1998. After hearing the testimony from French experts on French law, the Court found that (1) under French law, RPR's in-house patent agents' files were not afforded a privilege equivalent to the attorney-client privilege in the United States and (2) that RPR's claims of privilege based on French secrecy law were baseless because the secrecy laws do not apply to in-house patent agents such as Pilard and Savina. See Opinion and Order dated April 27, 1999.
In this case, the submissions of the experts on French law do establish that a French industrial property counsel, like an attorney in the United States, has an obligation to keep secret confidential communications entrusted to him by his client. However, these submissions do not establish that the French industrial property counsel enjoys an evidentiary privilege comparable to that afforded attorneys in the United States.
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[I]n a French patent infringement case, the patentee may obtain an ex parte order from the judge to have a plaintiff search for and view confidential communications between an alleged infringer and the infringer's industrial property counsel, and the bailiff is typically accompanied by the patentee's industrial property counsel, who identifies the evidence of infringement. Documents containing evidence of infringement and confidential matters will be seized and held for court review. The patent agent must respond to a judge who inquires into professional secrets, while the French avocat can decline to answer. Furthermore, judges or agencies investigating criminal, customs or tax offenses may seize confidential matters in the possession of a French industrial property counsel, whereas the United States attorney-client privilege is not similarly qualified.
***
RPR has failed to establish that there exists under French law a patent agent privilege comparable to the United States attorney-client privilege, or that Pilard and Savina are entitled under French law to any secrecy protection due to their status as industrial property agents. RPR has stipulated that Pilard and Savina are salaried employees of RPR who do not offer their services to the public on a confidential basis, and has not shown that Pilard and Savina take inventions other than in the course of their employment. As recognized by RPR's own witness, Judge Dragne, Pilard and Savina are not afforded the title of industrial property counsel under French law and are not covered by French secrecy laws.
(Id. at 23-25 (emphasis added).) In light of Judge Dragne's testimony that in-house patent agents such as Pilard and Savina were not covered by French secrecy laws, RPR clearly had no basis in fact for claiming that the communications of its in-house patent agents were privileged under French secrecy law. Accordingly, the deposition of the inventors and the in-house patent agents had to be retaken.
Judge Dragne also testified that a person qualified as an avocat (lawyer) does not have the rights, powers and authority of an avocat if he or she is solely employed by one company. (Id. at n. 8) Nonetheless, RPR subsequently refused to produce documents to Bristol that it contended were covered by an "in-house avocat privilege." See Memo-Endorsed Order dated June 22, 1999. RPR offered no support for its contention in its correspondence with Bristol. (Id. at tab 1.) After Bristol brought the matter to the Court's attention, RPR failed to offer any response. Accordingly, the Court ordered production of these documents, stating:
In view of the failure of RPR to respond to this letter and Judge Dragne's testimony, there is no "in-house avocat privilege" in France. Therefore any documents withheld on that basis or refusal to answer on that basis is not warranted.
(Id. at 1.)
(3) RPR's Delay in Producing Key Documents and Other Efforts to Obstruct Discovery
In addition to seeking to obfuscate its fraudulent conduct before the PTO by obstructing Mosher's deposition and obstructing the production of documents by invoking claims of privilege which, based on its knowledge of the facts, RPR must have known to be unfounded, RPR obstructed the production of key documents by "losing" or "misplacing" documents, as well as through other misconduct.
From March 1998, when the Court ordered its production, to March 1999, RPR claimed that it was unable to locate the draft JACS article, a key document subsequently relied on by this Court in finding that Pilard had knowledge of the contents of the JACS article when he drafted the French priority patent application. During the time that RPR was claiming that it couldn't locate the draft JACS article, it relied on the draft JACS article in its appeal to the Federal Circuit of this Court's finding of prima facie fraud as evidence that Mr. Pilard did not intend to commit fraud upon the PTO. When RPR finally produced the JACS article in 1999, it claimed that it was found in the archives. RPR did not explain why it did not look in the archives previously since Mr. Pilard's note on the cover letter (which had been produced by RPR) stated "Publication 265" and Mr. Pilard testified that the note referred to the archive list. RPR's failure to produce the draft of the JACS article smacks of abuse of judicial process.
Similarly, RPR claimed that it could not locate the Mosher `011 prosecution file, which corroborated that Mosher had not brought the JACS article to the attention of the PTO. When Bristol requested the file from Mr. Mosher's successor law firm in conjunction with this litigation, the firm sent the file to RPR in 1996. Although ordered to produce this file in August 1998, RPR failed to produce this document, claiming that the document was lost until it was found by in-house counsel Martin Savitzky during a happenstance visit in 1999.
RPR's conduct of losing or misplacing key documents is particularly suspicious in light of the absence of key documents from Mr. Pilard's files. As previously discussed in this opinion, Mr. Pilard's files contained no scientific tests, no notes, no memoranda or any other documents supporting the breadth of the claims in the French patent or the `011 patent. The absence of any documents in Mr. Pilard's files relating to the inventors' experiments other than the withheld Modes Operatoires is troubling to the Court because (a) Dr. Guenard, one of the inventors, testified that he had provided experimental data to Mr. Pilard and (b) Jacques Savina, Mr. Pilard's supervisor at RPR, testified that it was standard procedure at RPR in 1988 for in-house patent agents to collect the scientific tests and other documentation supporting the claims in a patent application. (Opinion and Order dated January 15, 2002 at 16 n. 12.) Mr. Pilard's files were also missing documents that were either authored by or addressed or distributed to Pilard. See Order dated June 10, 1999. Though Bristol introduced no direct evidence to show that the file had been stripped, in view of the absence of such key documents as well as copies of correspondence, there is a clear inference that Mr. Pilard or some other person at RPR intentionally discarded all documents which could be used to challenge the `011 patent application.
RPR also obstructed discovery of a key document by redacting, without notice to Bristol, the experiment identifier numbers from Experiment FG 1457 when it produced that experimental data to Bristol in February 1998.
The basis for Bristol's claim is that in response to its February 8, 1998 request for Dr. Francoise Gueritte-Voegelein's NMR Spectra Data for experiment FG 1457, RPR's counsel, by letter dated February 11, 1998, wrote that it was enclosing that data. Two pages of the enclosure contained identifier numbers of other experiments FG 1453 and FG 1456, but all the rest of the pages of the enclosure contained no experiment identifier numbers and no notice of any redaction. On July 27, 1999, during the deposition of Dr. Guenard, RPR, in response to Bristol's request, produced the original NMR Spectra Data of Dr. Gueritte for experiment FG 1457, and they were marked as Exhibits DO 9, 9-A, 9-B, and 9-C. Those exhibits all bore the experiment identifier number FG 1457 or FGV 1457. Bristol also asked to mark as an exhibit the February 1998 cover letter from CNRS [Dr. Gueritte] to Tom Douros, enclosing copies of Ex.'s DG 9-9C which he had seen earlier, and RPR's counsel refused to provide the documents for marking. On August 5, 1999, in response to Bristol's letter request of August 2, 1999, the Court ordered that RPR's counsel turn over to Bristol RPR's letter to RPR's counsel and the enclosed FG 1457 NMR data that had been produced and examined by Bristol's counsel on July 27, 1999, during Dr. Guenard's deposition. On August 10, 1999, RPR's counsel complied and acknowledged that, on the copies produced in February 1998, the identifier numbers had been redacted.
(Order dated September 24, 1999 at 1-2.) The data for experiment FG 1457, withheld for a year and a half, showed destruction of the oxetane ring during Dr. Gueritte's MOM deprotection experiment and demonstrated that RPR's argument that MOM was a preferred protecting group for making taxol as claimed in the `011 and `277 patents had no scientific support. RPR offered no explanation for its redaction of the identifying information or its failure to inform Bristol of the redaction. (Id. at 3.) The Court expressed its dissatisfaction with the conduct of RPR's counsel, stating that "[t]his is the second instance of serious misconduct by RPR counsel," and noted that RPR's redactions "came at a time when the parties were engaged in motion practice over Bristol's right to discovery of additional documents based on evidence of prima facie fraud by RPR in obtaining its `011 patent which Bristol claimed was not supported by the inventors' experiments." (Id. at 2.)
C. Other Vexatious Conduct by RPR
(1) Unnecessarily Broad Discovery by RPR
Throughout the discovery process of the litigation, RPR pressed for broad discovery along unpromising avenues causing unnecessary discovery expenses. For example, although RPR could not seek any monetary damages for Bristol's allegedly infringing taxane research activities, RPR demanded the production of approximately ninety thousand pages of documents, including laboratory notebooks containing all experimental test results, as well as internal memoranda and Bristol's highly confidential next generation taxane derivative patent applications, and took 17 depositions of Bristol taxane research scientists for 22 days in support of its unsuccessful claim that Bristol's research on Taxol was not protected by 35 U.S.C. § 271(e). (Bristol's Mem. in Support of its Accounting for Attorney Fees at 12; see also Opinion and Order dated November 27, 2001.)
Other examples of unnecessarily broad discovery include RPR's demand for samples of each batch of paclitaxel shipped by Bristol from Swords, Ireland to Mayaguez, Puerto Rico for packaging in order to test those samples for the existence of intermediates covered by claim 14 of the `277 patent in an unsuccessful effort to prove Bristol's use of the intermediates in the U.S., see RPR's letter to the Court dated June 18, 1999; RPR's request in November 1998 for production of all of Bristol's routine FDA and clinical trial records for various oncology agents, see Opinion and Order dated June 14, 1999 at 4; RPR's requests for all documents produced or used in the New Jersey litigation see Opinion and Order dated April 27, 2000; and RPR's broad discovery of the activities of Bristol's U.S.-based personnel, Ireland-based personnel and Italy-based personnel in relation to Bristol's shipments of 10-DAB from Italy to Bristol's facility in Ireland and shipments of a betalactam precursor from the United States to Ireland in unsuccessful efforts to prove infringement under 35 U.S.C. § 271(f), see Opinion and Order dated October 18, 2001.
RPR also increased costs during the discovery process by retaining 49 medical oncology experts to give expert testimony on lost profits relating to three different tumor types (breast, ovarian, and lung cancer) in six different countries (Germany, France, Italy, England, United States, and Spain). RPR justifies the retention of all of these experts on the grounds that "in order to accommodate the potential difficulties in scheduling the medical oncologists when a trial would be set, RPR sought testimony, in some instances, from multiple oncologist to insure that one would be available to testify" and "to specifically rebut contentions made by Bristol in its initial expert reports." (RPR Opp. at 18.) It seems unlikely that a different expert was necessary for each tumor type. In addition, RPR could have used the video-taped depositions of each of its experts at trial, thus its claimed need for duplicative expert oncologists was clearly without foundation. As a result of RPR's inordinate use of experts, Bristol was forced to take each expert's deposition as well as retain many experts to counter the proffered testimony. In view of this conduct, Bristol's request for expert witness fees hardly seems inappropriate.
Of the eight oncologists retained to give testimony about Germany, one oncologist (Schmoll) was capable of testifying about all three tumor types and another oncologist (Koelbl) was capable of testifying about two types. Of the seven oncologists retained to give testimony about France, three oncologists (Bugat, Ciupa, and Mayeur) were capable of testifying as to all three tumor types. Of the six oncologists retained to give testimony about England, one oncologist (O'Brien) was capable of testifying about two tumor types. Of the ten oncologists retained in the United States, one oncologist (Justice) was capable of testifying about all three tumor types. (RPR Opp. at 9.)
Pursuant to Fed.R.Civ.P. 26(a)(2), RPR was required to produce expert witness reports for its medical oncologists first because it bore the burden of proof of infringement and lost profits. RPR attempted, however, to reverse the order of proof for expert depositions by submitting conclusory expert reports not in compliance with Fed.R.Civ.P. 26(a)(2), and then amending the expert reports after receiving Bristol's expert reports. See Order dated April 3, 2000.
Another vexatious tactic occurred in January 1999, at a time when document discovery, which had been extended to a period of over three years, was supposed to be ending. RPR suddenly began producing great numbers of documents, amounting to over 800 boxes worth and over 1.5 million pages. Given the volume of those materials, and their potential importance to depositions, Bristol was forced to hire temporary contract attorneys to perform an expedited initial review as to relevance prior to review by FCHS attorneys.
RPR also repeatedly failed to fully comply with the Court's orders requiring document production. For example, in April 1998, the Court sanctioned RPR for failure to comply with the Court's orders of June 30, 1997 and January 30, 1998, requiring RPR to produce all documents pertaining to RPR's TAX 311 Phase III study comparing Taxotere vs. paclitaxel and to reimburse Bristol for its reasonable attorney fees and expenses of conducting additional discovery necessitated by RPR's failure to disclose the TAX 311 study. See Order dated April 17, 1998. RPR offered no "affidavits explaining what search was conducted, and why the TAX 311 Interim Report December 1996 was not produced by July 17, 1997, as required by the Court's order of June 30, 1997." (Id. at 4-5.)
In January 1999, the Court cited RPR for its failure to comply fully with three prior orders of the Court requiring that RPR turn over for anin camera inspection all documents that it claimed were privileged. See Order dated January 6, 1999.
In June 1999, the Court reprimanded RPR for failure to comply with the Court's orders requiring RPR to produce all documents from RPR's in-house French patent agents' files pursuant to the crime-fraud exception to the attorney-client privilege. See Order dated June 10, 1999.
(2) RPR's Misconduct During Depositions
In January 1998, counsel for RPR interfered with Bristol's deposition of Mr. Pilard by repeatedly engaging in improper speaking or coaching objections. Though the Court did not cite RPR for this behavior at the time, the Court's in-depth review of the Pilard transcripts in conjunction with the Court's opinion on inequitable conduct has made clear the extent of the misconduct by RPR's counsel at Mr. Pilard's initial deposition. In August 1999, the Court reprimanded RPR for engaging in similar misconduct during the deposition of Daniel Guenard, one of the named inventors of the `011 and `277 patents. See Order dated August 5, 1999. When called upon to review other depositions, the Court noted similar speaking or coaching objections.
In addition, in February 1999, the Court cited counsel for RPR for repeatedly harassing Ms. Elizabeth Yamashita, an employee of Bristol, "with unfounded accusatory questions" during her deposition. (Opinion and Order dated February 11, 1999 at 15.)
The Court also cited RPR for engag[ing] in wasteful and lengthy questioning about draft documents not drafted by the witness, at a time when the final document communicated to the FDA was readily available to defendants' counsel." (Order dated February 11, 1999 at 15.)
D. Bristol's Conduct
RPR attempts to excuse its behavior by arguing that Bristol has also engaged in misconduct. RPR greatly overstates the extent of any misconduct by Bristol.
RPR asserts that Bristol "had to be ordered to produce its most basic information." (RPR's Submission in Opposition to Bristol's Mem. In Support of Its Accounting for Attorney Fees ("RPR Opp.") at 10.) In support of this contention, RPR asserts that Bristol would not produce its basic NDA documents, citing to the Court's Order dated July 31, 1996. The Court ordered production of these documents, though Bristol had produced the SNDA documents concerning Bristol's semisynthetic process for making taxol at the outset of the litigation, based on its concept of liberal discovery but indicated its belief that the NDA documents weren't "too relevant." (7/30/96 Hearing at p. 48.)
RPR also asserts that Bristol violated the Court's Order dated June 14, 1999 requiring Bristol to produce Bristol's license agreements with potential oncology competitors by "failing to identify two agreements falling within that definition in its interrogatory responses or produce the agreements." (RPR Opp. at 11.) The Court sanctioned Bristol one hour of attorney billing time for its "failure to give an accurate listing of agreements pursuant to the representation in its response to the interrogatory." (Order dated 11/9/99 at 2.) However, the Court also noted that "Bristol's response did not violate the court's order." (Id.) The Court further stated that "[i]t is also true, as Bristol urges, that both agreements may not be relevant to RPR's proof of the reasonable royalty rate in a license to a competitor." (Id.)
RPR also asserts that "Bristol had to be compelled to produce its own `pleadings, contentions, and supporting documents' from a New Jersey litigation relating to generic Taxol." (RPR Opp. at 11.) Though the Court did order this discovery to ensure that Bristol was not taking inconsistent positions in the two contemporaneous litigations, RPR fails to mention that RPR had been pressing for "all documents produced or used in the New Jersey litigation," see Opinion and Order dated April 27, 2000 at 4, and that Bristol did not consent due to a sealing order of the New Jersey district court. The Court found "little value in ordering Bristol to provide discovery of all documents produced or used in the New Jersey litigation." (Id.)
Though there have been instances where the Court has intervened as a result of Bristol's conduct see e.g., Order dated September 17, 1996 (Court ordered Bristol to permit discovery of Bristol's research activities regarding the making or using of the claimed intermediates); Order dated March 31, 1998 (Court ordered Bristol to produce two fact witnesses for deposition); Order dated April 16, 1998 (Court ordered Bristol to produce fifty-six documents relating to pre-litigation attorney analyses or information and pre-litigation analyses prepared by others at the direction of Bristol's attorneys), based on the entire record, RPR's misconduct over the course of the past seven years has been of a far greater magnitude than any misconduct by Bristol.
The Court takes this opportunity to clarify a misconception of the Court's order dated November 28, 2001, found at pages 4-5 of RPR's brief, that "the Court concluded that the JACS article was material to enablement but, on the other hand, concluded that there was evidence, submitted by Bristol, that the full scope of claim 2 was enabled." On November 28, 2001, the Court did deny Bristol's motion for summary judgment on grounds of lack of enablement based on RPR's submission of an affidavit of Bristol's expert, Dr. Corey, filed in support of Bristol's defense of obviousness. Dr. Corey's affidavit stated that claims 1, 2, 6, 8-9, and 12-17 of the `277 patent were obvious. (Id. at 2-4.) The Court rejected the argument of Bristol's counsel that Dr. Corey's affidavit should be construed more narrowly than its plain meaning in view of his testimony at the Markman hearing held on March 26-27, 2001 because Bristol was relying on counsel's arguments in a motion for summary judgment rather than providing an affidavit from Dr. Corey to that effect. (Id. at n. 6.) Had Bristol provided an affidavit from Dr. Corey harmonizing his affidavit on obviousness and his testimony at the Markman hearing that "TMS was known to be far less stable than TES," and "MOM was known to require `much more forcing conditions,'" Bristol would have provided necessary evidence that the full scope of claim 2 was not enabled.
E. RPR Has Defiled the Temple of Justice
Having reviewed the record and considered the totality of the circumstances, including RPR's original fraud on the patent office in obtaining the `011 and `277 patents, RPR's obstruction of the deposition of Mr. Mosher, RPR's improper claims of privilege based on its misrepresentation of the nature of its communications and interactions with Mr. Mosher during the prosecution of the `011 patent application, RPR's improper claims that its French in-house patent agents' communications were privileged by French secrecy laws when RPR's own expert witness, Judge Dragne, testified that French secrecy laws do not apply to in-house patent agents such as Pilard and Savina, RPR's "loss" of key documents, the absence of documents from Pilard's files from which a clear inference is drawn that someone at RPR intentionally stripped the files of key documents and correspondence, RPR's obstructing conduct during the depositions of Mr. Pilard and Dr. Guenard and other witnesses, RPR's redaction of an identifier number on key experimental lab results without notice to Bristol, and RPR's inordinate discovery and retention of 49 medical oncologist experts, the Court finds that RPR has defiled the "temple of justice," to adopt the Supreme Court's phrase inChambers v. NASCO, Inc., 501 U.S. 32, 46, 111 S.Ct. 2123, 2133, 115 L.Ed.2d 27 (1991), and invokes its inherent equitable authority to sanction RPR to pay Bristol's expert witness fees in the amount of $2,578,159. See Mathis, 857 F.2d at 759, Amsted, 23 F.3d at 378.
III. Prejudgment Interest
Courts have inherent authority to award prejudgment interest where there was "bad faith or other exceptional circumstances." Mathis v. Spears, 857 F.2d at 761 (quoting General Motors Corp. v. Devex Corp., 461 U.S. 648, 653, 103 S.Ct. 2058, 2061, 76 L.Ed.2d 211 (1983)). Based on the Court's findings of bad faith, fraud, and vexatious conduct by RPR, the Court invokes its inherent authority to sanction RPR to pay Bristol's prejudgment interest in the amount of $3,128,450.
IV. Disbursements Paid
Of the $6,177,876 that Bristol seeks for disbursements paid, RPR objects to Bristol's request for computer research costs in the amount of $563,479. "[A]ttorney's fees awards include those reasonable out-of-pocket expenses incurred by attorneys and ordinarily charged to their clients." United States Football League v. National Football League, 887 F.2d 408, 416 (2d Cir. 1989) (citing Reichman v. Bonsignore, Brignati Mazzotta P.C., 818 F.2d 278, 283 (2d Cir. 1987)), cert. denied, 493 U.S. 1071, 110 S.Ct. 1116, 107 L.Ed.2d 1022 (1990). There is no dispute that computer research is a reasonable out-of-pocket expense. In addition, it is an expense which is ordinarily charged to clients. As Judge Lynch recently noted:
While some lawyers treat the cost of computerized research as part of overhead, others, including many firms comparable to [plaintiff's] counsel, pass these expenses on to clients as separately chargeable disbursements. See, e.g., ABA Comm. on Ethics and Prof'l Responsibility, Formal Op. 379 (1993) (stating in a discussion of billing for professional fees, disbursement and other expenses that the "lawyer may recoup expenses reasonably incurred . . . for services performed in-house, such as . . . computer research . . . so long as the charge reasonably reflects the lawyer's actual cost for the services rendered").Bleecker Charles Co. v. 350 Bleecker St. Apt. Corp., 2002 WL 538822 (S.D.N.Y. April 10, 2002) (GEL). Accordingly, where an attorney ordinarily charges computer research expenses separately to clients (rather than treating it as part of overhead), such expenses should be reimbursed in an award of attorney's fees. This position is consistent with the Second Circuit's suggestion in LeBlanc-Sternberg v. Fletcher that computerized legal research expenses are recoverable as part of attorney's fees. 143 F.3d 748, 763 (2d Cir. 1998) (citing United States ex rel. Evergreen Pipeline Constr. Co., Inc. v. Merritt Meridian Const. Corp., 95 F.3d 153, 173 (2d Cir. 1996)).
In this case, Bristol accepted and paid the computer research charges from counsel and it should be allowed to recover these expenses. Accordingly, the Court awards Bristol $6,177,876 for disbursements paid, plus interest running "from the date of the judgment establishing the right to the award." Mathis, 857 F.2d at 760.
V. Attorney and Paralegal Fees
In ascertaining the amount of a reasonable attorney fee, the Federal Circuit and the Second Circuit have used a lodestar analysis. See Lam, Inc. v. Johns-Manville Corp., 718 F.2d 1056, 1068 (Fed. Cir. 1983) (reasonableness of the award determined by examining the reasonableness of the billing rate and the number of hours expended); see also City of Detroit v. Grinnell Corp., 495 F.2d 448 (2d Cir. 1974) (Second Circuit adopts the lodestar approach for determining the reasonableness of attorney fee applications). The lodestar is the number of hours reasonably expended multiplied by a reasonable hourly rate, which provides the presumptively reasonable fee. Id.
In support of its application, Bristol has submitted the bills Fitzpatrick, Cella, Harper, Scinto sent to Bristol, printouts of all attorney time entries, a summary of hours spent by each attorney on a monthly basis, and information containing published rates for firms doing similar work. RPR does not challenge the reasonableness of the attorney and paralegal fees requested, and based on the Court's finding that the number of hours expended, the billing rates, and overall fees are reasonable, the Court awards Bristol its requested attorney and paralegal fees in the amount of $20,736,294, plus interest running "from the date of the judgment establishing the right to the award." Mathis, 857 F.2d at 760.
VI. Conclusion
Pursuant to 35 U.S.C. § 285, the Court awards Bristol its reasonable attorneys fees and disbursements in the amount of $26,914,070, plus interest running from the date of the judgment establishing the right to the award.
In addition, in light of RPR's commission of fraud on the U.S. Patent Trademark Office in obtaining the `011 and `277 patents and RPR's abuse of the judicial process, the Court invokes its inherent equitable authority to sanction RPR to pay Bristol its expert witness fees and prejudgment interest in the amount of $5,706,609.
IT IS SO ORDERED.