AWARDING ATTORNEY'S FEES IN EXCEPTIONAL PATENT INFRINGEMENT LAWSUITS - by Michael Shimokaji www.shimokaji.cominfringement lawsuit mas picture

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In Octane v. ICON, the US Supreme Court overturned prior Federal Circuit decisions on the standard for awarding attorney fees in patent litigation. In a companion case, Highmark v. Allcare, the US Supreme Court said that appellate review of a lower court award of attorney's fees for an "exceptional" case will only be reviewed for an "abuse of discretion" by the lower court. Section 285 of the Patent Act allows a district court to award attorney fees in an "exceptional case." However, the Patent Act does not define "exceptional."

Law

Page 1 of 2
© Michael A. Shimokaji, 2014
The contents of this article represent the opinions of the author and not those of the
author’s law firm or clients.
AWARDING ATTORNEY’S FEES IN AN “EXCEPTIONAL” PATENT
INFRINGEMENT LAWSUIT –
THE IMPACT OF OCTANE & HIGHMARK
In Octane v. ICON, the US Supreme Court overturned prior Federal
Circuit decisions on the standard for awarding attorney fees in patent
litigation. In a companion case, Highmark v. Allcare, the US Supreme Court
said that appellate review of a lower court award of attorney's fees for an
"exceptional" case will only be reviewed for an "abuse of discretion" by the
lower court.
Section 285 of the Patent Act allows a district court to award attorney
fees in an "exceptional case." However, the Patent Act does not define
"exceptional."
In the past, the Federal Circuit has said that a case can be "exceptional"
in only two situations: 1) when there has been "material inappropriate
conduct" or 2) when the litigation has been "brought in subjective bad faith"
and the lawsuit is "objectively baseless."
Michael Shimokaji
www.shimokaji.com
949-788-9968

Page 2 of 2
© Michael A. Shimokaji, 2014
The contents of this article represent the opinions of the author and not those of the
author’s law firm or clients.
The US Supreme Court, in Octane, rejected the Federal Circuit
standard. Instead, the Supreme Court said the standard is whether the case
"stands out from others with respect to the substantive strength of a party's
litigating position (considering both the governing law and the facts of the
case) or the unreasonable manner in which the case was litigated." Whether
the standard is met is based on the "totality of the circumstances."
PRACTICE POINTER:
What is the impact of these Supreme Court decisions? Perhaps little.
Court decisions awarding attorney fees are often puzzling when the court
describes how a party’s position is objectively baseless, as one could see the
reasonableness to that party’s position.
Nevertheless, these decisions will seemly impact to a greater extent
smaller litigants who have a financially difficult time affording their own
attorney’s fees, let alone the additional fees of the opposing party. Those
litigants will be hesitant to enforce their patent rights or defend against
infringement claims because it is now riskier to guess what might “stand out”
based on the “totality of circumstances.

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