As such, tracking that court’s decisions in the context of Octane Fitness provides insight into the still-developing post-Octane Fitness world. Octane Fitness Lowered the Standard for Section 285 Section 285 of the Patent Act, 35 U.S.C.A. § 285, allows district courts to award attorney fees to a prevailing party in “exceptional cases.” The U.S. Court of Appeals for the Federal Circuit in Brooks Furniture Manufacturing Inc. v. Dutailier International Inc., 393 F.3d 1378 (2005), set the pre-Octane Fitness standard, defining an “exceptional case” as one in which a party engaged in material inappropriate conduct, or where the claim was both objectively baseless and brought in subjective bad faith.

Totality of Circumstances, Including Objective Baselessness, Should Be Considered When Determining Subjective Bad Faith Under 35 U.S.C. § 285 13-1193 December 26, 2013 Decision Last Month at the Federal Circuit - January 2014Judges: Rader (concurring), Lourie, O'Malley (author) [Appealed from: N.D. Cal., Judge Illston] In Kilopass Technology, Inc. v. Sidense Corp., No. 13-1193 (Fed. Cir. Dec. 26, 2013), the Federal Circuit vacated the district court’s denial of a motion seeking an award of attorneys’ fees and remanded. Plaintiff Kilopass Technology, Inc. (“Kilopass”) sued Defendant Sidense Corporation (“Sidense”) for both literal infringement and infringement under the DOE of U.S. Patent Nos. 6,940,751 (“the ’751 patent”); 6,777,757; and 6,856,540.

We provide a short synopsis of these cases.By way of context, in 2014, the Supreme Court in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), instructed courts to apply a totality of the circumstances test when evaluating whether a case is “exceptional” under 35 U.S.C. § 285. If a case is found to be exceptional within the meaning of the statute, monetary sanctions and fee-shifting may be imposed. This totality of the circumstances analysis was a substantial departure from the previous Federal Circuit tests, which were uniformly viewed as more rigid.

We provide a short synopsis of these cases. By way of context, in 2014, the Supreme Court in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), instructed courts to apply a totality of the circumstances test when evaluating whether a case is “exceptional” under 35 U.S.C. § 285. If a case is found to be exceptional within the meaning of the statute, monetary sanctions and fee-shifting may be imposed. This totality of the circumstances analysis was a substantial departure from the previous Federal Circuit tests, which were uniformly viewed as more rigid.

Standard For Obtaining Attorney’s Fees Too High In OCTANE FITNESS, LLC v. ICON HEALTH & FITNESS, INC., Appeal No. 12-1184, the Supreme Court reversed and remanded the Federal Circuit’s affirmance of the district court’s denial of attorney’s fees under 35 U.S.C. §285. Icon sued Octane for patent infringement.

Based primarily on the plaintiff's inadequate pre-suit investigation, the court declared Phase I of the litigation to be exceptional warranting an award of attorney's fees to the defendants.Attorney's fees may be awarded in patent cases under 35 U.S.C. § 285 in cases deemed "exceptional." Fees are only available to a prevailing party and there can only be one prevailing party, even in mixed judgment cases.

oncerning the recovery of attorney fees in district court litigation under 35 USC § 285.In its May 20, 2024 decision, [1] the Federal Circuit reinforced the boundaries of fees recoverable under § 285, clarifying thatattorney fees incurred in IPR proceedings are not recoverable under § 285 because they are part of separate and voluntary proceedings; anda party’s counsel cannot be held jointly and severally liable for fee awards under § 285.BACKGROUNDIn December 2013, Dragon Intellectual Property LLC (Dragon) filed a patent infringement suit against DISH Network LLC (Dish), Sirius XM Radio Inc. (SXM), and several other defendants. [2] In December 2014, DISH filed a petition for inter partes review, which SXM joined. [3] Eventually, after the claim construction hearing, the district court entered a judgment of noninfringement. Later, the Board issued a final written decision holding all challenged claims unpatentable. [4] DISH and SXM then moved the district court for attorney fees under 35 USC § 285 and 28 USC § 1927. [5]After two appeals and remands addressing different issues, the district court ultimately granted-in-part and denied-in-part the motion for attorney fees. It deemed the case “exceptional” and awarded attorney fees that were generated in the district court litigation. But the court denied the requests to (1) recover attorney fees incurred during the IPR proceedings, and (2) hold Dragon’s lawyers jointly and severally liable for the fees. [6] DISH and SXM again appealed.NOTABLE ASPECTS OF OPINION [7]District Courts Cannot Award Fees Incurred for IPR Proceedings Under § 285The Federal Circuit affirmed the district court’s conclusion that it could not award fees incurred in IPR proceedings under § 285. [8] According to the Federal Circuit, there is no basis for awarding IPR fees under § 285 “[i]n cases where a party voluntarily elects to pursue an invalidity challenge through IPR proceedings.” [9] If “cases” under § 285 included IPR proceedings, then “district court j

and Order, ECF 236 (E.D. Tex. June 5, 2019). Plaintiff My Health, Inc. had its asserted patent invalidated via a 35 U.S.C. § 101 motion to dismiss, and defendants sought attorneys’ fees under 35 U.S.C. § 285. My Health appealed the §101 decision and requested the court to stay defendants’ § 285 motion pending the appeal.

Not-So-Dead Inventor and Forged Documents Not Enough to Make Case “Exceptional” Under 35 U.S.C. § 285 07-1133 November 01, 2007 Ferrill, Elizabeth D. Decision Last Month at the Federal Circuit - December 2007Judges: Michel (author), Moore, Cote (District Judge sitting by designation) [Appealed from: W.D. Wash., Judge Robart] In Digeo, Inc. v. Audible, Inc., No. 07-1133 (Fed. Cir. Nov. 1, 2007), the Federal Circuit affirmed the district court’s denial of defendant’s motion for attorneys’ fees under 35 U.S.C. § 285, including its request for additional discovery to develop the section 285 claim. In doing so, the Court found no clear error in the district court’s finding that this was not exceptional and no abuse of discretion in its denial of additional discovery. Digeo, Inc. (“Digeo”) purchased U.S. Patent No. 5,734,823 (“the ’823 patent”) “as is” at a bankruptcy estate sale.

In Amneal Pharmaceuticals LLC v. Almirall, LLC, the Federal Circuit recently found 35 U.S.C. §285 did not authorize the Court awarding attorney’s fees for conduct occurring at the PTAB. No. 2020-1106, 2020 WL 2961939, at *2 (Fed. Cir. June 4, 2020).The patent owner, Almirall, sells an acne medication called Aczone which corresponds with two patents in the FDA’s Orange Book. The petitioner, Amneal Pharmaceuticals, filed two IPRs challenging those patents before filing its Abbreviated New Drug Application for a generic version of the medication.