U.S. Supreme Court Rules That the Decision to Award Attorney Fees in Patent Cases Rests Squarely in the District Court’s Discretion

U.S. Supreme Court Rules That the Decision to Award Attorney Fees in Patent Cases Rests Squarely in the District Court’s Discretion

The Supreme Court, on April 29, 2014, unanimously ruled on two cases related to the Patent Act’s fee shifting provision under 35 U.S.C. § 285.1 In Octane Fitness LLC v. Icon Health & Fitness Inc. (case number 12-1184), the Court reversed the decision of the Court of Appeals for the Federal Circuit upholding the district court’s denial of attorney fees to Octane, the prevailing party and accused patent infringer. Striking down the framework established by the Federal Circuit in Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc., 393 F. 3d 1378 (Fed. Cir. 2005) as “unduly rigid” and inconsistent with statutory context, the Court in Octane held that “[d]istrict courts may determine whether a case is ‘exceptional’ in the case-by-case exercise of their discretion, considering the totality of the circumstances.” (Octane, slip op. at 8 (emphasis added)). Dovetailing off of this decision, the Court in Highmark Inc. v. Allcare Health Mgmt. Sys. Inc. (case number 12-1163) vacated the Federal Circuit’s judgment denying attorney fees to Highmark, the accused infringer, as being improperly based on a de novo review of the district court’s decision. In view of Octane’s clear delegation of the § 285 inquiry to the district court’s discretion, the Court in Highmark held that “an appellate court should review all aspects of a district court’s § 285 determination for abuse of discretion.” (Highmark, slip op. at 1 (emphasis added)). Justice Sotomayor delivered the opinion of the Court in both cases.

Please see full alert below for more information.

 Download PDF

Erin R. Woelker is an associate with McDonnell Boehnen Hulbert & Berghoff LLP. Ms. Woelker
is engaged in all aspects of intellectual property law, with an emphasis on the prosecution and
litigation of patents. She has experience preparing and prosecuting both U.S. and foreign
patents in a variety of technical fields, including in the mechanical and electrical arts, medical
devices and biotechnology. Erin also has significant experience in all phases of litigation at both
the district court and appellate level. woelker@mbhb.com

© 2014 McDonnell Boehnen Hulbert & Berghoff LLP
snippets is a trademark of McDonnell Boehnen Hulbert & Berghoff LLP. All rights reserved. The information contained
in this newsletter reflects the understanding and opinions of the author(s) and is provided to you for informational
purposes only. It is not intended to and does not represent legal advice. MBHB LLP does not intend to create an
attorney–client relationship by providing this information to you. The information in this publication is not a substitute
for obtaining legal advice from an attorney licensed in your particular state. snippets may be considered attorney
advertising in some states.

Download PDF[49KB]

Note close

Firefox recommends the PDF Plugin for Mac OS X for viewing PDF documents in your browser.

We can also show you Legal Updates using the Google Viewer; however, you will need to be logged into Google Docs to view them.

Please choose one of the above to proceed!

LOADING PDF: If there are any problems, click here to download the file.

You may also like...

Leave a Reply

Your email address will not be published. Required fields are marked *