Monthly Archives: November 2013

Attorneys’ Fees for Patent Suit Winners? Supreme Court to Clarify the Law

Attorneys’ fees are generally not awarded to the winning party in a suit. However, under the patent statute1 a court may award reasonable attorney fees in “exceptional” cases. The Federal Circuit has addressed how to decide if a patent lawsuit is exceptional, and now the Supreme Court has decided to review that decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc.2

The fact that the Supreme Court is continuing to guide the Federal Circuit is more important than eventual ruling itself. The Federal Circuit has ways of applying general federal civil procedure statutes to patent lawsuits in a manner different from application to general lawsuits.

For example, the Federal Circuit created a rule based on the declaratory judgment statute3. This rule clarified when an accused patent infringer could sue a patentee for a declaration of noninfringement without having to wait for the patentee to file an infringement suit first. The Supreme Court reversed the Federal Circuit decision. While the rule was useful and made sense, the rule did not have a firm basis in the statute it was supposed to interpret.

The Supreme Court has decided that in the absence of a reason to the contrary, the Federal Circuit should not interpret federal law differently for patent cases. This guidance should help make the Federal Circuit’s decision making process more consistent with that of other federal appeals courts and provide greater certainty in interpreting general civil procedure laws in patent cases.

1. 35 U.S.C. § 285 (2012)
2. 496 Fed. Appx. 57; 2012 U.S. App. LEXIS 22096; cert granted, 186 L. Ed. 2d 962, 2013 U.S. LEXIS 5133 (U.S. 2013)
3. 28 U.S.C. § 2201 (2012)