January 11, 2016 Articles

Practice Guide to Section 285 "Exceptional Case" Findings

Experienced practitioners highlight factors courts consider post-Octane in finding a case "exceptional"

By John Kenneth Felter and Vincent Ling

Much has been written and spoken about the Supreme Court decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), in which the Court supplanted the "overly rigid" Federal Circuit standard for finding a case "exceptional" under the Patent Act's fee-shifting provision, 35 U.S.C. § 285, with a discretionary "totality of the circumstances" framework. The primary goal of this article is to supplement the growing discourse with a practice guide to section 285 "exceptional case" findings based on the applications of that framework by district courts.

"Exceptional Case" Status after Octane

The Patent Act's fee-shifting provision states: "The court in exceptional cases may award reasonable attorney fees to the prevailing party." 35 U.S.C. § 285 (emphasis added). This provision is an exception to the "American rule" that each party bears its own attorney fees. See Alyeska Pipeline Serv. Co. v. Wilderness Soc'y, 421 U.S. 240, 249–50 (1975).

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