January 11, 2016 Articles

Recovery of Expert Fees Driven by More Than Octane

To truly make the prevailing party whole, Congress should amend the attorney fee statute to include expert fees

By Daniel W. McDonald and Linhda Nguyen

Expert witness fees, while costly and largely necessary in patent cases, are rarely recovered by the prevailing party in litigation. The Patent Act does not expressly authorize an award of expert fees. This article reviews the existing statutory and case law framework for fee awards in patent cases. It also reviews recent changes in case law related to attorney fee awards in terms of their impact on awards of expert fees, and concludes that recent changes in the case law do not create a different or lower standard for awarding expert fees. Instead, an amendment to the patent law fee award statute, 35 U.S.C. § 285, expressly allowing expert fee awards, rather than a change in case law, appears to be necessary. The article concludes by suggesting that such a legislative change to allow expert fee awards when a court awards attorney fees should be part of the discussion of patent law reform, as such an amendment would better fulfill the purposes of full compensation that underlie 35 U.S.C. § 285.

Expert Fees Are Available Only for Fraud or Abuse of Process

Almost 30 years ago, the Federal Circuit affirmed awards of expert fees as part of awards of attorney fees in exceptional cases under 35 U.S.C. § 285. See, e.g., Mathis v. Spears, 857 F.2d 749, 758–59 (Fed. Cir. 1988) (holding that expert witness fees may be awarded in exceptional cases under 35 U.S.C. § 285 and are not limited to the witness attendance fee specified in 28 U.S.C. § 1821(b)).

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