One of the more important intellectual property cases decided in 2014 is the U.S. Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc. (2014) 134 S.Ct. 1749. In that case, the Supreme Court announced a new test for awarding attorneys’ fees in patent infringement cases, holding that the existing test used by the Federal Circuit Court of Appeals was “overly rigid.”
The plaintiff, Octane Fitness, and the defendant, ICON Health, both made elliptical exercise machines. ICON owned a U.S. patent for its machine. ICON sued Octane for patent infringement. The district court granted summary judgment of noninfringement in favor of Octane. Octane filed a motion to seeking its attorneys’ fees under 35 U.S.C. section 285. The district court denied the motion. On appeal, the Federal Circuit Court of Appeals affirmed.
The Supreme Court reversed, stating that “the framework established by the Federal Circuit in Brooks Furniture Mfg. v. Dutailier International (Fed. Cir. 2005) 393 F.3d 1378 is unduly rigid, and it impermissibly encumbers the statutory grant of discretion to district courts.” Id. at 1755. The Court held that the Federal Circuit’s test in Brooks Furniture was “overly rigid.” Id. at 1756. Under that test, a case was exceptional if there was either: (1) litigation-related misconduct, or (2) subjective bad faith and objective baselessness. According to the Federal Circuit, the first alternative, litigation misconduct, would be found it there was willful infringement, vexatious litigation, a Rule 11 violation, or fraud or inequitable conduct in obtaining the patent. Under the second alternative, subjective bad faith was met only if the plaintiff actually knew that its suit was objectively baseless, and objective baselessness was met if no reasonable litigant could believe they would prevail. In addition, the Brooks court held that a defendant had to prove an exceptional case by clear and convincing evidence.
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