Who Should Call In

Outside counsel, in-house counsel, attorneys, business executives, licensing and technical professionals, and expert witnesses involved with patent litigation

Why You Should Call In

On April 29, 2014, the Supreme Court created a new test for determining whether patent infringement actions are "exceptional" within the meaning of 35 U.S.C. 285. In its rulings in Octane vs. Icon Health and Highmark vs. AllCare, the Court reversed established case law and returned discretion for awarding attorneys fees in patent infringement cases to district courts that will make decisions on a case-by-case basis.

Previously, courts have steadfastly applied a two-part test from the Federal Circuit's Brooks Furniture decision in 2005, requiring that to be found exceptional, 1) the litigation is brought in subjective bad faith and 2) the litigation is objectively baseless. These latest Supreme Court decisions have determined that the Brooks Furniture two-part test lacks viability. Instead, in Octane, the Court made it clear that an exceptional case "is simply one that stands out from others with respect to the substantive strength of a party's litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated" and "[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." In Highmark, the Court made it clear that appellate review of an exceptional case determination, which is discretionary, is "to be reviewed only for an abuse of discretion."

This one-hour TeleBriefing on the recent Supreme Court decisions in Highmark v AllCare and Octane v. Icon Health features expert attorneys who represented amici in these significant cases. Attorneys Robert M. Isackson (Orrick, Herrington & Sutcliffe LLP), Krish Gupta (EMC Corporation), and Andrew Pincus (Mayer Brown LLP) will explain these decisions' likely impact on prevailing parties' efforts to recover attorney fees in patent cases.

What You Will Learn

  • Background and scope of fee shifting in patent litigation
  • Arguments made for and against the Brooks Furniture two-part test and alternative suggestions
  • How the decisions impact the standards for a prevailing party to recover attorney fees
  • Practice tips on what parties who feel that they have been unjustly sued should do to maximize their efforts to have the case declared exceptional as a precursor to recovering attorney fees

What Attendees Have Said About Similar Programs

  • " I found this TeleBriefing to be well presented and the individual presentations were very interesting.''
  • " The course was well-run, the subject matter was very interesting.''
  • " Wonderful CLE, this was my first! Thanks!"