Surprise twin high-octane patent decisions


Paul J. Sutton

The US patent bar was taken by surprise when the US Supreme Court handed down two unanimous and pivotal decisions on April 29

In my opinion these rulings will give US district court judges unprecedented ultimate discretionary authority to award attorneys’ fees to the successful party in many different types of patent infringement litigation.

Until now, in the absence of exceptional circumstances, the winner in patent infringement litigation has not normally been entitled to recover attorneys’ fees. That has now changed. The Supreme Court, in Octane Fitness, LLC v Icon Health & Fitness, Inc, unanimously found the previously existing law governing the award of attorneys’ fees too rigid, ruling that district courts may award such fees in cases which “stand out from others”.

In Highmark Inc v Allcare Health Mgmt Sys, Inc, the court unanimously ruled that an award of attorneys’ fees by a district court will not be reversed unless the district court “abused its discretion”. While the impact of these cases will not be known for some time, the ability of a party accused of patent infringement to wield the economic weapon of fighting back against a plaintiff will give that plaintiff pause before initiating a lawsuit.

US Supreme Court; NPEs; Patent Act.