The Solicitor General on Section 285 in Octane: he got it right!

Key paragraph:

Instead of rooting its analysis in the text or history of Section 285, the Federal Circuit has purported to borrow the two-prong test this Court has used to determine, for purposes of the Noerr-Pennington doctrine of antitrust law, whether particular litigation is a “sham.” The Federal Circuit’s test requires (1) a rigid and demanding threshold showing that a claim was objectively without justification; (2) independent evidence of the plaintiff ’s subjective state of mind in bringing the baseless claim; and (3) proof of these elements by “clear and convincing evidence.” These requirements have diminished Section 285’s effective- ness as a tool to discourage abusive patent litigation and mitigate injustice suffered by prevailing parties in particular cases. This Court should reject the Federal Circuit’s analysis, make clear that district courts have broad discretion to award fees in exceptional cases in accordance with equitable principles, and vacate the judgment below.

Full brief is here.  Reads like my blog post, below, on this… and Chief’s recent concurrence (also below).

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

One thought on “The Solicitor General on Section 285 in Octane: he got it right!

  1. 1

    David, I read that brief with interest and now agree that Brooks Furniture was wrongly decided. But the brief argues the ’52 Act only codified the 46-52 cases interpreting the ’46 Act.

    That allowed attorneys fees to prevent a gross injustice. Examples include when the patent was procured by inequitable conduct, or that “untenable” legal or factual theories on the merits were advanced. The latter would apply to both parties.

    As noted in the brief, “bad faith” was always an exception to the American Rule.

    The combination would suggest that while the decision was ultimately equitable, a showing that patent lawsuit was baseless (untenable) is or should be a prerequisite absent any other factor. But, bad faith should not be added to the proof. Nor should there be a requirement of clear and convincing evidence.

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