Octane as Creating Conflicts Between Lawyers and Clients and Undermining the Duty of Zeal

Curious what you all think.

Under Rule 11, of course, a lawyer is entitled to argue anything that is non-frivolous. Under the ethics rules, lawyers are to represent their clients competently and within the law, subject to many limitations but, at the outside, also this same barrier:  a lawyer can’t make frivolous claims or arguments.

Prior to Octane, a lawyer could push to the limits of Rule 11 and the ethical rules without risking (in the abstract, of course) fee shifting under Section 285.  This is because Section 285 had been interpreted (wrongly, I think) to require proof by clear and convincing evidence of both subjective and objective frivolousness.

Now, fees can be shifted if the case is merely out of the ordinary — even if it complies with Rule 11.  This could have a remarkable chilling effect on litigation:  we want lawyers to challenge bad patents, for example.

In thinking about this, it seems to me that lawyers should be regularly counseling their clients about important developments in litigation that, while not risking Rule 11 sanctions (or under 1927, inherent power, etc.) nonetheless risk fee shifting.  “I can do this, and I may have a duty to do this, but it creates risk for you.”


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.

15 thoughts on “Octane as Creating Conflicts Between Lawyers and Clients and Undermining the Duty of Zeal

  1. 4

    Perhaps this is a distinction that should be maintained in light of the post, but lawyers – per se – do not challenge bad (or good) patents.

    Lawyers are retained by clients and it is those clients that challenge patents.

    1. 4.1

      If you hire a prostitute in a place where prostitution is illegal, usually both of you are culpable. You seem to be saying that when lawyers turn their own tricks, they avoid liability by saying “the client made me do it”. What a great profession.

      1. 4.1.1

        A most bizarre(?) analogy which fails from the onset in that you miss the point of the post – Lawyers do not set out on their own to challenge patents.


          I think whether a lawyer should be liable under 285 — assuming he can (an open question) should turn on the same sort of analysis that is required under Rule 11: was it a legal issue, and so blame the lawyer, or something the client hid, so blame the client, or a mixture, etc.

          I had some long talks recently with high-end plaintiff lawyers and there’s a lot a’changing.


            Prof. Hricik,

            Can you summarize the main points that you have gathered from these discussions with the high-end plaintiff lawyers?

            What are the key points that you are hearing?

  2. 3

    This could have a remarkable chilling effect on litigation: we want lawyers to challenge bad patents, for example.

    Just push for a Section 285 for prosecution in front of the office and it’ll be cleared up in 20 years :)

  3. 2


    Recall that case on appeal to the Federal Circuit I brought to your attention last week? Apparently, the client, who was virtually bankrupt to begin with, was tagged with enormous costs under section 285 as a consequence of the zealous litigation by its counsel, who were deemed by the court to be not liable for the attorneys fees of the other side because it is zealous litigation tactics did not rise to the standards required by 1927.

    Something is very wrong with this double standard – particularly if the client has no cause of action against the law firm for getting the client in trouble.

    You seem to have hit on something here David.

    1. 2.1

      The client may have a claim, if the client can prove incompetency. See the article below a few posts about how, perhaps, lawyers may also be liable under 285.

      There’s a train wreck a’coming.

      1. 2.1.1

        David, it is simply not fair to tag the client with the bill unless the firm advised the client of the risk of moving forward, and the client accepted the risk.


          I can see this being complicated. Purpose of statute (with respect to prevailing defendants) is to make them whole on their fees. Maybe joint & several liability among lawyer and client is appropriate sometimes?

          There’s a whole new world of litigation coming, I think.


            As I’ve said before, the new world is no world at all. There is NO upside to enforcing a patent in a US court. Too much ability for judges to invalidate on a whim and too easy for fee shifting. The pendulum has swung too far.


              I didn’t mean it’d be less chilling. But sort of a “let God sort ’em out” view: prevailing party gets its money from opposing lawyer or client, and they sue each other to figure out who fairly should pay — who was at fault?

              I dunno. I just know we’re going to be addressing these and related issues soon, I bet.

  4. 1

    Add: “and with the (possible) change in fee shifting, risk to me that creates an immediate possible conflict of interest (the same conflict that would apply universally to ANY counsel you retain).

    I suggest you retain separate counsel (at more cost) to advise you of your rights and risks in retaining me.”

    1. 1.1

      You may be right. This shift is “correct” as a matter of statutory interpretation, but am not sure the policy is going to work well.

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