Tag Archives: fee shifting

Trademark and Patent Applicants Opting for a District Court Appeal Must Pay PTO’s Attorney Fees

On June 23, 2017, the Federal Circuit held that, whether they win or lose, patent applicants who appeal adverse PTAB decisions directly to a district court must pay the PTO’s attorneys’ fees.

Patent applicants seeking judicial review of Board decisions have two options under the America Invents Act: appeal to the Federal Circuit under 35 U.S.C. § 141, or to the Eastern District of Virginia under 35 U.S.C. § 145.  Appeals taken under Section 145 offer certain benefits to the applicant, such as allowing discovery and the introduction of further evidence.  Section 145 also provides that applicants must pay “[a]ll the expenses of the proceeding.”  When Dr. Hans Klingemann’s patent application directed to a method of treating cancer was rejected as obvious, Nantkwest, the assignee of the application, appealed under Section 145.  After prevailing on the merits, the Director of the PTO moved for expert and attorneys’ fees, citing the “all expenses” provision of the statute. Continue reading

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Ninth Circuit Holds Octane Fitness’s Fee-Shifting Standard Applies To The Lanham Act

On October 24, 2016, the Ninth Circuit became the latest federal court of appeals to hold that the Supreme Court’s 2014 decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., which outlined the standard for finding a case “exceptional” in patent fee-shifting disputes, applies to the Lanham Act.

Both the Lanham Act and the Patent Act provide that “the court in exceptional cases may award reasonable attorney fees to the prevailing party.”  In Octane Fitness, the Supreme Court overturned the Federal Circuit’s existing standard for awarding attorney fees under the Patent Act, holding that a district court should look to the “totality of the circumstances” to determine if a case is exceptional.  The Court explained that an “exceptional” case is one that stands out from others with respect to: (1) “the substantive strength of a party’s litigation positions (considering both the governing law and the facts of the case)”; or (2) “the unreasonable manner in which the case was litigated.”  Factors for courts to consider include frivolousness, motivation, factual or legal unreasonableness, and “the need in particular circumstances to advance considerations of compensation and deterrence.”  Further, the Court lowered the burden of proof, holding a party’s entitlement to fees must be proven by a preponderance of the evidence.  Continue reading

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