{"id":1699,"date":"2017-08-10T13:16:11","date_gmt":"2017-08-10T17:16:11","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1699"},"modified":"2017-08-12T13:44:13","modified_gmt":"2017-08-12T17:44:13","slug":"federal-circuit-the-second-circuit-would-agree-with-the-third-fourth-fifth-sixth-and-ninth-circuits-that-octane-fitness-applies-to-lanham-act-claims","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1699","title":{"rendered":"Federal Circuit: The Second Circuit Would Agree with the Third, Fourth, Fifth,\u00a0Sixth, and Ninth Circuits that Octane Fitness Applies to Lanham Act Claims"},"content":{"rendered":"

In Romag Fasteners, Inc. v. Fossil, Inc.<\/a>, [2016-1115, 2016-1116, 2016-1842] (August 9, 2017), the Federal Circuit vacated and remanded the district court’s award of attorneys fees to Romag under\u00a035 U.S.C. \u00a7 285 but not under the identically worded\u00a015 U.S.C. \u00a7 1117(a).<\/p>\n

Romag has successfully sued defendants for infringement of\u00a0U.S. Patent
\nNo. 5,722,126 and\u00a0U.S. Trademark Reg. No. 2,095,367. \u00a0Under the Patent Act and the Lanham Act, \u201c[t]he\u00a0court in exceptional cases may award reasonable attorney\u00a0fees to the prevailing party.\u201d 35 U.S.C. \u00a7 285; 15 U.S.C.\u00a0\u00a7 1117(a).<\/p>\n

Applying the Octane<\/em> standard, the district court found\u00a0that Romag was entitled to attorney\u2019s fees under \u00a7 285 of\u00a0the Patent Act because Fossil did not \u201cwithdraw [anticipation\u00a0and obviousness] defenses with prejudice until
\nafter trial,\u201d and because Fossil\u2019s \u201cpatent invalidity defense\u00a0of indefiniteness bordered on frivolous.\u201d \u00a0With respect to the Lanham Act, the district court applied\u00a0the prevailing Second Circuit precedent with respect\u00a0to 15 U.S.C. \u00a7 1117(a) that \u201callows recovery of a reasonable\u00a0attorney\u2019s fee only on evidence of fraud or bad faith.\u201d<\/p>\n

Before Octane, the Second Circuit allowed recovery of\u00a0attorney\u2019s fees under 15 U.S.C. \u00a7 1117(a) only if there was\u00a0bad faith or willful infringement on the part of the defendants. \u00a0However the Federal Circuit found that\u00a0there is intervening relevant\u00a0Supreme Court authority which, we think, would lead the\u00a0Second Circuit to follow other circuits which have held\u00a0that the Octane standard applies to the Lanham Act.<\/p>\n

The Federal Circuit noted that since Octane was decided, the Third, Fourth, Fifth,\u00a0Sixth, and Ninth Circuits have all held that Octane applies to Lanham Act Cases as well, and that no circuit has specifically considered Octane and\u00a0then declined to apply it to the Lanham Act. Thus the Federal Circuit\u00a0concluded that the Second Circuit would hold\u00a0that, in light of Octane, the Lanham Act should have the\u00a0same standard for recovering attorney\u2019s fees as the Patent\u00a0Act. \u00a0Thus, the Federal Circuit vacated the denial of attorneys fees, and remanded the case.<\/p>\n

On the issue of attorneys fees on the patent infringement claim, the Federal Circuit likewise vacated the award. \u00a0The Federal Circuit noted that a district court must consider the totality of circumstances, including the conduct of the prevailing party that is\u00a0seeking attorney\u2019s fees. \u00a0The Federal Circuit found that the district court erred in declining to consider,\u00a0in connection with its totality of circumstances\u00a0analysis, Romag\u2019s earlier litigation misconduct. Romag\u2019s\u00a0misconduct cannot be disregarded on the theory that\u00a0failure to award fees is equivalent to double-sanctioning Romag. \u00a0In fact the Federal Circuit said that\u00a0the fact that Romag’s misconduct has already\u00a0been sanctioned should be weighed more heavily, rather\u00a0than be excluded, in the 35 U.S.C. \u00a7 285 analysis.<\/p>\n

This Federal Circuit remanded the case to the district court to consider\u00a0the Lanham Act and the Patent Act attorney\u2019s fees and\u00a0the claimed expert fees under the correct standard, free of\u00a0the errors it identified.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Romag Fasteners, Inc. v. Fossil, Inc., [2016-1115, 2016-1116, 2016-1842] (August 9, 2017), the Federal Circuit vacated and remanded the district court’s award of attorneys fees to Romag under\u00a035 U.S.C. \u00a7 285 but not under the identically worded\u00a015 U.S.C. \u00a7 … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[44],"tags":[],"class_list":["post-1699","post","type-post","status-publish","format-standard","hentry","category-attorneys-fees"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1699","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1699"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1699\/revisions"}],"predecessor-version":[{"id":1700,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1699\/revisions\/1700"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1699"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1699"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1699"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}