October 25, 2021

Volume XI, Number 298

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October 22, 2021

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Decision on Attorney’s Fees Vacated and Remanded Because the District Court Used an Incorrect Standard and Made Multiple Errors

ROMAG FASTENERS v. FOSSIL:  August 9, 2017.  Before Newman (concurring-in-part, dissenting-in-part), Dyk (majority), and Hughes.

Takeaway:

  • The Lanham Act should have the same standard for recovering attorney’s fees as the Patent Act in light of Octane.

  • In determining whether a case is exceptional for 35 U.S.C. § 285 fees, a district court must consider the conduct of the party seeking attorney’s fees under Octane’s totality-of-the-circumstances inquiry.

Procedural Posture:

Fossil appealed and Romag cross-appealed from D. Conn.’s decision awarding attorney’s fees to Romag under the Patent Act and CUPTA, but not under the Lanham Act.  CAFC vacated and remanded.

Synopsis:

  • Attorney’s Fees–Lanham Act: The CAFC concluded that the Second Circuit would follow other circuits and hold that, in light of Octane, the Lanham Act should have the same standard for recovering attorney’s fees as the Patent Act.  The identical language of the Lanham Act and the Patent Act for attorney’s fees and the legislative history of the Lanham Act supported using the same standard.  The CAFC left to the district court in the first instance on remand the issue whether to award attorney’s fees under the Lanham Act on the Octane

  • Attorney’s Fees–Patent Act: The district court made several errors in awarding fees under 35 U.S.C. § 285 to Romag.  The district court clearly erred in concluding that Fossil did not formally withdraw the invalidity defenses of anticipation and obviousness until after the trial because the record established withdrawal before trial.  The district court also made no finding that Fossil’s defenses of anticipation and obviousness were objectively unreasonable.  The district court erred in holding that Fossil’s indefiniteness defense bordered on frivolous relying on Judge Young’s ruling, which appeared to grant summary judgment to Romag because Fossil’s indefiniteness argument was precluded by the claim construction.  The district court also erred in declining to consider Romag’s earlier litigation misconduct in its totality of circumstances analysis.

  • Other Opinions: Judge Newman concurred that remand was appropriate for determination by the district court of whether attorney fees were warranted for the trademark infringement on the Octane  Judge Newman dissented from the majority’s opinion on attorney’s fees with respect to the patent issue.  The district court did not abuse its discretion in concluding that withdrawal of the invalidity counts was not achieved until after trial had begun and that this case stood out from others in the manner of its litigation.  Fossil persisted in retaining the invalidity defenses and counterclaims for over three years, and repeatedly equivocated as the trial date approached.

Copyright © 2021, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume VII, Number 298
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About this Author

Gregory L. Porter, Intellectual Property Attorney, Andrews Kurth, Law Firm
Partner

Greg Porter has extensive experience representing and advising companies in all aspects of patent and trade secret law, including acting as lead counsel in successful jury trials and preliminary injunction hearings, as well as advising on patent procurement and designing around competitor's patents. Greg also has counseled Fortune 500 clients on the creation and management of their patent portfolios.

Over the years, Greg has successfully litigated cases in a diverse range of technologies from oil field tools to polymers and computer networking. Greg has drafted and...

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Zaed Billah, Andrews Kurth Law Firm, Patent Litigation Attorney
Associate

Zaed has a decade of experience with patent litigation in U.S. District Courts and the U.S. International Trade Commission. He also has substantial experience with inter partes review proceedings in the U.S. Patent and Trademark Office and with appeals before the U.S. Court of Appeals for the Federal Circuit.

Zaed’s litigation responsibilities include taking and defending fact and expert depositions, writing motions and briefs, examining witnesses at trial, and preparing witnesses for deposition and trial. His recent litigations...

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Qi Zhao patent law attorney Andrews Kurth Law Firm
Associate

Qi has over eight years of experience in assisting clients on patent matters. She has handled more than 100 opinion matters in the areas of pharmaceuticals, chemicals and medical devices. She prepares infringement, validity and freedom-to-operate opinions relating to filings of Abbreviated New Drug Applications and 505(b)(2) New Drug Applications by a generic drug manufacturer. She also prepares and prosecutes patent applications in various technical areas, including small molecule pharmaceuticals, biologics, antibodies, vaccines, diagnostic assays, personalized medicine, food products,...

202.662.2392
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