August 21, 2018

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Octane Fitness Hits the Showers: Federal Circuit Affirms Attorneys’ Fees Award in Landmark Case

After an eight-year battle through the Federal Courts, the fight over attorneys’ fees in Octane Fitness v. ICON Health & Fitness has likely reached its end with the Federal Circuit upholding the hotly disputed $1.6 million award to Defendant Octane Fitness. This case previously made it up to the Supreme Court, which overturned the Federal Circuit’s prior standard for determining exceptional cases under 35 U.S.C. § 285. Following a remand to the District Court applying the new totality-of-the-circumstances test established by the Supreme Court, the parties again appealed to the Federal Circuit.

The Federal Circuit highlighted four key factual findings supporting the conclusion the case was exceptional:

  • The Plaintiff ICON initially included in the lawsuit a distributor of Defendant Octane’s fitness equipment “in order to increase costs to Octane”;

  • ICON failed to show that it performed a sufficient pre-suit analysis;

  • An internal email said ICON sued on an “[o]ld patent . . . that was sitting on the shelf” as a way to get royalties from their competitor; and

  • ICON did not commercialize the patent.

The Federal Circuit concluded that, because there was no clear error in the District Court’s analysis of the totality of the circumstances, the exceptional case determination was well within its discretion. The Federal Circuit’s opinion can be found here: ICON Health & Fitness, Inc. v. Octane Fitness, LLC, No. 2016-1047 (Fed. Cir. Aug. 25, 2017).

The factual findings emphasized by the Federal Circuit in this case provide more data in evaluating what may constitute an exceptional case under the Octane Fitness standard. Our previous coverage of developments in “exceptional case” precedent can be found here: “Pumping Up Exceptional Cases Under the Octane Fitness Standard.

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About this Author

Andrew H. DeVoogd, Mintz Levin, Intellectual Property Litigation Lawyer, International Trade Commission Investigations attorney

Drew focuses his intellectual property practice in patent litigation specifically in International Trade Commission Section 337 investigations. He has participated in all phases of high-stakes patent litigation in the ITC, including as part of the strategy and trial team at multiple ITC evidentiary hearings, and also has significant experience in patent litigation in the federal district courts. In addition, Drew helps clients protect and leverage IP rights to maximize their value through strategic counseling, and has participated in negotiating and drafting numerous...

Michael B. Marion, Mintz Levin, Patent Litigation, Expert Discovery

Michael’s intellectual property practice focuses primarily on patent litigation. His work encompasses client counseling and case strategy, motion practice, discovery practice and management, expert discovery, and Markman and summary judgment briefing and argument. Michael has litigated cases in the Court of Appeals for the Federal Circuit, the International Trade Commission, and numerous U.S. District Courts.

Representative Matters

  • Defended respondent wiper blade manufacturing companies in International Trade Commission investigation. Oversaw day-to-day management of case, including discovery practice, motions practice, expert discovery, Markman briefing and argument preparation, as well as fact witness depositions.

  • Defended respondent marine electronics company in International Trade Commission
    investigation. Oversaw day-to-day management of case, including discovery production and review, motions practice, coordination with expert discovery, as well as deposition preparation and defense.