The Federal Circuit, which has exclusive jurisdiction over appeals in patent litigation, recently issued a precedential ruling expounding on the factors that may be considered in determining entitlement to an award of attorney fees under Title 35 of the United States Code.  The trial case comprised an infringement lawsuit brought under a patent that had already been partially invalidated in an inter partes review (“IPR”).  In addition to dismissing the action and imposing sanctions against the plaintiff’s counsel, the Southern District of Florida awarded the defendant attorney fees under 35 U.S.C. § 285 (“Section 285”), which provides for fees to the prevailing party in an “exceptional” patent case.

In reversing the award, the appellate court held the rationale used by the district court to be “legally deficient or inadequately supported by the record.”  In particular, the Federal Circuit noted that even a meritless lawsuit on its own may not be “not legally sufficient” to trigger fees under Section 285.  The defendant’s other bases (i.e., the plaintiff’s loss at the IPR, other failed lawsuits brought under the same patent, and the possible existence of a license allowing the defendant to practice the invention) also failed to convince the Federal Circuit, particularly given the lack of a supporting record. As such, the court reversed the award of fees.  With this ruling designated as precedential, the bar for attorney fees in patent litigation remains high.

Max Matiauda is an intellectual property lawyer and Registered Patent Attorney at Malloy & Malloy’s Miami office.  He regularly represents clients throughout Florida in patent infringement litigation and other patent disputes, as well a broad range of intellectual property matters, including patent searches, patent applications, trademark searches, trademark applications, trademark litigation, and other intellectual property disputes.