One of a handful of patent cases accepted by the Supreme Court this term, Icon Fitness v. Octane Health and Fitness presents the question of whether Brooks Mfg. v. Dutailier, Inc., 393 F.3d 1378 (Fed. Cir. 2005) should be overturned to the extent that it “shoehorned” the rigid, two-part test for sham litigation into the Patent Act’s test for fee shifting. The petitioner, Octane Fitness, LLC, recently filed its brief arguing that the standard should be relaxed and raises several notable points.

As to the plain language of the statute, the Petitioner argues that Congress intended to give §285 an independent effect.  Octane argues that Brooks essentially “limits an award of fees … to three egregious instances: fraud by the patentee in procuring the patent, litigation misconduct, or sham litigation.” However, “courts already possess inherent authority to award fees in such cases.” Thus, this interpretation of §285 violates the canon of statutory construction that courts should not interpret statutory provisions in such a way as to make them superfluous.

Octane also raises the point that this interpretation of §285 contradicts interpretations of the Lanham Act’s fee shifting statute, which is textually identical. Though the various Circuits utilize different tests under the Lanham Act’s statute, all “permit flexible, open-ended inquiry into the totality of the circumstances.” Furthermore, Octane points out, there is no good reason to interpret the two statutes differently.

On a final point, Octane argues that a relaxed standard may cut down “abusive patent litigation”. Here, Octane argues that in order for an accused infringer to win fees, it must essentially prove either patent procurement fraud, or a Rule 11 violation. These scenarios are few and far between. Thus, there is very little risk involved in asserting weak or even meritless claims of infringement. Relaxing the standard will give an accused infringer recourse when it cannot otherwise efficiently “extract itself from unreasonably weak patent litigation.”

Oral arguments are scheduled for February 26, 2014.