Posts Tagged: "exceptionality"

Federal Circuit Clarifies Criteria for ‘Exceptionality’ Finding in Awarding Attorneys’ Fees

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today in which it affirmed a district court’s finding of exceptionality under 35 U.S.C. § 285 in favor of Energy Heating et. al., thus upholding an award of attorneys’ fees based on inequitable conduct. The opinion was authored by Judge Prost. The case stems from a 2018 CAFC ruling in which the court upheld a district court’s finding that Heat-On-the-Fly’s (HOTF’s) U.S. Patent No. 8,171,993 was unenforceable due to inequitable conduct, but remanded the district court’s denial of Energy Heating’s motion for attorneys’ fees. As reported at the time, the CAFC said that, while courts are not required to award attorneys’ fees upon a finding of inequitable conduct, they must “articulate a basis for doing so.” Thus, the CAFC remanded for the court to reconsider and supply its reasoning in the case that it again chose not to award attorneys’ fees.

Eileen McDermott

October 14, 2021

Counseling Clients on What Constitutes Exceptionality in Patent Litigation: A View from Delaware

After a client prevails in patent litigation in the United States District Court for the District of Delaware, the client often wants to know whether it can obtain its attorneys’ fees from the opposing party. The answer is yes, but only if the court finds exceptionality under 35 U.S.C. § 285, which states “The court in exceptional cases may award reasonable attorney fees to the prevailing party.” (Although 35 U.S.C. § 285 applies to patent litigation in all United States district courts, this article focuses only on recent decisions of the District of Delaware. Another tool available to clients are enhanced damages claims under 35 U.S.C. § 284. Damages under Section 284, however, are “reserved for egregious cases typified by willful misconduct” and are not a focus of this article.)

Stephanie Smiertka Riley

October 12, 2021