By Daniel M. Staren and David G. Barker The Supreme Court unanimously held that the United States Patent and Trademark Office (PTO) may not recover the salaries of its legal personnel as “expenses” in a civil action challenging an adverse decision by the PTO under the Patent Act. The Court’s decision in Peter v. NantKwest […]
DS
DB
By Tyler J. Fortner and David G. Barker On Monday, the Supreme Court of the United States granted certiorari in Iancu v. NantKwest to resolve a circuit split concerning “expenses” a patent applicant must pay when challenging the United States Patent and Trademark Office’s (“USPTO’s”) refusal to issue a patent. Under 35 U.S.C. § 145, […]
TF
DB
On October 24, 2016, the Ninth Circuit Court of Appeals, sitting en banc, held that district courts analyzing a request for attorney fees under the Lanham Act should consider the totality of the circumstances, as set forth in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014). Section 35(a) of […]
PS
In Octane Fitness v. ICON Health & Fitness (2014), the Supreme Court changed the standard for recovering attorneys’ fees in patent litigation. Rejecting a “rigid and mechanical formulation,” the Court adopted a looser “totality of the circumstances” test. Earlier this year, a Ninth Circuit panel held that the Octane Fitness standard did not apply in […]
PS
Supap Kirtsaeng realized he could buy cheaper, identical textbooks in Thailand and resell them for a profit in the U.S. John Wiley & Sons, the publisher of some of these textbooks, sued him for copyright infringement. Kirtsaeng prevailed on his fair use defense, but the court denied him attorney’s fees under § 505 of the […]
PS
The Patent Act provides, in 35 U.S.C. § 285, that “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” In 2005, and the Federal Circuit restrictively interpreted the statute in Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc., holding that a case is “exceptional” only where (1) “there has been […]
PS