Octane Fitness and Highmark Deal With Substantive/Review Standard Issues Regarding “Exceptional” Circumstances Allowing Fee Recovery In Certain Patent Cases.
As we mentioned in our previous October 15, 2013 post, the U.S. Supreme Court granted certiorari to consider substantive and standard of review issues relating to the “exceptional” language in a patent statute allowing fees to be awarded in exceptional circumstances. Thanks to a February 28, 2014 post on SCOTUSblog, we can report on highlights of the February 25, 2014 arguments on these two cases and will venture a prediction on how these might resolve.
Octane Fitness. This one dealt with the Federal Circuit’s “objectively baseless” prong of the “exceptional” test. One side had argued that this should be equated with “meritless” while the Solicitor General had argued for a “necessary to prevent gross injustice” standard. Sounds like the SCOTUS Justices did not like either formulation, preferring a more “facts/circumstances” test. Prediction: SCOTUS will defer to the Federal Circuit’s “objectively baseless” formulation and leave the consideration as an intensively factual one.
Highmark. The second case concerned the standard of review on the “objectively baseless” prong. The two views were unitary “abuse of discretion” on objective/subjective prongs or “de novo” on objectively baseless prong. Prediction: SCOTUS will adopt an abuse of discretion review standard on the objectively baseless prong.
So, with the Oscars pending or over, we shall see how our predictions hold up. The SCOTUSblog post predicted that decisions would not be rendered until around Memorial Day this year.