Supreme Court's Octane Fitness Decision Impacts Design Patent Litigation

Yesterday, two of the editors of The Ordinary Observer published a summary of the Supreme Court's recent decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc.  Dkt. No. 12-1184 (Apr. 29, 2014) (link goes to the opinion).   

Octane Fitness is one of the most significant patent rulings to come down from the Supreme Court in recent years, and for that reason alone it deserves mention here.  The decision substantially increases the possibility that a prevailing party in patent litigation will obtain his or her attorneys' fees when the court finds that the case is "exceptional" under Section 285 of the Patent Act.  The increased likelihood of obtaining fees should affect the considerations of patent owners seeking to assert weak patents in litigation, and may embolden patent defendants to defend more cases as opposed to settling out early at an affordable price.  For more information, follow the link below to the IP Law Advisory published by Lando & Anastasi, LLP.

W. Seymour, Esq. & E. Carnevale, Esq., The Supreme Court Makes it Easier to Obtain Attorneys' Fees in Patent Cases.

Octane Fitness is relevant in the design patent world for two additional reasons:

1. Because stakes in design patent cases tend to be lower than in utility patent cases, the new considerations for plaintiffs and defendants discussed above apply with that much more force in the design patent context; and 
2. Octane Fitness overruled the Federal Circuit's test articulated in Brooks Furniture Manufacturing, Inc. v. Dutalier International, Inc., 393 F.3d 1378 (Fed. Cir. 2005) - a design patent case.

We will be on the lookout over the coming months to see whether Octane Fitness has a substantial impact on design patent litigation, or on the caliber of design patent suits being brought.