A Biotechnology-Centric Look at Fee Shifting in Patent Litigation Post-Octane Fitness

Abstract

On April 29, 2014, the U.S. Supreme Court issued two decisions addressing the attorney fee-shifting provision of the Patent Act, Highmark Inc. v. Allcare Health Mgmt. Sys., Inc. (“Highmark”) and Octane Fitness, LLC v. ICON Health & Fitness, Inc. (“Octane Fitness”). In tandem, the two decisions have made it easier for a prevailing party to succeed on a motion for an award of attorney fees and increased the deference afforded to a district court’s award of attorney fees on appeal. The predicted result should be an increasing tendency of courts to award attorney fees, and a lower probability that a district court’s decision to award attorney fees (or, conversely, not to award attorney fees) in a patent case will be overturned by the Federal Circuit on appeal. At the three year anniversary of Octane Fitness and Highmark, this installment of the Holman Report takes a quick look at how these decisions are playing out in the courts, specifically through the lens of “biotechnology cases.” The article begins with some background on the Patent Act’s fee-shifting provision, 35 U.S.C. § 285, and then provides a synopsis of the 2014 Supreme Court decisions. I will then delve into the specifics of some recent biotechnology patent cases that have awarded attorney fees and reviewed fee-shifting decisions under the new standards mandated by Octane Fitness and Highmark. For the purposes of this article, I treat any patent litigation that involves either a patent relating to biotechnology, or a party engaged in commercializing biotechnology (including pharmaceutical companies), as a “biotechnology patent case.”

Keywords: Octane Fitness, Highmark, attorneys fees, attorney fee-shifting, patent litigation, biotechnology