Determination of exceptional cases under 35 U.S.C. § 285 continue to be reviewed for abuse of discretion post-Octane Fitness

A university sued a patentee in the District of Massachusetts on behalf of an alleged co-inventor for correction of inventorship of ten patents. During discovery, the alleged co-inventor made several admissions undermining and, often, directly contradicting the university’s position. On the eve of dispositive motions, the university withdrew its claims for sole inventorship, but declined to withdraw its joint inventorship claims. The district court granted the patentee’s motions for summary judgment with respect to the joint inventorship claims, but declined to grant the patentee’s motion for attorney fees under 35 U.S.C. § 285. The patentee appealed.

The patentee argued that the district court disregarded the Supreme Court’s direction in Octane Fitness by failing to consider the substantive weakness of the university’s litigation position in light of the alleged co-inventor’s testimony. The Federal Circuit disagreed, noting that Octane Fitness does not provide a precise framework, but instead provides several suggestions that might guide a district court’s discretionary decision in determining that a case was presented under “either subjective bad faith or exceptionally meritless claims.” The court explained that Octane Fitness and Highmark stress a district court’s discretion to determine whether a case is exceptional on a case-by-case basis. In this particular case, the patentee could not show abuse of discretion because the trial judge, who was in the best position to understand and weigh the issues, wrote a detailed opinion that explained her conclusion that the case was not objectively unreasonable.