Last week, a district court sitting in Connecticut refused to extend the Supreme Court’s recent ruling in Octane Fitness, LLC v. ICON Health & Fitness, 134 S. Ct. 1749 (2014), which lowered the standard for awarding attorney’s fees under the Patent Act. After the jury returned a verdict finding defendants liable for trademark infringement, false designation of origin, and patent infringement, plaintiff Romag sought attorney’s fees under the Patent Act and the Lanham Act. Noting the more flexible standard set forth in Octane Fitness, the court awarded attorney’s fees under the Patent Act because defendants asserted a borderline frivolous invalidity defense and failed to formally withdraw that defense in a timely manner. Despite the finding that the case was “exceptional” under the Patent Act, the court refused to find that the case was “exceptional” under the Lanham Act. More specifically, after acknowledging that the fee provisions in the Lanham Act and the Patent Act are nearly identical, the court refused to apply Octane Fitness’s more flexible standard to the Lanham Act because the Supreme Court was only interpreting the Patent Act and not the Lanham Act in Octane Fitness. Consequently, notwithstanding the ruling in Octane Fitness, a party seeking attorney’s fees under the Lanham Act must still prove bad faith, fraud or willfulness. 

Romag Fasteners, Inc. v. Fossil, Inc., et al., No. 3:10-cv-01827 (D. Conn. Aug. 14, 2014) (Arterton, J.B.).