If a patent attorney were to tell a general practitioner without much knowledge of patent litigation practice that a judge found his case to be “exceptional”, the general practitioner, mistakenly believing this to be a good thing, may offer his congratulations. Yet in the twisted world of patent litigation, all is not what it would appear to be, and “exceptional” does not actually mean exceptional; rather, it is but a legal holograph.
Contrary to a traditional understanding of something that is exceptional, a finding that a patent case is “exceptional” under 35 U.S.C. § 285 will no doubt lead to big trouble for the losing attorney, not only in terms of attorney fees but also in terms of the attorney’s ability to practice law, particularly in front of the United States Patent and Trademark Office (USPTO). In fact, the Office of Enrollment of Discipline (OED), the disciplinary arm of the USPTO, will likely be in touch – though again, not to offer their congratulations but rather to ask the patent attorney, and perhaps those under his direction, to respond to a grievance.
The problem is that no precise definition of exceptional has ever been rendered by case authority. See e.g., Octane Fitness LLC v. Icon Health & Fitness, Inc. 134 S. Ct. 1749, 1756 (2014) (holding “that an ‘exceptional’ case is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.”). Thus, it would seem that, as with the concept of obscenity, the standard of “you know it when you see it” unfortunately applies.
Back in the day, it used to be that losing a case was punishment enough; not anymore.