Having in mind recent supreme court ruling (Octane Fitness, LLC v. ICON Health & Fitness, Inc. case) in favor of defendant in patent infringement case several questions arise.

What Octane attorneys did wrong for appellate court to keep the the district court decision not to classify case as exceptional after evaluating supreme court response? Was it the appeal formulation?.. One of appellate court rejection argument (see docket #241):

Octane challenged only the propriety of our standard for finding a patent case exceptional under Brooks Furniture; Octane did not challenge the factual findings and conclusions underlying the district court’s denial of its § 285 motion.

It seams that appellate court was not willing to reevaluate the facts using new standard.

Is there a lesson to be learned from this? Is appellate court ignoring significantly lowered standards explained by supreme court? Or is it a mistake by defense attorneys? Or provided arguments were not sufficient to show bad faith?..

Bad faith arguments according to Octane (see docket #241):

(i) an email exchange between two ICON sales executives suggesting that the litigation was undertaken as a matter of commercial strategy; and (ii) the fact that ICON is a larger company that never commercialized its ’710 patent. Id. at *4.

2 Answers 2


The provided arguments were not enough to show bad faith, even under the lower threshold. Your listed arguments for bad faith are not really bad faith. Litigation as commercial strategy is a business decision every business has to make. Either you stand on your rights through litigation or you give those rights up. And there is no legal requirement in the US for a patent owner to commercialize their patent.

  • Did I understand correctly (see link that Supreme Court lowered the bar for the Patent Act to show bad faith, but did not do so for Lanham Act? And both Acts apply in this case?.. If so why is Lanham Act applicable in this case?
    – john
    Nov 12, 2014 at 11:58
  • The US Supreme Court has in recent years moved patent law to be more like other areas of law. This was an example where similar language in the Lanham Act was used to justify the Court's interpretation of the Patent Act. Only the Patent Act applied to this case, not the Lanham Act. Nov 18, 2014 at 22:21

A patent owner may not even have the right to practice their patent if it is an add-on or improvement to something else's patented base item.

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