Lead Opinion
Opinion for the court filed by Circuit Judge O’MALLEY.
Concurring opinion filed by Chief Judge RADER.
This appeal arises from the United States District Court for the Northern District of California. The district court granted summary judgment in favor of Sidense Corporation (“Sidense”), holding that it did not infringe Kilopass Technology, Inc.’s (“Kilopass’s”) U.S. Patents 6,940,751 (“the '751 patent”), 6,777,757, and 6,856,540. Kilopass Tech., Inc. v. Sidense Corp., No. 10-2066,
I
Kilopass and Sidense are competitors in the embedded non-volatile memory (“NVM”) market. Memory cells use transistors to store information. NVM memory consists of memory devices that retain their information (or state) when power is removed. Kilopass markets technology used to create its 1.5T NVM memory technology. Sidense has a competing 1T-Fuse product, the design and technology of which it licenses to its customers, who in turn use those designs to build embedded memory cells.
Kilopass’s patents cover a memory cell comprised of transistors located at the cross-points of a column bitline and a row wordline. Each transistor has a “gate” connected to a column bitline and a “source” connected to a row wordline. '751 patent col. 5 11. 32-40. Opposite the source is a “drain” that is not connected to any bitlines or wordlines. Id. Beneath the gate is a substrate separated from the gate by a dielectric oxide. Id. col. 7 1. 17. The dielectric oxide is engineered to “break down” when a sufficient voltage is applied to the gate. Id. col. 7 11. 14-16. If the gate oxide breaks down, a conductive link forms between the source and drain, allowing current to flow through the transistor. Id. col. 7 11. 16-20. The flow of current indicates that the transistor is in a programmed state, while the absence of current flow indicates that it is in a non-programmed state. Id.
Kilopass’s '751 patent, which is representative of the patents in suit, is directed to a programmable memory cell utilizing a transistor at the intersection of a column bitline and a row wordline. '751 patent Abstract. Representative claim 1 reads as follows:
1. A programmable memory cell useful in a memory array having column bit-lines and row wordlines, the memory cell comprising:
a transistor having a'gate,
a gate dielectric between the gate and over a substrate,
*1305 and first and second doped semiconductor regions formed in said substrate adjacent said gate and in a spaced apart relationship to define a channel region there between and under said gate; .
and wherein the second doped semiconductor region of the transistor is connected to one of said row wordlines, and wherein said gate dielectric is formed such that the gate dielectric is more susceptible to breakdown near the first doped semiconductor region than said second doped semiconductor region.
Id. col. 14 11. 30-44 (emphases added).
Claim 1 of the '751 patent requires a first and second doped, semiconductor region of the memory cell where the second doped, region is connected to one of the wordlines. Id. Sidense’s 1T-Fuse cells, however, utilize a shallow trench isolation (“STi”) region for-the transistor drain instead of a first doped region. Kilopass,,
II
In 2005, Kilopass’s founder and an inventor on all three of Kilopass’s patents, Jack Peng, reviewed an international patent application submitted by Sidense that was directed to protecting Sidense’s competing 1T-Fuse memory cell. Peng believed that the 1T-Fuse was similar to Kilopass’s patented cells, except that Si-dense used a split gate implementation. Kilopass,
The Perkins counsel nonetheless believed that there was a sufficient basis to challenge Sidense. with infringement contentions “in a friendly way ... to see what their reaction is.” J.A. 10578. On November 28, 2005, the Perkins counsel sent a letter to Sidense advising that it “should be interested in obtaining a license to Kilo-pass’s patents” or otherwise “provide [Ki-lopass] with an explanation of how these products avoid the claims” of the patents-in-suit, inter alia. J.A. 10583-86.
Sidense responded on January 20, 2006, stating, “[I]t is our opinion that no products produced by Sidense, nor their methods of operation, fall within the Scope of the claims.” J.A. 10590. Specifically, Si-dense noted:
[E]ach [claim] requirefs] that the transistor have (1) first and second doped semiconductor regions formed in the substrate adjacent the gate; and (2) a second doped semiconductor region connected to the row wordline.... Such elements are not present in Sidense’s memory cell transistors. For at least these reasons, ... we do not believe any license of these patents is necessary.
J.A. 10590 (emphases added). Sidense also proposed that it was “prepared to consider a third-party examination, on a confidential basis” to confirm whether Si-dense’s products infringed, “provided [Ki-lopass] agreed to pay the costs of same
After reviewing Sidense’s response, the Perkins counsel sent the following e-mail to Peng and Kilopass’s CEO:
Here is my report on Sidense’s response to our charge of infringement. I still believe given our knowledge of Sidense’s technology, that they infringe our patents. Please keep in mind that I am assuming that their memory design is the same as detailed in their patent ap-plication____ Note that it is possible that Sidense may have changed their memory design to be different from what is shown.... In speaking with Jack [Peng] earlier today, we speculated that Sidense may have eliminated the first doped region and replaced it with a shallow trench isolation [STI] of some sort.... [I]f in fact they have eliminated the first dope region, then they would NOT infringe our claims literally. If that is the case, then we would have to go through a “reissue” proceeding in the patent office that may take 2 years in order to modify our claims to include the situation where there is no first doped region.... The most crucial bit of information we need to find out is the design of their memory cell. We have been ... assuming that their patent application shows their memory cell. This is not always the case and it would be good if we could find out definitively how their memory cell is constructed. I still feel strongly about our case if they are using the memory cell described in their patent application.
J.A. 10601 (emphasis in original). That email made clear that: (1) the analysis by Perkins counsel up to that point had been based on the assumption that the design of Sidense’s 1T-Fuse cell was the same as the cell described in Sidense’s international patent application; and (2) if that "assumption was incorrect and Sidense had in fact replaced the first doped region (ie., the drain) with an STI region, then Si-dense “would NOT infringe [the] claims literally.” Id.
In June 2007, a Kilopass employee obtained a diagram of Sidense’s 1T-Fuse cell at a presentation, which confirmed that Sidense had replaced the drain with an STI. The Perkins counsel then sent the following e-mail to Kilopass officials: “My preliminary review of all the Sidense materials indicates that they have redesigned their memory cell to avoid infringement of our patents. Or at least make our case much tougher.” J.A. 10604 (emphasis added). Counsel also noted that Sidense employed an opposite wordline and bitline configuration, viz., the gate of each transistor was connected to a row wordline and the source was connected to a column bit-line. Counsel stated that he was “not so worried about the interchange of the bit line and word line,” but that he was “more worried about the fact that [Sidense’s cell] uses an [STI] on one side of the gate and not a [drain].” Id. at 10604-05.
Despite that advice from its Perkins patent counsel that Sidense did “NOT infringe [the] claims literally,” and that Kilo-pass’s ease was “much tougher,” Kilopass retained the law firm of Morrison Foerster (“MoFo”) to conduct another analysis. On March 19, 2008, counsel from MoFo emailed Kilopass’s CEO the following:
As we mentioned during the meeting, assuming Sidense’s NVM product uses ... [an] STI region[ ] (as opposed to two N + regions) to define the channel below the gate ... Kilopass appears to have a valid claim that Sidense’s NVM product is at least “equivalent” to the invention claimed by claim 1 of Kilopass’s '751 .patent, and therefore that Sidense infringes that patent.
As we also discussed, the next step is for us to conduct a more detailed investigation and analysis to confirm our initial*1307 impressions, which you asked us to complete before your April 2nd meeting with Kilopass’s Board.
J.A. 11487 (emphases added).
MoFo then- immediately began its “more detailed investigation” in order to meet Kilopass’s deadline. However, eight days later, on March 27, 2008, Kilopass instructed MoFo to stop all work on the project. The reason is unclear, but MoFo subsequently sent Kilopass an invoice for 44 hours of work “relating to Kilopass’s . investigation of potential infringement claims against Sidense.” J.A. 11490. The invoice was accompanied by “a preliminary infringement chart for the '751 patent reflecting [MoFo’s] analysis.” Id.
The infringement chart provided an analysis concerning the doctrine of equivalents and concluded that “Kilopass appears to have a reasonable argument that Si-dense’s field oxide region is equivalent to the doped region in claim 1 of the '751 patent, and therefore satisfies this limitation.” J.A. 11497. With regard to literal infringement, the MoFo counsel opined:
[I]f “doped region” is defined as an area on the semiconductor where the electrical properties have been changed, it may be difficult to argue that the field oxide region is a doped region.... If, however, “doped region” could reasonably be defined more broadly as simply an area to which a dopant is applied, then we may be able to argue that the field oxide region is a “doped region.” Determining the potential viability of this argument will require additional investigation, technical feedback from Kilopass and possibly input from an independent expert.
Id.
Although MoFo’s preliminary infringement chart opined favorably to Kilopass regarding the doctrine of equivalents, there is no evidence in the record that MoFo’s analysis was complete at that time, nor is there any evidence that Kilopass considered MoFo’s preliminary infringement chart in deciding to bring suit against Sidense. Kilopass retained MoFo to conduct an infringement analysis but terminated that relationship only eight days later. It does not appear that Kilo-pass was aware of how much work MoFo had done up to that point or that MoFo was even in the process of completing an infringement chart. In other words, it appears that Kilopass officials had already set their mind prior to learning of MoFo’s infringement analysis.
In 2008, a team of engineers led by Kilopass’s CTO sent an exemplary Sidense memory device to a third-party for reverse-engineering. ’ After receiving the results, the CTO created a slide presentation for a meeting of Kilopass’s board noting that Kilopass had retained the law firm SNR Denton to investigate potential infringement against Sidense. The CTO also stated that Denton “[a]ttorneys don’t have a conclusion yet as to the reading of 1st doped region and STI region” and that their “formal analysis [was] in progress.” J.A. 11296. However, in the CTO’s opinion, “[f]rom an engineer’s perspective,” Si-dense infringed under the doctrine of equivalents. Id.
Ill
On May 14, 2010, Kilopass filed suit against Sidense in the United States District Court for the Northern District of California, alleging both literal infringement and infringement under the doctrine of equivalents.
During the course of the proceedings, the district court discovered that Kilopass was making claim construction arguments to the United States Patent and Trademark Office Board of Patent Appeals and Interferences (the “Board”) that were directly contrary to those being made to the
Additionally, the district court ruled that Kilopass had attempted to amend its infringement contentions and advance previously undisclosed theories under the doctrine of equivalents long past the applicable deadline and without the court’s approval. Kilopass, 2012 WL 3545286, at *8. The district court noted that “Kilo-pass’s assertion of a new theory of equivalence is particularly inappropriate in light of evidence that Kilopass has known for many years that Sidense does not literally infringe its patents.” Id. at n. 8 (emphasis added).
After ruling that Kilopass had disavowed claim scope and striking evidence relating to Kilopass’s theory of equivalence, the district court granted Sidense summary judgment of noninfringement. Id. at *10. The district court reasoned that Kilopass ignored “numerous differences” between the patent claims and Si-dense’s accused products and that Peng, a named inventor on all three patents in suit, admitted before Kilopass filed suit that Kilopass had actually considered using Si-dense’s design but chose not to because it resulted in a larger cell size. Id. at *9.
Kilopass appealed the district court’s grant of summary judgment to this, court, and we summarily affirmed pursuant to Federal Circuit Rule 36. Kilopass,
Although Sidense was the prevailing party on the patent claims, the Court concludes that Sidense has not met its burden of establishing with “clear and convincing evidence” that Kilopass brought or maintained the prosecution of its patent infringement in bad faith. Kilopass performed substantial pre-fil-ing investigation and was able to obtain opinions from two different law firms that Kilopass had a non-baseless claim against Sidense. In addition, Kilopass’s Chief Technology Officer performed his own independent analysis based on the results of an outside intellectual-property forensics firm to determine that a patent-infringement suit was appropriate.
Kilopass,
Sidense now appeals the district court’s denial of its motion for § 285 attorneys’ fees. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
IV
A determination of whether to award attorneys’ fees under § 285 involves a two-step process. First, a district court must determine whether the prevailing party has proved by clear and convincing evidence, Ruiz v. A.B. Chance Co.,
A case may be deemed exceptional when there has been some material inappropriate conduct related to the matter in litigation, such as willful infringement, fraud or inequitable conduct in procuring the patent, misconduct during litigation, vexatious or unjustified litigation, conduct that violates [Federal Rule of Civil Procedure] 11, or like infractions.*1309 See, e.g., Cambridge Prods. Ltd. v. Penn Nutrients, Inc.,962 F.2d 1048 , 1050-51 (Fed.Cir.1992); Beckman Instruments, Inc. v. LKB Produkter AB,892 F.2d 1547 , 1551 (Fed.Cir.1989). Absent misconduct in the litigation or in securing the patent, sanctions may be imposed against the patentee only if both (1) the litigation is brought in subjective bad faith, and (2) the litigation is objectively baseless. Professional Real Estate Investors v. Columbia Pictures Industries,508 U.S. 49 , 60-61,113 S.Ct. 1920 ,123 L.Ed.2d 611 (1993); see also Forest Labs., Inc. v. Abbott Labs.,339 F.3d 1324 , 1329-31 (Fed.Cir.2003).
We review de novo whether the court applied the proper legal standard under § 285, and review the court’s factual findings for clear error. Brasseler, U.S.A. I, L.P. v. Stryker Sales Corp.,
Sidense argues that the district court erred in not finding this case “exceptional” under Brooks Furniture because Kilo-pass’s claims were objectively baseless and brought in subjective bad faith., In the alternative, Sidense urges us to change the standard for assessing exceptionality under § 285 as set out in Brooks Furniture and cases that followed. Kilopass 'responds that, as the trial court found, it had a good faith basis for bringing and pursuing its infringement claims against Si-dense’s products. Kilopass also argues that we should not alter our exceptional case standard.
V
A
Sidense first faults the district court for its reliance on our decision in MarcTec, LLC v. Johnson & Johnson,
It is unclear whether the district court, in its brief analysis, required Si-dense to demonstrate that Kilopass had actual knowledge that its claims were baseless. But, to the extent that the district court did require actual knowledge of objective baselessness, it erred. The language from iLOR and MarcTec that Si-dense interprets as requiring actual knowledge does not reflect this court’s law-governing § 285,
In addition to any’ errors the district court may have made by requiring too great a showing of subjective bad faith, the court erred by taking too narrow a view of the proof that can satisfy the subjective prong of the § 285 analysis. The court rejected Sidense’s request for fees based solely on Sidense’s purported failure to establish subjective bad faith. Kilopass,
Our case law has long held that, “in considering a party’s subjective state of mind, we are ‘to take into account the totality of the circumstances.’ ” Highmark,
The “should know” rubric obviously applies when a party attempts to escape the consequences of its conduct with the bare statement, “I didn’t know.” A party confronted with the difficulty of proving what is in an adversary’s mind must be at liberty to prove facts establishing that that adversary should have known, i.e. to prove facts that render the “I didn’t know” excuse unacceptable.
The primacy of objective evidence over assertions of subjective good faith or lack of knowledge is well established -in our § 285 case -law.
In discussing the requirement of bad faith to support a finding of exceptionality under § 285, Brooks Furniture did not speak at all to the type of proofs that are adequate to establish bad faith. Brooks Furniture thus did nothing to discourage courts from drawing an inference of bad faith from circumstantial evidence thereof when a patentee pursues claims that are devoid of merit. Factors such as the failure to conduct an adequate pre-suit investigation, vexatious or unduly burdensome litigation tactics, misconduct in procuring the patent, or an oppressive purpose are factors which can be indicative of bad faith. The wide variety of ways available to establish bad faith is why our case law has long required a party seeking fees under § 285 “to prove the other guilty'of bad faith litigation by clear and convincing evi
B
Sidense also argues that it should not even be required to prove that Kilopass acted in bad faith to show exceptionality. Proof of objective baselessness, in Si-dense’s view, should be enough to demonstrate exceptionality under § 285. Si-dense does not contend that a finding of exceptionality predicated on objective baselessness would demand that the district court shift fees, only that it should permit it to do so in its discretion in light of the totality of the circumstances. Si-dense’s argument is not without some force.
In 1946, Congress amended the then patent remedy statute, section 4921 of the Revised Statutes of 1874, to state that the “court may in its discretion award reasonable attorney'fees to the prevailing party.” Mach. Corp.,
The 1952 Patent Act slightly modified and incorporated the 1946 statute into the present day patent remedy statute, 35 U.S.C. § 285. See Mach. Corp.,
This section is substantially the same as [the] corresponding provision in R.S. 4921, [except] “in exceptional cases” has been added as expressing the intention of the present statute as shown by its legislative history and as interpreted by the courts.
S.Rep. No.1979, 82nd Cong., 2d Sess. (1952), reprinted in 1952 U.S.Code Cong. & Ad. News 2394, 2423; see also Rohm & Haas Co. v. Crystal Chem. Co.,
Thus, a central aim of § 285, as well as its predecessor, is to prevent an alleged infringer from suffering a “gross injustice.” The injury to the alleged infringer is the focus — an injury that can occur regardless of a plaintiffs state of mind. In the same vein, we have stressed that § 285 “is remedial and for the purpose of compensating the prevailing party for the costs it incurred in the prosecution or defense of a case where it would be grossly unjust ... to require it to bear its own costs.” Highmark,
Even Federal Rule of Civil Procedure 11 — which allows the imposition of punitive sanctions — does not involve inquiry into a party’s subjective good faith. Rule 11 allows courts to impose sanctions where a filing contains “claims, defenses, and other legal contentions [that] are [not] warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law.” Rule 11 functions to assure that parties assert litigation positions that are objectively reasonable at the time of filing. See Hall v. Bed Bath & Beyond, Inc.,
It does not seem, moreover, that the Supreme Court’s decision in Professional Real Estate Investors would require that we retain the requirement of subjective bad faith as a predicate to a finding of exceptionality. We cited Professional Real Estate Investors in Brooks Furniture for the proposition that both subjective bad faith and objective baselessness are required under § 285 in the absence of litigation misconduct or misconduct in securing the patent at issue. Brooks Furniture,
While Sidense’s arguments may constitute good faith assertions that our law should be something other than it is, as a panel, we are not able to entertain them. We must, and do, apply our current law, which requires proof of objective baselessness and subjective bad faith as' a prerequisite to a finding of exceptionality — the first prong in the court’s § 285 inquiry. See Brooks Furniture,
C
Sidense also contends that it should not be required to prove exceptionality by clear and convincing evidence, as our law currently requires. According to Sidense, proof by a preponderance of the evidence should be sufficient under § 285. Again, Sidense’s argument is not a frivolous one.
We have justified the requirement that a party prove exceptionality by clear and convincing evidence by citing the “ ‘presumption that an assertion of infringement of a duly granted patent is made in good
Other cases trace our requirement of clear and convincing evidence with respect to exceptionality under § 285 to our decision in Hycor Corp. v. Schlueter Co.,
The pronouncement in Reactive Metals, however, seems to reflect an unneeded expansion of the clear and convincing burden to all aspects of the § 285 analysis. A preponderance-of-the-evidence standard is typical in civil cases— particularly with respect to compensatory provisions such as § 285. See Herman & MacLean v. Huddleston,
Again, while we cannot fault Sidense for making good faith arguments asking that we change our current law, as a panel we may not indulge it. Thus, on remand, the court will apply a clear and convincing evidence standard to the exceptionality component of the § 285 inquiry.
D
Sidense finally urges an even greater overhaul of our standard for assessing ex-ceptionality under § 285, suggesting that fee shifting should be appropriate when a patentee has “filed and or maintained a patent infringement suit having little likelihood of success, under circumstances where it would be ‘unjust’ for the prevailing [defendant] to bear its own attorney fees.” Appellant’s Br. at 31. Sidense thus suggests that we depart from Brooks Furniture ’s requirement that a case be objectively baseless to support fee shifting in the absence of litigation misconduct or misconduct in securing the asserted patent. In Sidense’s view, fee shifting should only require an alleged infringer to show, “for the objective prong, that the patent owner brought and maintain[ed] the claims of infringement despite an objectively low likelihood that it would prevail on its infringement claim.” Appellant’s Br. at 49 (emphasis in original).
We find this to be Sidense’s weakest argument for a change in our jurisprudence. As we explained in iLOR,
Section 285 must be interpreted against the background of the Supreme Court’s decision in Professional Real Estate Investors, Inc. v. Columbia Pictures Industries, Inc.,508 U.S. 49 ,113 S.Ct. 1920 ,123 L.Ed.2d 611 (1993). There, the Court recognized that the right to bring and defend litigation implicated First Amendment rights and that bringing allegedly frivolous litigation could only be sanctioned if “objectively baseless in the sense that no reasonable litigant could realistically expect success on the merits.” Id. at 60,113 S.Ct. 1920
While Professional Real Estate Investors involved the assertion of claims under, the Sherman Act, and is, thus, not binding in the patent context, its
Instead, when a plaintiff presses reasonable, but weak, claims of infringement, a prevailing defendant must look to the many other bases for fee shifting under § 285. Our law sets out a number of such circumstances under which a case can be considered “exceptional” — providing significant flexibility that critics of our § 285 jurisprudence often overlook. Our decision in Perricone v. Medicis Pharmaceutical Corp.,
In sum, we vacate the district court’s decision denying the motion for attorneys’ fees and remand for consideration of whether Kilopass’s doctrine of equivalents theory was objectively baseless, and then, whether the totality of the circumstances demonstrates that Kilopass acted with subjective bad faith. If the district court determines that the case is exceptional after applying the correct legal standards, it should then determine, in its discretion, whether, to award attorneys’ fees under § 285. Alternatively, the trial court may, in its discretion, award fees based on alternative grounds for doing so, if such grounds exist.
VI
■ Because the district court’s decision was premised on an incorrect legal standard,
VACATED AND REMANDED.
Notes
. Indeed, if iLOR had attempted to increase the required showing for demonstrating subjective bad faith, it would have been unable to do so as a panel decision because such a change would contravene this court’s established precedent. See Eltech,
. In iLOR, we resolved the appeal on the objective prong and never reached the subjective prong. See iLOR,
. Because objective baselessness is an independent requirement under Brooks Furniture and can influence assessment of the subjective component under § 285, it is in the interests of judicial economy for a court to consider the objective merits of a case first, and then assess the parties’ proofs of subjective intent. See Prof'l Real Estate Investors,
. As Sidense argues, this appears to be how other circuit courts interpret identical language in the Lanham Act. See 15 U.S.C. § 1117(a) ("The court in exceptional cases may award reasonable attorney fees to the prevailing party.”). No other circuit court interpreting the Lanham Act has held that the Supreme Court's decision in Professional Real Estate Investors requires both objective base-lessness and subjective bad faith to support exceptionality when other independent bases for such a finding are absent. Instead, the circuit courts interpreting the Lanham Act allow exceptionality to be predicated on base-lessness alone, or on numerous other grounds, such as bad faith litigation, vexatious or unreasonable conduct, and similar misconduct. See, e.g., Retail Servs., Inc. v. Freebies Publishing,
. To the extent Sidense argues we should align our jurisprudence with that of other circuits interpreting the parallel fee shifting provision under the Lanham Act, we note that the circuits are split on the burden of proof they impose upon a prevailing party in these circumstances. Compare Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co.,
. We do not need to go so far as to overrule Brooks Furniture, as the concurrence proposes, to give trial courts flexibility to award fees. As we have explained here, in almost every case to address the issues, and in Brooks Furniture itself, the Brooks Furniture framework that requires a showing of objective baselessness and subjective bad faith only comes into play where other grounds for an award of fees do not exist.
Concurrence Opinion
concurring.
I welcome and join the court’s thoughtful analysis, legal scholarship, and improvement in the application of our fee-shifting law. I also endorse the changes proposed by Sidense that objective base-lessness alone should be sufficient for an award of attorney’s fees, and that proof by a preponderance of the evidence should suffice. Majority Op. at 1312 (“Sidense’s argument is not without some force.”); Majority Op. at 1314 (“Sidense’s argument is not a frivolous one.”).
I wish to add to some of the court’s reasoning with my hope that our court will return to its original binding precedent on fee-shifting. Our earlier jurisprudence governs over the subsequent case of Brooks Furniture. See Newell Cos., Inc. v. Kenney Mfg. Co.,
I.
As this court notes, in 1946, Congress amended the Revised Statutes of 1874 to state that the “court may in its discretion award reasonable attorney fees to the prevailing party.” Majority Op. at 1312; Mach. Corp. of Am. v. Gullfiber AB,
This court properly concludes that although the 1952 Patent Act slightly modified the 1946 statute by adding the word “exceptional” and removing the word “discretion,” this change did not depart from the original understanding. Majority Op. at 1312-13. And for a long period of time, this court did just that, reading 35 U.S.C. § 285 as applying a totality of the circumstances test. See, e.g., Mach. Corp.,
During this time, district courts found cases to be “exceptional” in a variety of Contexts. For example, “willful.or intentional infringement, ... vexatious or unjustified litigation, or other misfeasant behavior” was sufficient. Multiform Desiccants, Inc. v. Medzam, Ltd.,
This court’s first and binding reading of § 285 did not require a district court to independently parse through evidence related to subjective bad faith and evidence that the lawsuit was objectively baseless. Rather, these considerations were implicit in the district court’s obligation to consider the totality of circumstances.
II.
In 2005, a panel of this court in Brooks Furniture drastically altered this court’s jurisprudence regarding 35 U.S.C. § 285: “Absent misconduct in conduct of the litigation or in securing the patent, sanctions may be imposed against the patentee only if both (1) the litigation is brought in subjective bad faith, and (2) the litigation is objectively baseless.” Brooks Furniture Mfg. v. Dutailier, Inc.,
As this court notes, Professional Real Estate Investors rests on antitrust concerns that are not present in the § 285 analysis. Majority Op. at 1313-14. In the antitrust context, both subjective bad faith and objective baselessness might be reasonable to protect parties from claims for punitive damages. See 15 U.S.C. §§ 1, 2. On the other hand, 35 U.S.C. § 285 is a compensatory fee-shifting statute. Highmark, Inc. v. Allcare Health Mgt. Sys.,
In Christiansburg, the Supreme Court analyzed section 706(k) of Title VII of the Civil Rights Act of 1964. The Title VII language is very similar to the 1946 patent remedy statute. The Court in Christians-burg described section 706(k) as “flexible, authorizing the award of attorney’s fees to either plaintiffs or defendants, and entrusting the effectuation of the statutory policy to the discretion of the district courts.” Christiansburg,
Brooks Furniture, to my eyes, does not fully account for Supreme Court precedent and does not align with decisions of other circuit courts of appeals. For example, the Lanham Act’s fee-shifting clause, 15 U.S.C. § 1117(a), is identical to section 285: “The court in exceptional cases may award reasonable attorney fees to the prevailing party.” 15 U.S.C. § 1117. Yet, in
Thus, in this setting, this court should have remained true to its original reading of 35 U.S.C. § 285. Eltech,