ROMAG FASTENERS v. FOSSIL:  August 9, 2017.  Before Newman (concurring-in-part, dissenting-in-part), Dyk (majority), and Hughes.

Takeaway:

• The Lanham Act should have the same standard for recovering attorney’s fees as the Patent Act in light of Octane.

• In determining whether a case is exceptional for 35 U.S.C. § 285 fees, a district court must consider the conduct of the party seeking attorney’s fees under Octane’s totality-of-the-circumstances inquiry.

Procedural Posture:

Fossil appealed and Romag cross-appealed from D. Conn.’s decision awarding attorney’s fees to Romag under the Patent Act and CUPTA, but not under the Lanham Act.  CAFC vacated and remanded.

Synopsis:

• Attorney’s Fees–Lanham Act: The CAFC concluded that the Second Circuit would follow other circuits and hold that, in light of Octane, the Lanham Act should have the same standard for recovering attorney’s fees as the Patent Act.  The identical language of the Lanham Act and the Patent Act for attorney’s fees and the legislative history of the Lanham Act supported using the same standard.  The CAFC left to the district court in the first instance on remand the issue whether to award attorney’s fees under the Lanham Act on the Octane

• Attorney’s Fees–Patent Act: The district court made several errors in awarding fees under 35 U.S.C. § 285 to Romag.  The district court clearly erred in concluding that Fossil did not formally withdraw the invalidity defenses of anticipation and obviousness until after the trial because the record established withdrawal before trial.  The district court also made no finding that Fossil’s defenses of anticipation and obviousness were objectively unreasonable.  The district court erred in holding that Fossil’s indefiniteness defense bordered on frivolous relying on Judge Young’s ruling, which appeared to grant summary judgment to Romag because Fossil’s indefiniteness argument was precluded by the claim construction.  The district court also erred in declining to consider Romag’s earlier litigation misconduct in its totality of circumstances analysis.

• Other Opinions: Judge Newman concurred that remand was appropriate for determination by the district court of whether attorney fees were warranted for the trademark infringement on the Octane  Judge Newman dissented from the majority’s opinion on attorney’s fees with respect to the patent issue.  The district court did not abuse its discretion in concluding that withdrawal of the invalidity counts was not achieved until after trial had begun and that this case stood out from others in the manner of its litigation.  Fossil persisted in retaining the invalidity defenses and counterclaims for over three years, and repeatedly equivocated as the trial date approached.