Roberts, Scalia, Kennedy, Thomas, Ginsburg, Breyer, Alito, Sotomayor, Kagan.
Argued February 26, 2014
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
[134 S.Ct. 1745] Syllabus [*]
Petitioner Highmark Inc. moved for fees under the Patent Act's fee-shifting provision, which authorizes a district court to award attorney's fees to the prevailing party in "exceptional cases." 35 U.S.C. §285. The District Court found the case "exceptional" and granted Highmark's motion. The Federal Circuit, reviewing the [134 S.Ct. 1746] District Court's determination de novo, reversed in part.
All aspects of a district court's exceptional-case determination under §285 should be reviewed for abuse of discretion. Prior to Octane Fitness, LLC v. ICON Health & Fitness, Inc., ante, p. ___, 134 S.Ct. 1749, 188 L.Ed.2d 816, this determination was governed by the framework established by the Federal Circuit in Brooks Furniture Mfg., Inc. v. Dutailier Int'l, Inc., 393 F.3d 1378. Octane rejects the Brooks Furniture framework as unduly rigid and holds that district courts may make the exceptional-case determination under §285 in the exercise of their discretion. The holding in Octane settles this case. Decisions on "matters of discretion" are traditionally "reviewable for 'abuse of discretion, '" Pierce v. Underwood, 487 U.S. 552, 558, 108 S.Ct. 2541, 101 L.Ed.2d 490, and this Court previously has held that to be the proper standard of review in cases involving similar determinations, see, e.g., id., at 559, 108 S.Ct. 2541, 101 L.Ed.2d 490; Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 405, 110 S.Ct. 2447, 110 L.Ed.2d. 359. The exceptional-case determination is based on statutory text that "emphasizes the fact that the determination is for the district court, " Pierce, 487 U.S., at 559, 108 S.Ct. 2541, 101 L.Ed.2d 490; that court "is better positioned" to make the determination, id., at 560, 108 S.Ct. 2541, 101 L.Ed.2d 490; and the determination is "multifarious and novel, " not susceptible to "useful generalization" of the sort that de novo review provides, and "likely to profit from the experience that an abuse-of discretion rule will permit to develop, " id., at 562, 108 S.Ct. 2541, 101 L.Ed.2d 490. Pp. 1748-1749, 188 L.Ed.2d, at 833-834.
687 F.3d 1300, vacated and remanded.
Neal K. Katyai, Washington, DC, for Petitioner.
Brian H. Fletcher, for the United States as amicus curiae, by special leave of the Court, supporting the Petitioner.
Donald R. Dunner, Washington, DC, for Respondent.
Cynthia E. Kernick, James C. Martin, Thomas M. Pohl, Reed Smith LLP, Pittsburgh, PA, Neal Kumar Katyai, Counsel of Record, Dominic F. Perella, David M. Ginn, R. Craig Kitchen, Amanda K. Rice, Jonathan D. Shaub, Hogan Lovells U.S. LLP, Washington, DC, for Petitioner.
Erik R. Puknys, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Palo Alto, CA, Donald R. Dunner, Counsel of Record, Don O. Burley, Jason W. Melvin, Cora R. Holt, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, for Respondent.