10.7.3 Costs
10.7.3.1 Court fees
The award of costs under § 284 refers to FRCP 54(d)(1), which provides that “costs other than attorneys’ fees shall be allowed as of course to the prevailing party unless the court otherwise directs.” Additionally, 28 U.S.C. § 1920 lists the types of costs the prevailing party may recover under FRCP 54(d)(1), including reporter fees, docket fees and compensation for court-appointed experts.
10.7.3.2 Attorneys’ fees
Section 285 of the Patent Act authorizes the award of reasonable attorneys’ fees in “exceptional cases.” The purpose is to give the court the power to shift the burden of unnecessary and vexatious litigation onto the party responsible for it. Like enhanced damages, the award of attorneys’ fees lies in the trial court’s discretion.
The Supreme Court has held 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.”277 The court makes this determination in its discretion based on the “totality of the circumstances.”278 In making this assessment, it may consider, as a “‘nonexclusive’ list of ‘factors”’: “frivolousness, motivation, objective unreasonableness (both in the factual and legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence” as well as “either subjective bad faith or exceptionally meritless claims.”279 The district court also has discretion to decline to award fees even in exceptional cases.280 The district court should, however, set forth its reasons for declining to award fees despite the finding of litigation misconduct and exceptional case status.281
Attorneys’ fees motions can be brought before or after entry of judgment, but no later than 14 days after entry of judgment.282 When brought by a patent holder, a motion for attorneys’ fees usually is brought in conjunction with a request for enhanced damages, as the same facts usually support both motions.