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SunEarth, Inc. v. Sun Earth Solar Power Co., Ltd.

United States Court of Appeals, Ninth Circuit

October 24, 2016

SunEarth, Inc., a California corporation; The Solaray Corporation, a Hawaiian corporation, Plaintiffs-Appellants,
v.
Sun Earth Solar Power Co., Ltd., FKA Ningbo Solar Electric Power Co., Ltd., a Chinese limited liability company; NBSolar USA Inc., a California corporation, Defendants-Appellees.

          Submitted En Banc October 14, 2016[*]San Francisco, California

         Appeal from the United States District Court for the Northern District of California, D.C. No. 4:11-cv-04991-CW Claudia Wilken, District Judge, Presiding

          Clark E. Proffitt and Stephen B. Mosier, Hayes Soloway P.C., Tucson, Arizona, for Plaintiffs-Appellants.

          James J. Foster, Hayes Messina Gilman & Hayes LLC, Boston, Massachusetts; Michael A. Albert and Eric J. Rutt, Wolf Greenfield & Sacks P.C., Boston, Massachusetts; for Defendants-Appellees.

          Before: Sidney R. Thomas, Chief Judge, and M. Margaret McKeown, Kim McLane Wardlaw, William A. Fletcher, Ronald M. Gould, Richard A. Paez, Richard R. Clifton, Jacqueline H. Nguyen, Paul J. Watford, John B. Owens, and Michelle T. Friedland, Circuit Judges.

         SUMMARY[**]

         Lanham Act / Attorneys' Fees

         The en banc court held that following Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749 (2014), district courts analyzing a request for attorney fees under the Lanham Act should examine the totality of the circumstances to determine if the case was exceptional, exercising equitable discretion in light of the nonexclusive factors identified in Octane Fitness and Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994), and using a preponderance of the evidence standard. Pursuant to Highmark, Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S.Ct. 1744 (2014), the court of appeals' review of the district court's decision on fees awarded under the Lanham Act is for abuse of discretion.

         The en banc court overruled precedent to the contrary and agreed with the majority of other circuits. The en banc court remanded the case to the three-judge panel for the resolution of remaining issues.

          OPINION

          Per Curiam

         We voted to rehear this case en banc to reconsider our jurisprudence concerning fee awards in cases filed pursuant to the Lanham Act, 15 U.S.C. § 1051 et seq.

         Section 35(a) of the Lanham Act provides that "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." 15 U.S.C. § 1117(a). Historically, we have reviewed de novo a district court's finding as to whether a defendant's infringement was "exceptional" within the meaning of the Lanham Act's fee-shifting provision. See, e.g., Secalt S.A. v. Wuxi Shenxi Constr. Mach. Co., 668 F.3d 677, 687 (9th Cir. 2012). We have required that a plaintiff show that a defendant engaged in "malicious, fraudulent, deliberate or willful" infringement. See, e.g., Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1409 (9th Cir. 1993), superseded by statute on other grounds, Trademark Amendments Act of 1999, Pub. L. No. 106-43, 113 Stat. 218.

         We interpret the fee-shifting provisions in the Patent Act, 35 U.S.C. § 285, and the Lanham Act in tandem. See Int'l Olympic Comm. v. S.F. Arts & Athletics, 781 F.2d 733, 738-39 (9th Cir.), as amended, 789 F.2d 1319 (9th Cir. 1986), aff'd, 483 U.S. 522 (1987). The fee-shifting provisions in both acts are "parallel and identical." Georgia-Pacific Consumer Prods. LP v. von Drehle Corp., 781 F.3d 710, 720 (4th Cir. 2015), as amended (Apr. 15, 2015). Thus, we rely on an interpretation of the fee-shifting provision in one Act to guide our interpretation of the parallel provision in the other. See Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749, 1756 (2014) (interpreting the Patent Act by relying in part on "the Lanham Act's identical fee-shifting provision").

         The Supreme Court has recently clarified how courts should analyze fee requests under the Patent Act. The Supreme Court held that a district court analyzing a request for fees under the Patent Act should look to the "totality of the circumstances" to determine if the infringement was exceptional. Octane Fitness, 134 S.Ct. at 1756. The Supreme Court explained 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." Id. The Court eschewed a "precise rule or formula for making these determinations" and instructed that "equitable discretion should be exercised 'in light of the considerations we have identified.'" Id. (quoting Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994)). Specifically, the Court cited a "'nonexclusive' list of 'factors, ' including '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 ...


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