SunEarth, Inc., a California corporation; The Solaray Corporation, a Hawaiian corporation, Plaintiffs-Appellants,
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
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
E. Proffitt and Stephen B. Mosier, Hayes Soloway P.C.,
Tucson, Arizona, for Plaintiffs-Appellants.
J. Foster, Hayes Messina Gilman & Hayes LLC, Boston,
Massachusetts; Michael A. Albert and Eric J. Rutt, Wolf
Greenfield & Sacks P.C., Boston, Massachusetts; for
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.
Act / Attorneys' Fees
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.
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.
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.
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.
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
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 ...