Photo of Michael Marion

Michael Marion is an Associate in the firm and is based in our Washington, DC office. His intellectual property practice focuses primarily on patent litigation. Michael’s work encompasses client counseling and case strategy, motion practice, discovery practice and management, expert discovery, and Markman and summary judgment briefing and argument. He has litigated cases in the Court of Appeals for the Federal Circuit, the International Trade Commission, and numerous US District Courts.

After an eight-year battle through the Federal Courts, the fight over attorneys’ fees in Octane Fitness v. ICON Health & Fitness has likely reached its end with the Federal Circuit upholding the hotly disputed $1.6 million award to Defendant Octane Fitness. This case previously made it up to the Supreme Court, which overturned the Federal Circuit’s prior standard for determining exceptional cases under 35 U.S.C. § 285. Following a remand to the District Court applying the new totality-of-the-circumstances test established by the Supreme Court, the parties again appealed to the Federal Circuit.

Continue Reading Octane Fitness Hits the Showers: Federal Circuit Affirms Attorneys’ Fees Award in Landmark Case

A flurry of activity from various courts this past week on “exceptional cases” under Section 285 of the Patent Act provided notable guidance for practitioners and patent owners, with a particular emphasis on the motivation and conduct of the litigants. We provide a short synopsis of these cases.

By way of context, in 2014, the Supreme Court in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), instructed courts to apply a totality of the circumstances test when evaluating whether a case is “exceptional” under 35 U.S.C. § 285. If a case is found to be exceptional within the meaning of the statute, monetary sanctions and fee-shifting may be imposed. This totality of the circumstances analysis was a substantial departure from the previous Federal Circuit tests, which were uniformly viewed as more rigid. Some of the factors the Supreme Court suggested district courts could consider included “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.” Our previous discussion of exceptional cases under Section 285 can be found here.

Continue Reading Pumping Up Exceptional Cases Under the Octane Fitness Standard

Supreme-Court-seal II. jpgThe U.S. Supreme Court announced today that it will review whether the U.S. Trademark Office can deny registration of offensive trademarks or whether such prohibition violates the First Amendment. The dispute affects the constitutionality of Section 2(a) of the Lanham Act, which prohibits registration of such marks. The case originated in 2013 following the Office’s refusal to register THE SLANTS as a mark for an Oregon rock band on grounds that it was a derogatory slang phrase for people of Asian descent.

To read the full blog post on our Copyright & Trademark Matters blog, please click here.


This past Thursday the Brexit vote sent shockwaves around world, including the IP community and in particular with respect to IP rights in the UK and Europe. But concerns at the moment are speculative as nothing yet has changed.

The UK has only voted on whether to leave the EU. The UK has not actually left the EU, nor is any such departure likely for at least two years from the date the UK officially notifies the EU of its plan to withdraw. Modifications to any IP laws will come only through terms of the Brexit negotiated between the UK and the EU in the coming months and years.

In the meantime, we can predict and highlight potential impacts that could result from a UK exit from the European Union.

Continue Reading Keep Calm and IP On: Planning for UK IP Post-Brexit

shutterstock_114454435The Federal Circuit rejected an attempt by accused infringers of U.S. intellectual property rights to have claims litigated in a foreign country in Halo Creative & Design Ltd. v. Comptoir Des Indes, Inc., No. 15-1375 (Fed. Cir. Mar. 14, 2016).  The unanimous panel decision expressed a strong preference for U.S. courts over foreign courts to resolve disputes over U.S. IP infringement, particularly where the alleged infringing acts occurred in the United States.

Plaintiff Halo, a Hong Kong company, sued a Canadian company and a Canadian resident in federal district court for infringement of U.S. design patents, U.S. trademark rights, and U.S. copyrights, all related to Halo’s furniture designs. The district court dismissed the case on forum non conveniens grounds, finding the defendants’ home country of Canada a “superior forum” to resolve the dispute.

Continue Reading Maintaining a Wall Around U.S. Intellectual Property: Federal Circuit says Disputes over U.S. Patents, Trademarks and Copyrights should be Decided by U.S. Courts

The International Trade Commission proposed a series of new procedural rules, which were published in the Federal Register on September 24, 2015. The notice of proposed rulemaking can be found HERE. This blog post provides a summary of the more notable proposed changes to the procedural rules.

Severance of Investigations into Multiple Proceedings

Under its current practice, the Commission institutes a single investigation for each complaint received, irrespective of the number of patents, parties, products, or technologies involved. Under the proposed rules, the Commission could institute multiple proceedings “where necessary to limit the number of technologies and/or unrelated patents asserted in a single investigation” based from a single complaint.  The Administrative Law Judge (ALJ) would also have authority to sever cases. This severance by the ALJ would be based upon either a motion or the ALJ’s judgment that severance is necessary to allow efficient adjudication, and would be based on the same legal standard as severance by the Commission. Continue Reading U.S. International Trade Commission Publishes Proposed Changes to Procedural Rules of Practice

The most hotly debated issue at this year’s GCR IP & Antitrust Conference, held on April 14 in Washington, DC, was the DOJ’s guidance issued in a February business review letter to the Institute of Electrical and Electronics Engineers (IEEE). The business review letter says that the DOJ does not intend to challenge proposed changes to the IEEE Standards Association’s patent policy aimed at encouraging licensing of standard-essential patents on reasonable and nondiscriminatory (RAND) terms. This alert summarizes the discussions, the DOJ’s defense of its business review letter, and the implications for the high-tech industry.


In a recent decision, the International Trade Commission rejected a petitioner’s attempt to use allegations of unfair competition and unfair acts as a possible way of working around the Federal Circuit’s bar on claims of induced infringement.

The Commission issued its Notice of Investigation in Certain Audio Processing Hardware and Software and Products Containing Same, ITC Inv. No. 337-TA-949 on March 12, 2015. The complaint filed by Andrea Electronics Corporation alleges that Respondents Acer, ASUSTek, Dell, Hewlett Packard, Lenovo, Toshiba, and Realtek Semiconductor unlawfully import into the United States and sell to end users certain microphone products, audio codecs, audio processing software, and personal computers (including laptops, desktops, notebooks, and tablets) that induce infringement of Andrea’s patents. Certain Audio Processing Hardware and Software and Products Containing Same, ITC Inv. No. 337-TA-949, Complaint (Feb. 9, 2015).

Continue Reading USITC Declines to Institute Investigation of Induced Patent Infringement as Unfair Method of Competition or Unfair Acts

The U.S.I.T.C. instituted its first investigation under its 100-day pilot program for early determination of a specific potentially case-dispositive issue.

On March 12, 2015, the Commission issued its Notice of Investigation in Certain Audio Processing Hardware and Software and Products Containing Same, ITC Inv. No. 337-TA-949. The complaint filed by Andrea Electronics Corporation alleges that the Respondents unlawfully import into the United States certain microphone inputs, microphones and microphone arrays, audio codecs, audio processing software, and personal computers (including laptops, desktops, notebooks, and tablets). The named Respondents include Acer, ASUSTek, Dell, Hewlett Packard, Lenovo, Toshiba, and Realtek Semiconductor. Certain Audio Processing Hardware and Software and Products Containing Same, ITC Inv. No. 337-TA-949, Complaint (Feb. 9, 2015).

Continue Reading U.S. International Trade Commission Institutes Investigation Under 100-Day Pilot Program Examining Complainant’s Standing to File Suit

On November 17, 2014, Administrative Law Judge Dee Lord amended her Ground Rules to permit parties filing motions to file a reply brief without first seeking leave from the ALJ. This presents a significant change in motions practice before ALJ Lord that differentiates her motions practice from the procedures used by the other Administrative Law Judges at the U.S. International Trade Commission (USITC).

By way of background, under the Commission’s rules, “[t]he moving party shall have no right to reply, except as permitted by the administrative law judge or the Commission.” 19 C.F.R. § 210.15. The practice at the ITC before the other ALJs is that a party seeking to file a reply brief must file a separate motion seek permission to file a reply brief. The moving party must show good cause for the granting of the right to file a reply brief, and attach the proposed reply brief to the motion for permission to reply. The non-moving party to the underlying motion then has the opportunity to oppose the motion for a reply brief,

The amendment to ALJ Lord’s ground rules in Investigation Nos. 925 and 935 provides that “the moving party is permitted to file a reply brief within three (3) days of the filing of a response to the motion without seeking leave from the Administrative Law Judge.” In the Matter of Certain Personal Transporters, Components Thereof, and Manuals Therefor, No. 337-TA-935, Order No. 3 (Nov. 17, 2014). The order also states sur-reply briefs will “not be permitted absent extraordinary circumstances.” As a result, ALJ Lord breaks from her colleagues at the USITC, though this change brings her motions practice more in line with district court practice, and simplify procedures for parties appearing before her.