Octane Fitness v. Icon Health and Fitness holds a special place in United States Supreme Court history for more than its central place in patent law: it marked just the third time in more than 20 years that a protestor disrupted oral arguments. Rudolph Telscher, a 1990 graduate of the Iowa College of Law arguing his first case before the high court, was about to deliver his rebuttal argument when a man in the gallery denounced the Supreme Court’s 2010 Citizens United decision before security removed him.
The sensation of the protest has passed, but the court’s 9-0 decision earlier this year in Octane’s favor left a more enduring mark on patent law. At issue in Octane were the appropriate circumstances for district court judges to award attorneys’ fees to the prevailing party in a patent infringement case. In a unanimous decision, the Supreme Court struck down the rigid analytical framework applied by the United States Court of Appeals for the Federal Circuit and directed courts to perform a broader, totality-of-the-circumstances review.
In a November 14, 2014 presentation to the Intellectual Property Law Society, Mr. Telscher, an intellectual property law litigator at the St. Louis office of Harness Dickey, discussed the importance of the Octane decision. A recent increase in weak patent claims has clogged the patent law courts and led to millions of dollars in wasted litigation, he explained. The Octane decision strengthens an existing statutory deterrent against bringing such claims.
Kasturi Sengupta, a 1L who worked as an IP litigation paralegal in the Silicon Valley office of Weil, Gotshal & Manges before coming to law school, found Telscher’s behind-the-scenes perspective on Octane fascinating. “I was lucky to learn more about Octane, which was frequently cited in many cases I worked on because of its relevance to patent litigation strategy and reform.”
Sengupta also appreciated Telscher’s willingness to answer questions and engage with students individually. “He was exceptionally helpful in responding to my concerns about practicing in patent litigation without an engineering or hard science background,” she said.
--Jay Stirling | November 21, 2014