NOTE: This disposition is nonprecedential. 

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

ICON HEALTH & FITNESS, INC.,

Plaintiff-Appellant,

v.

OCTANE FITNESS, LLC,

Defendant-Cross-Appellant.

______________________ 

2011-1521, -1636

______________________ 

Appeals from the United States District Court for the 

District of Minnesota in No. 09-CV-0319-ADM-SER, 

Judge Ann D. Montgomery.

______________________ 

Decided: August 26, 2014

______________________ 

LARRY R. LAYCOCK, Maschoff Brennan Laycock Gilmore Israelsen & Wright, of Salt Lake City, Utah, for 

plaintiff-appellant. With him on the brief was DAVID R.

WRIGHT. 

RUDOLPH A. TELSCHER, JR., Harness Dickey & Pierce, 

PLC, of St. Louis, Missouri, for defendant-cross-appellant. 

With him on the brief was KARA R. FUSSNER. 

______________________ 
2 ICON HEALTH & FITNESS v. OCTANE FITNESS

Before NEWMAN, MAYER,

∗ and LOURIE, Circuit Judges.

PER CURIAM. 

This case has returned to us on remand from the Supreme Court of the United States. In its earlier appearance in this court, ICON Health & Fitness, Inc. (“ICON”)

appealed from the decision of the United States District 

Court for the District of Minnesota, which granted summary judgment that two families of elliptical machines 

sold by Octane Fitness, LLC (“Octane”) did not infringe 

certain claims of ICON’s U.S. Patent 6,019,710 (the “’710 

patent”) (Appeal No. 2011-1521). ICON Health & Fitness, 

Inc. v. Octane Fitness, LLC, No. 09-0319, 2011 WL

2457914 (D. Minn. June 17, 2011). Octane cross-appealed 

from the district court’s denial of a motion to find the case 

exceptional and to award attorney fees pursuant to 35 

U.S.C. § 285 (Appeal No. 2011-1636). ICON Health &

Fitness, Inc. v. Octane Fitness, LLC, No. 09-0319, 2011 

WL 3900975 (D. Minn. Sept. 6, 2011). 

We affirmed on the merits, concluding that the district court did not err in its underlying claim construction 

or in granting summary judgment of noninfringement. 

ICON Health & Fitness, Inc. v. Octane Fitness, LLC, 496 

F. App’x 57, 58 (Fed. Cir. 2012). On cross-appeal, we also 

affirmed the district court’s denial of Octane’s motion to 

find the case exceptional and to award attorney fees, 

declining at that time to revisit our standard for exceptionality first articulated in Brooks Furniture Manufacturing, Inc. v. Dutailier International, Inc., 393 F.3d 1378 

(Fed. Cir. 2005). ICON, 496 F. App’x at 65.

Octane filed a petition for writ of certiorari in the Supreme Court on the § 285 issue, which the Court granted. 

∗

 Pursuant to Fed. Cir. Rule 47.11, Circuit Judge 

Mayer has been designated to replace Circuit Judge 

Rader, now retired, on this panel.

 
ICON HEALTH & FITNESS v. OCTANE FITNESS 3

Octane Fitness, LLC v. ICON Health & Fitness, Inc., 571 

U.S. __, 134 S. Ct. 49 (2013). Simultaneously with its 

decision in Highmark Inc. v. Allcare Health Management

System, Inc., 572 U.S. __, 134 S. Ct. 1744, 1749 (2014), 

which vacated our judgment in that case and changed the 

standard of review of a § 285 determination on appeal, the 

Court reversed this court’s decision in Octane’s crossappeal, changed the standard for determination of an 

“exceptional case,” and remanded for further proceedings 

consistent with its opinion. Octane Fitness, LLC v. ICON 

Health & Fitness, Inc., 572 U.S. __, 134 S. Ct. 1749, 1758 

(2014). Supreme Court review of the judgments on the 

merits with respect to claim construction and noninfringement was not requested, and those judgments 

remain undisturbed. See ICON, 496 F. App’x at 58–65. 

However, in order for the district court to apply the 

Supreme Court’s guidance from Octane and Highmark to 

the facts of this case, we vacate the district court’s denial 

of Octane’s motion to find the case exceptional and to 

award attorney fees, and remand for further consideration

of the § 285 motion. 

I 

ICON owns the ’710 patent directed to an elliptical 

machine that allows for adjustable stride length. ICON 

sued Octane, alleging that Octane’s Q45 and Q47 elliptical machines infringed claims 1–5, 7, and 9–10 of the ’710 

patent. The district court granted Octane’s motion for 

summary judgment, concluding that Octane’s machines 

did not infringe the ’710 patent either directly in view of 

the court’s construction of certain claim limitations or 

under the doctrine of equivalents. ICON, 2011 WL 

2457914, at *8–14. 

Octane subsequently moved the district court to find 

the case exceptional under the “totality of the circumstances” and to award attorney fees under § 285. Def.’s 

Mem. Supp. Mot. Att’y Fees & Costs, No. 09-0319, 2011 
4 ICON HEALTH & FITNESS v. OCTANE FITNESS

WL 11734262 (D. Minn. July 18, 2011), J.A. 2633–34 

(citing Yamanouchi Pharm. Co. v. Danbury Pharmacal, 

Inc., 231 F.3d 1339, 1346–47 (Fed. Cir. 2000)). Octane 

argued that ICON’s infringement action was objectively 

baseless because the district court had rejected ICON’s 

purportedly frivolous contentions relating to the construction of certain means-plus-function claim limitations and 

infringement of Octane’s accused elliptical machines. 

Octane asserted that ICON’s allegations were “unreasonable and unsupportable” because the court’s noninfringement determination “should have been a foregone 

conclusion to anyone who visually inspected its machines.” ICON, 2011 WL 3900975, at *2 (citations omitted). Octane also argued that ICON’s case was brought in 

subjective bad faith as supposedly evidenced by: (i) an email exchange between two ICON sales executives suggesting that the litigation was undertaken as a matter of 

commercial strategy; and (ii) the fact that ICON is a 

larger company that never commercialized its ’710 patent. 

Id. at *4.

The district court applied our then-authoritative test, 

which required Octane to show by clear and convincing 

evidence that ICON’s claim was objectively baseless and 

brought in subjective bad faith. See Brooks Furniture, 

393 F.3d at 1381–82. The court found both that “[t]his 

case is not exceptional, and an award of attorney’s fees is 

not warranted.” ICON, 2011 WL 3900975, at *4. 

The court specifically determined that, although ultimately unsuccessful, ICON’s rejected claim construction 

arguments and infringement contentions were not objectively baseless, frivolous, or unreasonable. Id. at *2–3. 

The court concluded that the claim construction issues 

were not easily resolved and stated that it did not agree 

with Octane that the conclusions relating to noninfringement were so easily reached and that it had no reason to 

doubt ICON’s pre-suit investigation because “[t]he visible 

differences” between Octane’s machines and the patented 
ICON HEALTH & FITNESS v. OCTANE FITNESS 5

invention “did not make it unreasonable to rely on testing 

and expert opinions as to infringement.” Id. at *2–3.

Although noting that “the inquiry could end [t]here,” 

the district court further determined that ICON had not 

brought suit in bad faith and that attorney fees were not 

warranted. Id. at *3–4. The district court therefore

denied Octane’s § 285 motion. 

II

On Octane’s cross-appeal, we affirmed the district 

court’s denial of Octane’s motion to find the case exceptional and to award attorney fees, finding no clear error in 

the district court’s factual findings or conclusions and 

declining at that time to reconsider the standard for 

exceptionality articulated in Brooks Furniture. Id. at 65.

On petition for writ of certiorari from that aspect of 

our decision of October 24, 2012, from which we denied 

rehearing on December 27, 2012, Octane challenged only 

the propriety of our standard for finding a patent case 

exceptional under Brooks Furniture; Octane did not 

challenge the factual findings and conclusions underlying 

the district court’s denial of its § 285 motion. 

The Supreme Court abrogated both the clear and convincing evidence standard and the two-part test for objective baselessness and subjective bad faith of Brooks 

Furniture. Octane, 134 S. Ct. at 1757–58. The Court held 

that within the context of § 285 “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. at 1756. The Court further concluded that 

“[d]istrict courts may determine whether a case is ‘exceptional’ in the case-by-case exercise of their discretion, 

considering the totality of the circumstances.” Id. The 

Court explained that there is no precise rule or formula 
6 ICON HEALTH & FITNESS v. OCTANE FITNESS

for making those determinations and noted that district 

courts should exercise “equitable discretion” in considering a nonexclusive list of factors that could include “‘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.’” Id. at 1756 n.6 (quoting

Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994)). 

The Supreme Court also observed that “a case presenting 

either subjective bad faith or exceptionally meritless 

claims may sufficiently set itself apart from mine-run 

cases to warrant a fee award.” Id. at 1757. 

The Supreme Court’s decision in Octane did not, however, revoke the discretion of a district court to deny fee 

awards even in exceptional cases. Long before Brooks 

Furniture, we held that “an exceptional case does not 

require in all circumstances the award of attorney fees.” 

S.C. Johnson & Son, Inc. v. Carter-Wallace, Inc., 781 F.2d 

198, 201 (Fed. Cir. 1986); see also Gardco Mfg., Inc. v. 

Herst Lighting Co., 820 F.2d 1209, 1215 (Fed. Cir. 1987) 

(“After the district court determines that a case is exceptional, there remains in every case its freedom to exercise 

its discretion informed by the court’s familiarity with the 

matter in the litigation and the interest of justice.” (internal quotations omitted)). Indeed, in the companion case 

Highmark, the Court held that “[b]ecause § 285 commits 

the determination whether a case is ‘exceptional’ to the 

discretion of the district court, that decision is to be 

reviewed on appeal for abuse of discretion” and that 

district courts should have discretion in “all aspects of 

[the] § 285 determination.” Highmark, 134 S. Ct. at 

1748–49. 

Accordingly, affording the district court in this case 

its full discretion following the Supreme Court’s decision 

in Highmark and in view of the new standard for determining whether a case is exceptional as articulated by the 

Court in Octane, we vacate the district court’s judgment 
ICON HEALTH & FITNESS v. OCTANE FITNESS 7

denying Octane’s motion both to find the case exceptional 

and to award attorney fees under § 285. We remand that 

issue to the district court for application in the first 

instance of the new standard whether, under the totality 

of the circumstances, this case “stands out from others 

with respect to the substantive strength” of ICON’s litigation position or was litigated in an unreasonable manner. 

Octane, 134 S. Ct. at 1756. 

CONCLUSION

In view of the foregoing, we vacate the district court’s 

denial of Octane’s motion to find the case exceptional and 

to award attorney fees pursuant to 35 U.S.C. § 285 and 

remand for further consideration of that issue. The 

decisions relating to claim construction and noninfringement of ICON’s ’710 patent, as recited in our previous 

opinion, are not affected by this remand. 

VACATED IN PART AND REMANDED