Attorney Fees and Claim Construction in Patent Litigation: More Federal Circuit Deference to the District Courts?

Price: $224 OnDemand

Brian H. Pandya
Wiley Rein LLP
Donald R. Dunner
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Rudolph A. Telscher
Harness Dickey & Pierce, PLC


Few issues cause greater tension between district courts and the Federal Circuit than standards of appellate review, and in particular, the deference due to district court findings. On one hand, the Federal Circuit is tasked with promoting uniformity in patent law and possesses unparalleled expertise and experience resolving complex patent law issues. On the other hand, district courts often devote disproportionate time and resources to patent cases and have a front seat view to the entire litigation.

Standards of appellate review were recently considered by the U.S. Supreme Court in Highmark v. Allcare in the context of attorney fees awards. Standards of review will again take center stage this fall when the Court hears Teva v. Sandoz, this time in the context of claim construction. And an en banc Federal Circuit addressed district court deference in Lighting Ballast v. Philips.

What can we learn from these cases? Is there a trend toward greater district court deference in patent cases? The faculty presenting this program will explore these questions in detail.

Educational Objectives:
• Gain an understanding of what deference the Federal Circuit has historically given district courts on attorney fees and whether such standards have changed over the years.
• Hear a discussion regarding whether the Supreme Court is poised to give district courts more deference in claim construction.
• Learn what issues will still be reviewed de novo if more deference is given on claim construction.

Who would benefit most from attending this program?
Intellectual property practitioners, particularly those involved with patent litigation.



Brian Pandya is a partner at Wiley Rein LLP in Washington, D.C., where his practice focuses on patent litigation and counseling. Mr. Pandya was counsel of record for the Blue Cross Blue Shield Association in Highmark v. Allcare and has represented clients in all major intellectual property litigation venues, including the Federal Circuit, district courts in Virginia, Texas, and Delaware, and the Patent Trial and Appeal Board.

A former clerk for the Honorable Leonard Davis, Eastern District of Texas, Mr. Pandya earned a J.D., cum laude, from the University of Michigan Law School, where he was an articles editor for the Michigan Telecommunications and Technology Law Review, and a B.S. in mechanical engineering from The Pennsylvania State University. He is admitted to practice in the District of Columbia and Virginia as well as before the U.S. Supreme Court; the U.S. Courts of Appeals for the Fourth, Ninth and Federal Circuits; the U.S. District Courts for the District of Columbia, Eastern District of Texas and Eastern District of Virginia; the U.S. Court of Federal Claims; the U.S. Patent and Trademark Office; the District of Columbia Court of Appeals; and the Virginia Supreme Court.


Donald Dunner has worked in all phases of patent law, including prosecution, licensing, litigation, validity and infringement studies, and counseling. He has vast technical experience in chemical engineering, chemistry, biotechnology, and pharmaceuticals.

Mr. Dunner has litigated numerous cases in the federal district courts and is best known for appellate practice before the U.S. Court of Appeals for the Federal Circuit and its predecessor court, the U.S. Court of Customs and Patent Appeals. Mr. Dunner served as chairman of the Advisory Committee to the U.S. Court of Appeals for the Federal Circuit for the first ten years of the Court's existence and participated in the drafting of the Court's rules.

Mr. Dunner earned a J.D. from Georgetown University Law Center and a B.S. in Chemical Engineering from Purdue University. He is admitted to practice in the District of Columbia and before the U.S. Court of Appeals, Federal Circuit, the U.S. Supreme Court, and the U.S. Patent and Trademark Office.


Rudy Telscher has litigated for 25 years a wide array of intellectual property disputes in district and appellate courts throughout the United States. He was lead counsel in Octane Fitness, LLC v. Icon Health & Fitness, Inc., where he handled oral argument before the U.S. Supreme Court. His team successfully defended the patent infringement case from the district court up to the Supreme Court. The case significantly altered the standard for awarding attorney fees under 35 U.S.C. § 285. Mr. Telscher also served as lead counsel in CDM Fantasy Sports v. Major League Baseball, in which his team made new law in turning back Major League Baseball’s attempts to monopolize the $1.5 billion per year fantasy sports industry. Mr. Telscher has successfully tried to verdict cases in the patent, copyright, trademark and trade secret areas.

Mr. Telscher earned a J.D., with high distinction, from the University of Iowa and a B.S. in Electrical Engineering, with honors, from the University of Missouri. He is admitted to practice in Illinois and Missouri as well as before the U.S. Supreme Court, the U.S. Court of Appeals for the Federal Circuit, the U.S. Patent and Trademark Office, and the International Trade Commission.