Derma Pen, LLC v. 4EverYoung Limited, No. 19-4114 (10th Cir. 2021)Annotate this Case
After years of litigation, Plaintiff-Appellant Derma Pen, LLC (“Derma Pen”) was granted a permanent injunction against Stene Marshall and three related corporations that he had formed. Shortly thereafter, Derma Pen moved for a contempt order against Marshall, alleging that he had violated the injunction. Derma Pen also sought a contempt order against Marshall’s brother and sister- in-law, Joel and Sasha Marshall, and DP Derm, LLC, a corporation Joel and Sasha owned (collectively, the “Related Parties”). Movant-Appellant Derma Pen IP Holdings LLC (“DPIPH”), Derma Pen’s successor in interest, joined Derma Pen’s motion shortly before the contempt hearing. In its motion, Derma Pen asserted that the Related Parties had acted in concert with Marshall to violate the injunction. The Related Parties prevailed in the contempt proceeding and subsequently moved for attorney’s fees under the Lanham Act, 15 U.S.C. 1117(a). The court granted the motion for fees, and Derma Pen and DPIPH appealed that award. The Tenth Circuit found that in its award of attorney’s fees to the Related Parties, the trial court relied upon a statutory provision in the Patent Act as interpreted by the Supreme Court in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014). The issue presented for the Tenth Circuit’s review was whether the term “exceptional case” in the Patent Act differed in meaning from the same term used in the Lanham Act to a degree that required reversal. The Court concluded the exceptional case standard in the Lanham Act paralleled the standard in the Patent Act and affirmed.