The Supreme Court’s recent pair of decisions allowing trial judges in patent cases the discretion to award attorneys’ fees could have a huge impact on the high-stakes patent system and the tech startups that struggle within it, according to Suffolk University Law School Professors Andrew Beckerman-Rodau and Jessica Silbey.

Beckerman-Rodau“The risk of having to pay the prevailing parties' attorney fees is a potentially significant cost, because attorney fees for patent infringement suits are often in the millions of dollars. This may make it more difficult for tech startups to afford to bring an action against a large established company or to find an attorney willing to take the case on a contingency,” Beckerman-Rodau said.

“The perverse result is that this may result in a reduction of technological innovation by tech startups who are the engines of advancing technology,” said Beckerman-Rodau.

SilbeySilbey sees the decisions as helping level the playing field in a system that has burdened start-ups and benefited aggregating entities that collect patents but do not practice the inventions.

“This has potentially very large consequences to deter frivolous lawsuits and restore some sense of balance in patent litigation between the big and small firms, the practicing entities and the non-practicing entities sometimes called ‘patent trolls,’” said Silbey.

The two cases are Highmark Inc. v. Allcare and Octane Fitness v. Icon Health (both unanimous and written by Justice Sotomayor).

Beckerman-Rodau teaches intellectual property and patent law and is co-director of Suffolk Law’s Intellectual Property Law concentration. He is an engineer and registered patent attorney.

Silbey teaches constitutional law and intellectual property. Her forthcoming book The Eureka Myth: Creators, Innovators and Everyday Intellectual Property (Stanford University Press; September 2014) is about the overprotection of IP by some communities and the underprotection of IP by others. Patent trolls are an example of the way intellectual property is overprotected, or protected in ways that are not contemplated by the statute.