       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

          CHECKPOINT SYSTEMS, INC.,
               Plaintiff-Appellant,
                           v.
             ALL-TAG SECURITY S.A.,
                Defendant-Appellee,

                         AND

   ALL-TAG SECURITY AMERICAS, INC., AND
 SENSORMATIC ELECTRONICS CORPORATION,
             Defendants-Appellees,
                         AND
            KOBE PROPERTIES SARL,
                Defendant-Appellee.
              ______________________

                      2012-1085
                ______________________

   Appeal from the United States District Court for the
Eastern District of Pennsylvania in No. 01-CV-2223,
Judge Petrese B. Tucker.
                 ______________________

              Decided: September 4, 2014
               ______________________
2          CHECKPOINT SYSTEMS, INC.   v. ALL-TAG SECURITY S.A.



   ROBERT J. PALMERSHEIM, Schopf & Weiss, LLP, of
Chicago, Illinois, for plaintiff-appellant. With him on the
motion were LESLEY G. SMITH; and DENNIS R. SUPLEE and
THOMAS W. HAZLETT of Schnader Harrison Segal & Lewis,
LLP, of Philadelphia, Pennsylvania.

    THEODORE A. BREINER, Breiner & Breiner, L.L.C., of
Alexandria, Virginia, for Kobe Properties SARL. With
him on the motion were TRACY ZURZOLO QUINN, Reed
Smith, LLP, of Philadelphia, Pennsylvania; M. KELLY
TILLERY, ERIK N. VIDELOCK, and CHARLES S. MARION,
Pepper Hamilton LLP, of Philadelphia, Pennsylvania, for
Sensormatic Electronics Corporation.
                ______________________

    Before NEWMAN, LOURIE, and SCHALL, Circuit Judges.
SCHALL, Circuit Judge.
     Checkpoint Systems, Inc. (“Checkpoint”) filed suit
against All-Tag Security S.A., All-Tag Security Americas,
Inc., Sensormatic Electronics Corp., and Kobe Properties
SARL 1 (collectively, “All-Tag”) in 2001 for infringement of
U.S. Patent No. 4,876,555 (“the ’555 patent”). After a jury
verdict of noninfringement, invalidity, and unenforceabil-
ity, the district court entered judgment on the verdict,
found the case “exceptional” under 35 U.S.C. § 285, and
awarded the defendants approximately $6.6 million in
attorney fees, costs, and interest. On appeal of the award
for fees, we reversed, applying the legal standard in force


     1  Kobe Properties SARL became a party in Septem-
ber 2013, after All-Tag Security S.A. entered bankruptcy
in Belgium and assigned Kobe the right to receive any
attorney fees recovered in the litigation. See Checkpoint
Sys., Inc. v. All-Tag Sec. S.A., No. 12-1085, ECF No. 70
(Fed. Cir. Sept. 30, 2013) (order); ECF Nos. 61–63 (Fed.
Cir. June 20, 2013) (motions to substitute party).
CHECKPOINT SYSTEMS, INC.   v. ALL-TAG SECURITY S.A.        3



at the time and concluding that the litigation had not
been shown to be objectively baseless or otherwise
brought in bad faith. See Checkpoint Sys., Inc. v. All-Tag
Sec. S.A., 711 F.3d 1341, 1348 (Fed. Cir. 2013), vacated
sub nom., Kobe Props. SARL v. Checkpoint Sys., Inc., 134
S. Ct. 2134 (2014). All-Tag then filed a petition for a writ
of certiorari, seeking review of our attorney fees decision.
    While this petition was pending, in a pair of decisions,
the Supreme Court set aside our prior precedent under
§ 285. See Highmark, Inc. v. Allcare Health Mgmt. Sys.,
Inc., 134 S. Ct. 1744 (2014); Octane Fitness, LLC v. ICON
Health & Fitness, Inc., 134 S. Ct. 1749 (2014). In those
cases, the Court (i) rejected our precedent under § 285
that required both a showing of subjective bad faith and
objective baselessness to find a case exceptional, (ii)
lowered the burden of proof for proving a case exceptional,
and (iii) changed the standard of review on appeal.
Octane Fitness, 134 S. Ct. at 1755–58; Highmark, 134 S.
Ct. at 1749. Subsequently, the Court granted All-Tag’s
petition for a writ of certiorari on this issue and remanded
the case to us for further consideration.
     In Octane Fitness, the Supreme Court explained that
“an ‘exceptional’ case is simply one that stands out from
others with respect to the substantive strength of a par-
ty’s litigating position . . . or the unreasonable manner in
which the case was litigated.” Octane Fitness, 134 S. Ct.
at 1756. The Court also explained that “[d]istrict courts
may determine whether a case is ‘exceptional’ in the case-
by-case exercise of their discretion, considering the totali-
ty of the circumstances.” Id. Finally, the Court lowered
the evidentiary burden of proving entitlement to fees,
holding that entitlement need not be shown by clear and
convincing evidence. Id. at 1758. In Highmark, the Court
concluded that, on appeal, a district court’s § 285 deter-
mination should be reviewed for an abuse of discretion.
Highmark, 134 S. Ct. at 1749.
4         CHECKPOINT SYSTEMS, INC.   v. ALL-TAG SECURITY S.A.



    In order to apply the Supreme Court’s guidance from
Highmark and Octane Fitness to the facts of this case, we
vacate the district court’s decision on this issue, and
remand for further consideration of whether the case
should be deemed exceptional under 35 U.S.C. § 285, on
consideration of the totality of the circumstances. In
making its decision, the district court should consider the
guidance from our prior opinion in which we explained
that tests or experiments on the actual accused products
are not always necessary to prove infringement. Check-
point, 711 F.3d at 1346–48. In some instances, circum-
stantial evidence alone may suffice. See, e.g., Martek
Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1372
(Fed. Cir. 2009) (“A patentee may prove infringement by
‘any method of analysis that is probative of the fact of
infringement,’ and circumstantial evidence may be suffi-
cient.” (internal citations omitted)); Liquid Dynamics
Corp. v. Vaughan Co., 449 F.3d 1209, 1219 (Fed. Cir.
2006) (“A patentee may prove direct infringement or
inducement of infringement by either direct or circum-
stantial evidence.”).
    We vacate the district court’s ruling on the award of
attorney fees, and remand for redetermination of the
attorney fees issue on application of the standards estab-
lished by the Supreme Court in Highmark and Octane
Fitness.
             VACATED AND REMANDED
