Back in August, Judge Hall shot down a plaintiff's attempt to recover its fees from counsel under 35 U.S.C. § 285, which provides for the award of "reasonable attorneys fees" in "exceptional cases." Today, Judge Andrews rejected several objections to Judge Hall's decision.
As set forth by Judge Andrews, the defendants' basic argument was that while earlier cases held that § 285 does not permit fee awards against attorneys, certain dicta in the Supreme Courts more recent Octane Fitness opinion changed that:
Defendants contend that the Magistrate Judge "overlooked" the Supreme Court's Octane Fitness opinion, in which the Court found that § 285 imposed "one and only one constraint on district courts' discretion to award attorney's fees in patent litigation: The power is reserved for 'exceptional' cases." . . . . Defendants argue that the Magistrate Judge's Report contravenes Octane Fitness by improperly "injecting another constraint" on the district court's discretion—i.e., by only allowing recovery of fees from the parties, not attorneys. . . . I disagree. As the Magistrate Judge pointed out, Octane Fitness addressed the question of when fees may be awarded, not from whom they may be recovered. . . . I see nothing in Octane Fitness that authorizes attorney liability for a fee award.
Judge Andrews also noted the general rule that fee-shifting statutes and rules do not permit awards against counsel absent explicit language, and the parties' agreement that "nothing in the legislative history of § 285 supports awarding fees against opposing counsel."
No IPR Fees Either
In the same August decision, Judge Hall had also denied an attempt to recover fees for bringing an inter partes review proceeding. At the time, she noted that several other courts had come to the opposite conclusion—awarding such fees—but the Court found their reasoning unpersuasive.
Judge Andrews denied defendants' objections to that conclusion as well, holding that IPRs are not "cases" for the purposes of § 285. He rejected defendants' attempt to distinguish prior caselaw on this point, holding that it doesn't matter whether the defendants brought the IPR before or after suit.
He also noted that, even if a defendant has to bring an IPR to avoid the one-year statutory bar, the IPR itself is still voluntary, and cannot be part of the basis for § 285 fees:
There is no persuasive legal analysis that would authorize this Court to award attorneys' fees under § 285 for IPR proceedings that Defendants voluntarily undertook. Thus, I overrule Defendants' objection to this portion of the Magistrate Judge's Report and adopt her recommendation not to award fees incurred solely during the IPR proceedings.
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