An interesting fees issue was decided earlier this week in a Report and Recommendation by Judge Hall—can a prevailing defendant recover attorney's fees under § 285 for work done on a successful IPR petition?
The answer, apparently, is no.
Given the prevalence of IPR petitions, I was somewhat surprised to see that there was no authority on the issue from either the Federal Circuit or Delaware. Judge Hall found the text of § 285 decisive:
The text of 35 U.S.C. § 285 says nothing about giving the district court the ability to award fees incurred by a prevailing party in a separate administrative proceeding. The statute simply states that “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” The statute appears in the chapter of Title 35 concerning remedies in infringement actions. And there is no dispute that the “cases” to which the statute refers are judicial proceedings. In other words, IPR proceedings are not “cases.”
Dragon Intellectual Property LLC v. DISH Network LLC, C.A. No. 13-2066-RGA-JLH, D.I. 218 at 14 (D. Del. Aug. 17, 2021) (cleaned up).
This conclusion was in line with a statement the Federal Circuit made in dicta when the case was up on appeal on a different fees issue last year.
Though we see no basis in the Patent Act for awarding fees under § 285 for work incurred in inter partes review proceedings that the Appellants voluntarily undertook, we remand to the district court for initial consideration of Appellants' fee motions
Dragon Intellectual Prop., LLC v. Dish Network LLC, 956 F.3d 1358, 1362 (Fed. Cir. 2020).
Interestingly, Judge Hall noted in her opinion that several district courts have reached the opposite conclusion—Munchkin, Inc. v. Luv N’ Care, Ltd., No. 13-06787, 2018 WL 7504404 (C.D. Cal. Dec. 27, 2018); My Health, Inc. v. ALR Techs., Inc., No. 16-00535, 2017 WL 6512221 (E.D. Tex. Dec. 19, 2017); Deep Sky Software, Inc. v. Southwest Airlines Co., No. 10-1234, 2015 WL 10844231 (S.D. Cal. Aug. 19, 2015).
Each of these cases predated the comment from the Federal Circuit, however, and the Court ultimately found their reasoning unpersuasive.
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