Can a defendant who prevails in an exceptional patent infringement suit by invalidating the patent in inter partes review (IPR) recover its associated Patent Office-related attorney’s fees? A split three-judge panel of the Federal Circuit recently said no in Dragon Intellectual Property LLC v. Dish Networks LLC, Appeal Nos. 2022-1621, -1777, Slip Op. at 8 (Fed. Cir. May 20, 2024) (“Dragon V”). This blogsite previously discussed (link) several instances where courts, including the Federal Circuit, have authorized this recovery when the Patent Office proceedings substituted for aspects of the district court litigation between the same parties. How then did this two-judge majority conclude otherwise?Continue Reading Federal Circuit Holds Recoverability of Attorney’s Fees Does Not Extend to AIA Trials

While the Federal Circuit has accepted, en banc, the question of what a patent owner must demonstrate to the Board to obtain leave to amend its claims in an IPR as discussed in our earlier blog post (In re Aqua Products, No. 2015-1177 petition for rehearing en banc granted, 2016 WL 4375651 (Fed. Cir. Aug. 12, 2016)), the court provided some guidance this week on what is not a sufficient basis for denying a motion to amend.
Continue Reading A Limit on the Board’s Power – Denial of Motion to Amend Claims was Unreasonable

Today, when served with a complaint for patent infringement, the accused routinely petition the PTAB to review the patentability oCourt gavelf the asserted claims. Often enough, the accused first identifies its invalidity positions and prior art to the Patent Owner through litigation pleadings and discovery. Indeed, many even seek to settle the litigation before either party expends additional resources litigating the matter. But, often enough, the accused are spurned.
Continue Reading Move the Court to Award Attorney Fees Incurred in a Parallel PTAB Proceeding