“Federal Circuit Holds Recoverability of Attorney’s Fees Does Not Extend to AIA Trials”

In the July 2024 edition of IP Litigator, Partner Sandip Patel discusses the recent Federal Circuit decision in Dragon Intellectual Property v. Dish Networks LLC. The Federal Circuit ruled that a defendant who prevails in an exceptional patent infringement suit by invalidating the patent in inter partes review (IPR) cannot recover its associated Patent Office-related attorney’s fees.

In this case, Dragon Intellectual Property had filed a patent infringement suit against Dish, Sirius XM Radio, and several others. Dish and Sirius challenged the patent’s validity through IPR, which led to the patent being invalidated. The court awarded attorney's fees for the litigation in court but not for the IPR process, reasoning that because the IPR was a voluntary choice rather than a court-mandated action, attorney’s fees could not be recovered under § 285 of the patent statute.

Sandip states that there are several bases for awarding the fees and notes that the Federal Circuit’s majority opinion hardly addresses those reasons. He writes that “because patent validity is so often determined by the Patent Office, the holding that § 285 fee-awards are categorically unavailable to recover attorney’s fees incurred in closely related Patent Office proceedings may fare poorly at the Supreme Court.”

You can read Sandip’s full article in IP Litigator here.