Federal Circuit Patent Watch: Section 285 Does Not Extend to Recovery of IPR Fees | WilmerHale
Precedential and Key Federal Circuit Opinions
1. ZIRCON CORP. v. ITC (2022-1649, 05/08/2024) (Lourie, Bryson, and Stark)
Bryson, J. The Court affirmed the Commission’s determination regarding the domestic industry requirement for filing a patent suit. To satisfy the domestic industry requirement based on research and development activities under Section 337(a)(3)(C), the complainant must show that those activities pertain to products that are covered by the patent that is being asserted. The complainant may satisfy the economic prong as to all asserted patents based on an entire product group, but in cases where the complainant’s products or groups of products each practice different patents, the complainant would need to establish separate domestic industries for each of those different groups of products. It is thus the complainant’s burden to identify, in some manner, how much of its investment in each statutory category was attributable to each group of products. The Commission did not err in finding that complainant could not meet its burden by relying on aggregated evidence of its investments in all domestic industry products without allocating those investments among products or product groups relating to each asserted patent or product groups relating to all the asserted patents.
2. COPAN ITALIA SPA v. PURITAN MEDICAL PRODUCTS COMPANY LLC (2022-1943, 05/14/2024) (Cunningham, Bryson, and Stark)
Stark, J. The Court dismissed for lack of jurisdiction an appeal from the district court’s denial of a motion to dismiss that alleged immunity from patent infringement liability under the Pandemic Readiness and Emergency Preparedness Act (“PREP Act”). The Court found that the appeal was not reviewable under the collateral order doctrine, which is a limited exception to the general requirement that appellate jurisdiction arises only after a district court issues a final order. The motion to dismiss did not conclusively determine any issue. The trial court would have needed to conclusively determine no immunity from patent infringement under the PREP Act. However, the district court simply and preliminarily held that it was not in a position to make those determinations at that time. That is not a “conclusive determination” of the immunity issue.
3. DRAGON INTELLECTUAL PROPERTY LLC v. DISH NETWORK L.L.C. (2022-1621, 05/20/2024) (Moore, Stoll, and Bencivengo)
Moore, J. The panel majority affirmed the district court’s denial-in-part of attorney’s fees under 35 U.S.C. § 285 for fees incurred during the IPR proceedings and the district court’s decision to decline to hold the law firm jointly and severally liable with its client for the fee award. Section 285 does not entitle appellants to recovery of fees incurred in parallel IPR proceedings because appellants voluntarily pursue parallel proceedings in front of the Board instead of arguing invalidity before the district court. Additionally, awards of attorney’s fees under Section 285 do not apply to counsel. Section 285 is silent as to who can be liable for a fee award. Conversely, other statutes explicitly allow parties to recover costs and fees from counsel. Statutes and rules that expressly identify counsel as liable are more appropriate vehicles to recover fees from counsel. On the cross-appeal, the Court found that the district court did not abuse its discretion in determining the cases were exceptional by relying on its prior adjudication of prosecution disclaimer during claim construction. The district court was not required to relitigate claim construction for an invalidated patent to resolve appellants’ fee motions.
