Dragon Intellectual Property, LLC

Patent litigation is typically quite an expensive proposition, particularly since parties must generally pay their own attorney fees. That said, district courts may award fees to the prevailing party “in exceptional cases” under 35 USC § 285, which under the Supreme Court’s Octane standard can include those where the plaintiff’s case was substantively weak or was litigated in an “unreasonable manner”. However, the Federal Circuit has now held that district courts may not award fees for those incurred in related validity challenges before the Patent Trial and Appeal Board (PTAB). In its precedential decision in Dragon Intellectual Property v. Dish Network, a majority of the appellate court ruled that fees are not available under § 285 for IPRs, even those filed over patents asserted in parallel district court litigation, because such proceedings are “voluntary”. The decision prompted a pointed dissent from Southern District of California Judge Cathy Ann Bencivengo, sitting here by designation.