Tuesday, April 21, 2020

Another Federal Circuit Decision on Final Judgments and Attorneys' Fees

In the past two weeks, the Federal Circuit has decided two cases, in O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC., and Keith Mfg. Co. v. Butterfield, which reach (arguably) different conclusions regarding whether a voluntary dismissal counts as a final judgment for purposes of determining whether a case might qualify as "exceptional," and therefore potentially meriting an award of attorneys' fees, under Patent Act section 285.  (For my previous post on Mossberg, see hereMossberg involved a unilateral dismissal, Keith a stipulated dismissal.)  Today's entry is Dragon Intellectual Property, LLC v. Dish Network LLC.  The precedential opinion is by Judge Moore, joined by Judges Lourie and Stoll.  

Dragon filed an infringement action against several defendants, but (1) following the district court's claim construction, the parties stipulated to noninfringement and the patent owner appealed the adverse claim construction ruling; (2) the PTAB found the claims in suit invalid; and (3) the Federal Circuit affirmed the PTAB ruling and held that the appeal from the district court action was now moot.  Meanwhile, the defendants had moved for an award of fees, but following the Federal Circuit appeal the patent owner moved to vacate the district court judgment and dismiss the case as moot.  The district court vacated the noninfringement judgment as moot, and concluded that the defendants were not entitled to fees, because "they were not granted 'actual relief on the merits'" (p.5).  The defendants appealed this ruling, and the Federal Circuit vacates and remands:
We have held that “a defendant can be deemed a prevailing party even if the case is dismissed on procedural grounds rather than on the merits.” See, e.g., B.E. Tech., L.L.C. v. Facebook, Inc., 940 F.3d 675, 678–79 (Fed. Cir. 2019). . . . 
We held that “even though the mootness decision was made possible by winning a battle on the merits before the PTO,” Facebook was a prevailing party because it “rebuffed B.E.’s attempt to alter the parties’ legal relationship in an infringement suit.” Id. at 679. Although B.E. Technology involved the interpretation of prevailing party under Fed. R. Civ. P. 54(d), we see no meaningful distinction that would warrant a different interpretation under § 285. . . . Therefore, consistent with our decision in B.E. Technology, we hold that DISH and SXM are prevailing parties. Accordingly, we vacate and remand the district court’s order denying Appellants’ motions for attorneys’ fees under 35 U.S.C. § 285.
The court also remands for the district court to consider the defendants' request for fees to compensate for their PTAB proceeding, while cautioning that it sees no basis for such an award under section 285.  Note, by the way, that the court's statement that there is no meaningful distinction between the meaning of "prevailing party" under FRCP 54(d) and section 285 disposes of one potential ground (as noted, though rejected, by Dennis Crouch) for reconciling the outcomes of Mossberg and Keith.


  1. Mossberg was not a stipulated dismissal. it was a unilateral dismissal by the plaintiff. The defendant's stipulation was not needed and was not part of the dismissal in that case. Also an order by the court is not needed to make the Mossberg dismissal effective.