Yesterday in Amneal Pharmaceuticals, LLC v. Allmiral, LLC, the Federal Circuit (in an opinion authored by Judge Dyk, joined by Judges Lourie and Reyna) held that Patent Act section 285 does not authorize it to award attorneys' fees pertaining to a litigant's conduct before the PTAB. From the opinion:
. . . Almirall argues that Amneal litigated this matter in an unreasonable manner by continuing to litigate the IPR after the covenant-not-to-sue was offered, and Almirall had asked the FDA to remove the patent from the Orange Book. Almirall “seeks only fees and costs incurred during the relatively marginal window of time from [April 29, 2019], the date settlement negotiations were terminated, to the date of trial in the underlying IPR, June 5, 2019,” Opp. at. 18, along with the fees and costs for filing the opposition to this motion. . . .
. . . The Court of Customs and Patent Appeals, a predecessor court whose decisions are binding on us, see S. Corp. v. United States, 690 F.2d 1368, 1370 (Fed. Cir. 1982) (en banc), which notably heard appeals from the Patent Office but not from district courts, on several occasions refused to read section 285 as pertaining to such administrative proceedings. . . .
. . . . [E]ven were we to accept that section 285 is not limited to district court proceedings, the plain meaning of section 285’s reference to “[t]he court” speaks only to awarding fees that were incurred during, in close relation to, or as a direct result of, judicial proceedings. . . .
For these reasons, we reject Almirall’s request for attorney fees under section 285. Even if we could award fees in appeals from the Board in an IPR for work in the appellate proceedings, Almirall is impermissibly seeking fees that were incurred for work at the Patent Office before this case was commenced. . . .
The court cites case law involving other areas of law as persuasive authority for its conclusion. It surprises me that this issue hasn't come before the Federal Circuit until now.
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