Under 35 U.S.C. § 285, district courts are granted discretion in awarding attorneys’ fees to prevailing parties in “exceptional cases,” and as a result of the Supreme Court of the United States’ 2014 decision in Octane Fitness v. Icon Health & Fitness, which relaxed the fee-shifting standard under § 285, parties are going after attorneys’ fees more often. However, in a recent U.S. Court of Appeals for the Federal Circuit decision, Amneal Pharmaceuticals v. Almirall, the court ruled that attorneys cannot seek fees accrued in Patent Trial and Appeal Board (PTAB) proceedings from the Federal Circuit, as § 285 specifies that fees can only be awarded if they were accumulated in a judicial proceeding, which does not include matters handled through the U.S. Patent and Trademark Office. Managing Intellectual Property contacted Finnegan partner Lionel Lavenue for his thoughts.
Lionel noted that the Amneal case was uncommon because attorneys usually try to recover PTAB fees under § 285 from the district courts, even on appeal. He said the Federal Circuit’s decision will make it difficult for attorneys to recoup their fees in exceptional cases if they do not have a pending parallel district court case. He said:
“Even if attorneys win a patent infringement matter on appeal, they can go back to the district court to retrieve their fees. The problem is that not everyone has a district court to go back to. What if you filed an IPR, and you didn’t have a district court case, which you’re entitled to do? Then you win your IPR and want to get your fees back; there’s nowhere to go to. That is really the conundrum since Amneal for a petitioner that wins at the PTAB and then it’s appealed by the patent owner to the Federal Circuit, and it wins again and want fees.”
However, Lionel did note that most PTAB matters have a parallel district court case.
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