"The fact that the IPR may have downstream effects on district court litigation does not convert it into a proceeding 'intimately tied' to the district court case under Sullivan."
"Nextremity moved to recover fees and costs for both proceedings and the district court awarded $52,573 for the district court litigation but denied the requested $343,660.86 of attorney fees and costs for the IPR proceeding."
"The district court found that Nextremity could not recover fees and costs for the IPR under Dragon Intell. Prop. LLC v. DISH Network L.L.C, and the CAFC agreed. There, the Federal Circuit held that 35 U.S.C. § 285, which provides that "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party," does not apply to a "voluntarily undertaken parallel IPR proceeding[].""
"Nextremity argued that "the 'rigid rule' from Dragon conflicts with the Supreme Court case of Sullivan v. Hudson, 490 U.S. 877 (1989)," which said that "where administrative proceedings are intimately tied to the resolution of the judicial action and necessary to the attainment of the results Congress sought to promote by providing for fees, they should be considered part and parcel of the action for which fees may be awarded.""
Extremity Medical sued Nextremity Solutions for patent infringement in the District of Delaware, and the case was stayed while Nextremity pursued an inter partes review. The IPR invalidated the asserted claims of U.S. Patent 8,303,589 covering orthopedic implant devices. Nextremity sought attorney fees and costs for both the district court litigation and the IPR. The district court awarded fees and costs for the district court case but denied recovery for the IPR. The court relied on precedent holding that 35 U.S.C. § 285 does not apply to voluntarily undertaken parallel IPR proceedings. Nextremity argued that Sullivan v. Hudson required treating the IPR as part of the judicial action, but the Federal Circuit affirmed the denial for the IPR.
Read at IPWatchdog.com | Patents & Intellectual Property Law
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