The Survivors: Post-IPR Claims, the Presumption of Validity, and the Limits of 285

"The Federal Circuit's May 15, 2026 decision in mCom IP, LLC v. City National Bank of Florida, No. 24-2089 (Fed. Cir. 2026), splits cleanly down the middle. Judge Taranto, writing for the panel, affirmed the district court's Rule 12(b)(6) dismissal of mCom's infringement complaint with prejudice. But the same panel reversed both the $33,986 attorney-fee award entered against mCom under 35 U.S.C. § 285 and the $50,619 sanction entered against mCom's local counsel Victoria Brieant under 28 U.S.C. § 1927. The Federal Circuit declined to remand for further proceedings on either fee determination."

"Several claims of U.S. Patent No. 8,862,508 had been cancelled during IPR proceedings. But in this litigation, mCom asserted the four non-challenged claims. City National argued those claims were "not patentably distinct" from the already cancelled claims, and the district court agreed. On appeal, mCom argued only patent eligibility under § 101, a doctrine that was not responsive to the obviousness ruling. So, the dismissal was an easy affirm."

"The reversal of the fee award is the more doctrinally interesting. I see the panel's reasoning as a defense of the statutory presumption of validity even when invoked by a patent owner whose counsel has accumulated a substantial record of judicial sanctions in other proceedings."

The Federal Circuit affirmed a district court’s Rule 12(b)(6) dismissal with prejudice of an infringement complaint. Several claims of U.S. Patent No. 8,862,508 had been cancelled during inter partes review, and the litigation asserted four remaining non-challenged claims. The district court found those asserted claims were not patentably distinct from the cancelled claims. On appeal, the patent owner argued only patent eligibility under 35 U.S.C. § 101, which did not address the obviousness-based reasoning supporting dismissal. The Federal Circuit also reversed an attorney-fee award under 35 U.S.C. § 285 and a sanctions award against local counsel under 28 U.S.C. § 1927, declining to remand for further proceedings on either determination.

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