Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today’s report highlights:
- an article examining the Federal Circuit’s consideration of when attorney’s fees can be awarded to the prevailing party in in inter partes review proceedings; and
- an article discussing a distinction made by the Federal Circuit pertaining to which disclosures qualify as public disclosures for purposes of 35 U.S.C. § 102(b)(2)(B).
Sterne Kessler wrote an article for Bloomberg Law examining the Federal Circuit’s consideration of when attorney’s fees can be awarded to the prevailing party in inter partes review proceedings. Kessler explains how the Federal Circuit’s opinion in Dragon Intellectual Property LLC v. DISH Network L.L.C. held that “accused patent infringers seeking attorneys’ fees under the patent law’s fee-shifting provision can’t recover fees incurred in a parallel inter partes review proceeding, nor can they recover fees from the patent owner’s counsel by holding them jointly and severally liable for an award.” Kessler suggests this holding will cause “accused infringers with a strong basis for prevailing on non-infringement or non-prior-art invalidity grounds [to] opt not to file petitions for inter partes review in the future.”
Eileen McDermott wrote an article for IPWatchdog discussing a distinction made by the Federal Circuit in Sanho Corp. v. Kaijet Technology International Limited, Inc. pertaining to which disclosures qualify as public disclosures for purposes of 35 U.S.C. § 102(b)(2)(B). According to McDermott, the Federal Circuit drew a distinction between “two different phrases—’disclosed’ and ‘publicly disclosed’” in the patent statute. As explained by McDermott, the Federal Circuit rejected the view “that the term ‘publicly disclosed’ should be understood to include all of the types of ‘disclosures’ referenced in section 102(a)(1), ‘including situations in which the invention was “on sale.”‘”