1. “If a patentee brings a District Court action for patent infringement when it knew or should have known that the asserted patent claim in that action was invalid, can attorney fees, which are awarded by the District Court under 35 U.S.C. § 285, include the attorney fees incurred in a related parallel Inter Partes Review (‘IPR’) before the Patent Trial and Appeal Board (‘PTAB’) when the District Court deemed the case ‘exceptional’ and dismissed the action based upon the result of the IPR?”
2. “Does the United States Supreme Court’s decision in Sullivan v. Hudson, 490 U.S. 877 (1989) allow for an award of attorney fees incurred in a parallel IPR under § 285, when the parallel IPR was ‘intimately tied’ to the District Court action regardless of whether the IPR was voluntarily or involuntarily participated in by the patent challenger defending a claim of patent infringement?”
3. “Is the decision in this case and in Dragon Intellectual Property, LLC v. Dish Network, L.L.C., 101 F.4th 1366 (Fed. Cir. 2024), which precludes an award of attorney’s fees incurred in a parallel IPR under 35 U.S.C. § 285 because the IPR was ‘voluntary’ by the patent challenger, contrary to the Supreme Court’s decision in Sullivan v. Hudson, 490 U.S. 877 (1989)?”
4. “If an award of attorney’s fees incurred in a parallel IPR requires that the IPR be ‘voluntary’ by the patent challenger, is the patent challenger’s participation in an IPR voluntary or involuntary when the patentee makes a motion to amend the patent claim within the IPR, in light of 35 U.S.C. § 315(e) which requires that the patent challenger successfully oppose the motion to amend to avoid being estopped from challenging the validity of the amended patent claim thereafter including before the District Court?”
