Dragon Intellectual Property v. DISH Network LLC


Issue(s) Presented

1. “Whether the district court erred as a matter of law in determining that defendants who prevailed on two grounds—by obtaining (1) a final judgment based on a stipulation of noninfringement, and (2) a final decision of unpatentability before the PTAB, which this Court affirmed—were not a ‘prevailing party’ under 35 U.S.C. § 285 solely because the defendants obtained one form of relief in a different forum than the district court.”

2. “Whether fees awarded for ‘exceptional cases’ under 35 U.S.C. § 285 may include fees incurred in related proceedings, including parallel post-grant proceedings under the AIA and appeals.”

3. “Whether fees for ‘exceptional cases’ under 35 U.S.C. § 285 may be awarded against counsel of record as jointly and severally liable with a party.”


1. “The judgment of noninfringement was vacated only because the Appellants successfully invalidated the asserted claims in a parallel inter partes review proceeding, rendering moot Dragon’s infringement action. If anything, Appellants’ success in obtaining a judgment of noninfringement, although later vacated in view of Appellants’ success in invalidating the asserted claims, further supports holding that they are prevailing parties. Therefore, consistent with our decision in B.E. Technology, we hold that DISH and SXM are prevailing parties. Accordingly, we vacate and remand the district court’s order denying Appellants’ motions for attorneys’ fees under 35 U.S.C. § 285.”

2. & 3. “Though we see no basis in the Patent Act for awarding fees under § 285 for work incurred in inter partes review proceedings that the Appellants voluntarily undertook, we remand to the district court for initial consideration of Appellants’ fee motions. We note that fees are awarded only in exceptional cases, and not to every prevailing party. Should the district court determine that this is not an exceptional case, there would be no need to reach the additional issues regarding fee-shifting in inter partes reviews or joint and several liability of counsel. For this reason, we decline counsel’s request that we resolve these issues in the first instance.”

“We have considered the parties’ remaining arguments and find them unpersuasive. For the foregoing reasons, we vacate and remand the district court’s order denying Appellants’ motions for attorneys’ fees under 35 U.S.C. § 285.”