The Federal Circuit May Not Award Attorney Fees for Work Performed During an IPR

| Adam Powell


Before Dyk, Lourie, and Reyna. Appeal from the Patent Trial and Appeal Board.

Summary: While the Federal Circuit may be able to award fees under Section 285 for work performed during appellate proceedings, it cannot award fees for prior work performed during IPR proceedings at the Patent Office.

Amneal petitioned for IPR of Almirall’s patent. In its final written decision, the Board determined all claims were not unpatentable. Amneal appealed and then moved to dismiss its appeal. Almirall agreed the appeal should be dismissed, but requested fees under Section 285 for certain work performed during the IPR proceeding at the Patent Office.

The Federal Circuit noted that it had not yet decided if Section 285 applies to IPR appeals. However, even if it could award fees in connection with the appeal, the Federal Circuit could not award fees for work performed in connection with the Patent Office proceeding. The Federal Circuit explained that Section 285 “speaks only to awarding fees that were incurred during, in close relation to, or as a direct result of, judicial proceedings.” The Federal Circuit acknowledged authority suggesting that a district court could award attorney fees for parallel Patent Office proceedings that were “intimately tied” to the resolution of the district court action. However, the Federal Circuit lacked authority to award fees incurred during Patent Office proceedings before the Federal Circuit appeal.

Editor: Paul Stewart