According to R.P.X., on June 4, the Federal Circuit issued a precedential decision holding that § 285 under the Patent Act is inapplicable for awarding attorneys’ fees to the prevailing party in a proceeding for inter partes review. The case is Amneal Pharmaceuticals, L.L.C. v. Almirall, L.L.C., Case No. 2020-1106 (Fed. Cir. Jun. 4, 2020). The CAFC states that fees should only be awarded if they “were incurred during, in close relation to, or as a direct result of, judicial proceedings.” The CAFC reasoned that the present case did not consist of USPTO proceedings that were “intimately tied” to the resolution of the district court action.
In this case, the Court did not expressly rule out the possibility that it could award fees for work during the appeal before the Federal Circuit from an I.P.R. proceeding. However, the question remains whether fees can be awarded under section 285 in connection with an I.P.R. proceeding that was parallel to a district court action and the two proceedings were interpreted as part of an inclusive whole.
Nevertheless, the Court also noted that the USPTO has its own procedures for sanctioning exceptional conduct under 37 C.F.R. § 42.12, where the PTAB may award “compensatory expenses, including attorney’s fees,” among other sanctions.