United States Court of Appeals
for the Federal Circuit
______________________
DRAGON INTELLECTUAL PROPERTY, LLC,
Plaintiff-Appellee
v.
DISH NETWORK LLC,
Defendant-Appellant
v.
ROBERT E. FREITAS, FREITAS & WEINBERG
LLP, JASON S. ANGELL,
Respondents-Appellees
______________________
2019-1283
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:13-cv-02066-RGA, Judge
Richard G. Andrews.
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DRAGON INTELLECTUAL PROPERTY, LLC,
Plaintiff-Appellee
v.
SIRIUS XM RADIO INC.,
Defendant-Appellant
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DRAGON INTELLECTUAL PROP. v. DISH NETWORK LLC
2
v.
JASON S. ANGELL, ROBERT E. FREITAS,
FREITAS & WEINBERG LLP,
Respondents-Appellees
______________________
2019-1284
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:13-cv-02067-RGA, Judge
Richard G. Andrews.
______________________
Decided: April 21, 2020
______________________
KAI ZHU, Dragon Intellectual Property, LLC, Los Altos,
CA, for plaintiff-appellee.
JAMIE ROY LYNN, Baker Botts, LLP, Washington, DC,
argued for defendant-appellant DISH Network LLC. Also
represented by LAUREN J. DREYER; GEORGE HOPKINS GUY,
III, Palo Alto, CA; ALI DHANANI, MICHAEL HAWES, Houston,
TX.
MARK BAGHDASSARIAN, Kramer Levin Naftalis &
Frankel LLP, New York, NY, argued for defendant-appel-
lant Sirius XM Radio Inc. Also represented by SHANNON
H. HEDVAT.
ROBERT E. FREITAS, Freitas & Weinberg LLP, Redwood
Shores, CA, argued for respondents-appellees. Also repre-
sented by RACHEL KINNEY, DANIEL J. WEINBERG.
ALEXANDRA HELEN MOSS, Electronic Frontier
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DRAGON INTELLECTUAL PROP. v. DISH NETWORK LLC
3
Foundation, San Francisco, CA, for amicus curiae Elec-
tronic Frontier Foundation.
______________________
Before LOURIE, MOORE, and STOLL, Circuit Judges.
MOORE, Circuit Judge.
DISH Network LLC and Sirius XM Radio Inc. (SXM)
(collectively, Appellants) appeal the United States District
Court for the District of Delaware’s order denying Appel-
lants’ motions for attorneys’ fees under 35 U.S.C. § 285.
Because the district court erred in holding that Appellants
are not prevailing parties under § 285, we vacate and re-
mand.
BACKGROUND
Dragon Intellectual Property, LLC separately sued
DISH, SXM and eight other defendants
1
in December 2013,
alleging infringement of claims of U.S. Patent No.
5,930,444. On December 23, 2014, DISH filed a petition
seeking inter partes review of the ’444 patent. The Board
instituted review on July 17, 2015 and subsequently
granted SXM’s request for joinder under 35 U.S.C. § 315(c).
The district court stayed proceedings as to DISH and SXM
pending the resolution of the Board’s review but proceeded
with claim construction as to the other eight defendants.
After a consolidated claim construction hearing, the
district court issued a claim construction order on Septem-
ber 14, 2015. Following the claim construction order,
Dragon, DISH, SXM, and the other eight defendants
1
Dragon also sued Apple, Inc., AT&T Services, Inc.,
Charter Communications Inc., Comcast Cable Communi-
cations LLC, Cox Communications Inc., DirecTV LLC,
Time Warner Cable Inc., and Verizon Communications Inc.
in separate complaints.
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stipulated to noninfringement as to the products accused
of infringing claims of the ’444 patent. On April 27, 2016,
the district court entered judgment of noninfringement in
favor of all defendants, including DISH and SXM, based on
the district court’s claim construction order and the parties’
stipulation. See, e.g., Dragon Intellectual Prop., LLC v.
DISH Network LLC, No. 1:13-cv-02066-RGA (D. Del. Apr.
27, 2016), ECF No. 117; Dragon Intellectual Prop., LLC v.
Sirius XM Radio Inc., No. 1:13-cv-02067-RGA (D. Del. Apr.
27, 2016), ECF No. 130. On June 15, 2016, in the parallel
inter partes review, the Board issued a final written deci-
sion holding unpatentable all asserted claims. See Dish
Network L.L.C. v. Dragon Intellectual Prop., LLC, No.
IPR2015-00499, 2016 WL 3268756 (PTAB June 15, 2016).
In August 2016, DISH and SXM moved for attorneys’
fees under 35 U.S.C. § 285 and 28 U.S.C. § 1927. Before
the motions were resolved, Dragon appealed both the dis-
trict court’s judgment of noninfringement and the Board’s
final written decision. On November 1, 2017, we affirmed
the Board’s decision and dismissed the parallel district
court appeal as moot. See Dragon Intellectual Prop., LLC
v. Dish Network LLC, 711 F. App’x 993, 998 (Fed. Cir.
2017); Dragon Intellectual Prop., LLC v. Apple Inc., 700 F.
App’x 1005, 1006 (Fed. Cir. 2017). On remand, Dragon
moved to vacate the district court’s judgment of nonin-
fringement and to dismiss the case as moot. On September
27, 2018, the district court vacated the judgment of nonin-
fringement as moot but retained jurisdiction to resolve Ap-
pellants’ fees motions. Dragon Intellectual Prop., LLC v.
Apple, Inc., No. 1:13-cv-02058-RGA, 2018 WL 4658208, at
*2–3 (D. Del. Sept. 27, 2018).
On November 7, 2018, the district court denied the
DISH and SXM motions for attorneys’ fees. Dragon Intel-
lectual Prop., LLC v. DISH Network, LLC, No. 1:13-cv-
02066-RGA, 2018 WL 5818533, at *1–2 (D. Del. Nov. 7,
2018). The district court agreed that DISH and SXM
“achieve[d] a victory” over Dragon but held that neither
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DRAGON INTELLECTUAL PROP. v. DISH NETWORK LLC
5
DISH nor SXM is a prevailing party because they were not
granted “actual relief on the merits.” Id. at *1 & n.1. The
district court further stated that “success in a different fo-
rum is not a basis for attorneys’ fees” in the district court.
Id. at *1 n.1.
2
DISH and SXM appeal, arguing that the
district court erroneously held that they are not prevailing
parties. We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(1).
3
DISCUSSION
A district court “in exceptional cases may award rea-
sonable attorney fees to the prevailing party.” 35 U.S.C.
§ 285. We review a district court’s determination of
whether a litigant is a prevailing party under § 285 de
novo, applying Federal Circuit law. See Highway Equip.
Co. v. FECO, Ltd., 469 F.3d 1027, 1032 (Fed. Cir. 2006).
Appellants argue the district court erred in holding that
2
The district court also denied Appellants’ motions
for attorneys’ fees under § 1927. Dragon Intellectual Prop.,
LLC v. DISH Network LLC, No. 1:13-cv-02066-RGA, 2018
WL 5818533, at *2. Dragon has not challenged that aspect
of the district court’s decision on appeal and has thus
waived it.
3
Under 28 U.S.C. § 1295(a)(1), we have jurisdiction
over “an appeal from a final decision of a district court of
the United States. . . .” The parties do not dispute that to-
gether with the district court’s vacatur, the order denying
the Appellants’ motions for fees resolved all matters before
the district court. Accordingly, the district court’s order
constitutes a final appealable decision under 28 U.S.C.
§ 1295(a)(1). See PPG Indus., Inc. v. Celanese Polymer Spe-
cialties Co., Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (“A
‘final decision’ generally is one which ends the litigation on
the merits and leaves nothing for the court to do but exe-
cute the judgment”).
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they are not prevailing parties under § 285 because they
were not awarded “actual relief on the merits.” We agree.
We have held that “a defendant can be deemed a pre-
vailing party even if the case is dismissed on procedural
grounds rather than on the merits.” See, e.g., B.E. Tech.,
L.L.C. v. Facebook, Inc., 940 F.3d 675, 678–79 (Fed. Cir.
2019). In B.E. Technology, B.E. Technology sued Facebook,
accusing it of patent infringement. Id. at 676. Facebook
and two other parties that B.E. Technology had accused of
infringement, Microsoft and Google, filed separate peti-
tions for inter partes review of the asserted claims. Id. The
district court stayed proceedings pending the Board’s re-
view. Id. The Board held the asserted claims unpatentable
in three final written decisions and B.E. Technology ap-
pealed. Id. We affirmed the Board’s final written decision
in the Microsoft inter partes review and dismissed the re-
maining appeals as moot. Id. On remand, Facebook moved
for judgment on the pleadings. Id. at 676–77. The district
court instead dismissed the case as moot. Id. at 677.
We held that “even though the mootness decision was
made possible by winning a battle on the merits before the
PTO,” Facebook was a prevailing party because it “rebuffed
B.E.’s attempt to alter the parties’ legal relationship in an
infringement suit.” Id. at 679. Although B.E. Technology
involved the interpretation of prevailing party under Fed.
R. Civ. P. 54(d), we see no meaningful distinction that
would warrant a different interpretation under § 285. See
e.g., B.E. Tech., 940 F.3d at 677 (“We interpret the term
[prevailing party] consistently between different fee-shift-
ing statutes, and between Rule 54(d) and 35 U.S.C.
§ 285.”). Like in B.E. Technology, Appellants succeeded in
invalidating the asserted claims before the Board. After
we affirmed the Board’s decision, the district court vacated
the judgment of noninfringement as moot. Therefore, as in
B.E. Technology, Appellants successfully rebuffed Dragon’s
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attempt to alter the parties’ legal relationship in an in-
fringement suit.
At oral argument, Dragon attempted to distinguish
B.E. Technology on the basis that the district court here
vacated the judgment of noninfringement previously en-
tered in favor of Appellants instead of merely dismissing
the case as moot.
4
Oral Arg. 18:10–21:50. But such a dis-
tinction elevates form over substance and is inconsistent
with the reasoning set forth in B.E. Technology. See 940
F.3d at 679 (holding that the distinction between a dismis-
sal for mootness and a dismissal for lack of standing does
not warrant a different result). The judgment of nonin-
fringement was vacated only because the Appellants suc-
cessfully invalidated the asserted claims in a parallel inter
partes review proceeding, rendering moot Dragon’s in-
fringement action. If anything, Appellants’ success in ob-
taining a judgment of noninfringement, although later
vacated in view of Appellants’ success in invalidating the
asserted claims, further supports holding that they are pre-
vailing parties. Therefore, consistent with our decision in
B.E. Technology, we hold that DISH and SXM are prevail-
ing parties. Accordingly, we vacate and remand the district
court’s order denying Appellants’ motions for attorneys’
fees under 35 U.S.C. § 285.
Appellants further argue that fees awarded under
§ 285 should include fees incurred in related proceedings,
including parallel proceedings under the Leahy–Smith
America Invents Act and appeals therefrom, and that fees
under § 285 should be awarded against counsel of record as
4
Dragon’s remaining arguments are directed to
overturning B.E. Technology. We cannot consider these ar-
guments at the panel stage as we are bound to follow the
precedential decisions of prior panels. See CCA Assocs. v.
United States, 667 F.3d 1239, 1244 (Fed. Cir. 2011).
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DRAGON INTELLECTUAL PROP. v. DISH NETWORK LLC
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jointly and severally liable with a party. Appellants re-
quest that we resolve these legal issues prior to any re-
mand. 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 under-
took, we remand to the district court for initial considera-
tion of Appellants’ fee motions. We note that fees are
awarded only in exceptional cases, and not to every prevail-
ing 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.
CONCLUSION
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 Ap-
pellants’ motions for attorneys’ fees under 35 U.S.C. § 285.
VACATED AND REMANDED
COSTS
Costs to Appellants.
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