Case: 19-1283 Document: 101 Page: 1 Filed: 04/21/2020
`
`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
`______________________
`
`
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
`
`DRAGON INTELLECTUAL PROPERTY, LLC,
`Plaintiff-Appellee
`
`v.
`
`SIRIUS XM RADIO INC.,
`Defendant-Appellant
`
`
`
`
`Appeal from the United States District Court for the
`District of Delaware in No. 1:13-cv-02066-RGA, Judge
`Richard G. Andrews.
`
`

`

`Case: 19-1283 Document: 101 Page: 2 Filed: 04/21/2020
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`2
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`DRAGON INTELLECTUAL PROP. v. DISH NETWORK LLC
`
`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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`Case: 19-1283 Document: 101 Page: 3 Filed: 04/21/2020
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`DRAGON INTELLECTUAL PROP. v. DISH NETWORK LLC
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`3
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`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 defendants1 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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`DRAGON INTELLECTUAL PROP. v. DISH NETWORK LLC
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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
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`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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`DRAGON INTELLECTUAL PROP. v. DISH NETWORK LLC
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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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`DRAGON INTELLECTUAL PROP. v. DISH NETWORK LLC
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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.
`
`
`
`