District Court Awards Fees And Costs Incurred In District Court Patent Litigation, Related USPTO CBM Proceedings, And Related Appeals
On June 21, 2021, the United States District Court for the Southern District of California awarded defendants’ fees and costs pursuant to 35 U.S. Code § 285 for work performed in defending against claims of patent infringement in district court, and more significantly, also awarded defendants’ fees and costs for a related appeal, the related Covered Business Method (“CBM”) proceedings, and an appeal of the CBM proceedings. Ameranth, Inc. v. Domino's Pizza, LLC et. al., 3-12-cv-00733.
Under Section 285 of the patent statute, “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285. On February 5, 2021, the court granted defendants’ motion to declare this case exceptional under 35 U.S.C. § 285; but requested additional briefing on the reasonableness of defendants’ fees. Defendants requested their fees, costs, and pre-judgment interest for work performed in the district court litigation and related appeal, and related CBM proceedings and appeal of the CBM proceedings. The court awarded all requested fees and costs, including fees and costs incurred in the related CBM proceedings and appeals, other than prejudgment interest that defendants failed to timely request and a limited amount of expenses related to computer search charges that defendants failed to explain.
Plaintiff argued that defendants should not recover any fees for work performed on the related matters. The district court relied on the decision of the United States Court of Appeals for the Federal Circuit in Therasense to reject that argument in favor of a holistic approach and awarded fees for all stages of the case. Therasense, Inc. v. Becton, Dickinson & Co., 745 F.3d 513, 516-17 (Fed. Cir. 2014). Plaintiff also argues that the court should not grant such fees on two grounds: first, plaintiff’s appeals were not frivolous, and second the CBM proceedings did not obviate the need for further litigation in district court. The court rejected those arguments as insufficient to provide a basis to deviate from the holistic approach.