Potential Limits To Fee Recovery May Make Petitioners Rethink Post-Grant Procedures

When the America Invents Act became law, it promised patent challengers a cheaper, faster alternative to district court litigation. Accordingly, the act created a trio of quasi-judicial proceedings—including the popular inter partes review—which enable district court defendants to quickly challenge the validity of patents asserted against them in parallel district court complaints.

After the act's passage, the Supreme Court made it easier for successful patent litigants to recover their attorneys' fees by lowering the burden of proving an "exceptional case" pursuant to 35 USC §285 in Octane Fitness, LLC v. ICON Health & Fitness, Inc (134 S Ct 1749 (2014)). Since that decision, some district courts have allowed for the prevailing party to recover the fees it spent on a related inter partes review. The court in Deep Sky Software, Inc v. Southwest Airlines Co (No 10-cv-1234-CAB, 2015 WL 1084423 (SD Cal, August 19 2015)) did just that, noting that efforts in the related