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ARTICLE · 01 AUGUST 2022

Section 285 Did Not Allow For IPR Fees

Jones Day
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The Patent Act provides that "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." 35 U.S.C. § 285.

United StatesIntellectual Property
Emily J. Tait
Emily J. Tait
Pranita Dhungana
Pranita Dhungana
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The Patent Act provides that "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." 35 U.S.C. § 285. In a recent denial of a motion for attorney fees pursuant to § 285, an Ohio district court found that fees accrued during a successful inter partes review ("IPR") proceeding are not recoverable by the prevailing patent challenger. See Sherwood Sensing Sols. LLC v. Henny Penny Corp., 2022 U.S. Dist. LEXIS 90872, *1 (S.D. Ohio May 20, 2022).

By way of background, plaintiff Sherwood filed suit against Henny Penny for patent infringement and Henny Penny thereafter petitioned the PTAB for IPR of the asserted patent. The district court stayed the case over Sherwood's objection and the PTAB granted review. The PTAB ultimately cancelled the patent as anticipated, leaving Sherwood no choice but to withdraw the district court case. Id. *4.

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