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ARTICLE · 13 OCTOBER 2020

To Fee Or Not To Fee

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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In Amneal Pharmaceuticals LLC v. Almirall, LLC, the Federal Circuit determined that it cannot award attorneys' fees under 35 U.S.C. § 285 for work done on an underlying inter partes review (IPR).

United StatesIntellectual Property
Lionel Lavenue
Lionel Lavenue
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In Amneal Pharmaceuticals LLC v. Almirall, LLC, the Federal Circuit determined that it cannot award attorneys' fees under 35 U.S.C. § 285 for work done on an underlying inter partes review (IPR).1 However, it also provided welcome guidance suggesting that district courts can, in limited circumstances, invoke § 285 to award attorneys' fees for parallel Patent Trial and Appeal Board (PTAB) proceedings. Yet the panel also refused to award fees accumulated at the Federal Circuit itself, supported by a rationale that district court judges may co-opt to deny attorneys' fees accumulated in related proceedings in other fora. We examine this decision in the context of district court orders finding for and against attorneys' fees awards for PTAB proceedings.

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