CAFC Affirms District Court Denial of Attorney Fees Where There Was No Final Court Decision

By Rebecca Tapscott
April 16, 2020

“The CAFC reasoned that the issue in the present case was not whether there was a final court decision on the merits, but rather whether there was a final decision at all.”

In O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a district court decision that held Timney Triggers, LLC was not a “prevailing party” for purposes of collecting attorney fees under Section 285. In particular, the CAFC concluded that there was no final court decision capable of establishing the required judicial imprimatur, so there was no prevailing party.

District Court and Patent Office Proceedings

In February 2012, Mossberg sued Timney for infringement of its patent U.S. Patent No. 7,293,385 (the ‘385 patent). In response, Timney filed for inter partes reexamination of the ’385 patent with the U.S. Patent and Trademark Office (USPTO) and requested a stay of the district court proceedings. The USPTO vacated the institution of the inter partes reexamination because Timney had not identified a real party in interest. Over the next year and a half, Timney filed three ex parte reexamination requests, wherein the examiner in the third request rejected all pending claims over the cited prior art. The Patent Trial and Appeal Board (PTAB) affirmed the invalidity of all the claims. Throughout the reexamination proceedings, Mossberg filed several motions to lift the stay, but the district court maintained it.

Mossberg filed a notice of voluntary dismissal under Rule 41(a)(1)(A)(i), which provides for voluntary dismissal by the plaintiff without a court order, and the district court dismissed the case without prejudice. Following dismissal, Timney filed a motion to declare the case exceptional under 35 U.S.C. § 285, which states that the “court in exceptional cases may award reasonable attorney fees to the prevailing party.” The district court denied the motion, stating that Timney was not a “prevailing party” because a “Rule 41 dismissal without prejudice is not a decision on the merits and thus cannot be a judicial declaration altering the legal relationship between the parties.” Timney appealed to the CAFC.

Federal Circuit: There Was No Final Decision

Reviewing the term “prevailing party” de novo, the CAFC explained that a decision on the merits is not necessary to qualify as a prevailing party. Citing Raniere v. Microsoft Corp. and B.E. Tech. L.L.C. v. Facebook, Inc., the CAFC noted that prevailing parties have been found in cases where “the district court dismissed a plaintiff’s claims for lack of standing” and where there was “dismissal for mootness.” However, the CAFC reasoned that the issue in the present case was not whether there was a final decision on the merits, but rather whether there was a final decision at all.

The CAFC concluded that there was no such final decision in this case because a Rule 41(a)(1)(A)(i) voluntary dismissal becomes effective immediately upon plaintiff’s filing of the notice of dismissal “without a court order.” Further, the stay that was maintained by the district court did not qualify as a final decision because it cannot and did not change the legal relationship of the parties. Thus, since there was no final court decision and Timney was not a prevailing party for purposes of attorney’s fees, the CAFC affirmed the district court’s decision.

 

The Author

Rebecca Tapscott

Rebecca Tapscott is an intellectual property attorney who has joined IPWatchdog as our Staff Writer. She received her Bachelor of Science degree in chemistry from the University of Central Florida and received her Juris Doctorate in 2002 from the George Mason School of Law in Arlington, VA.

Prior to joining IPWatchdog, Rebecca has worked as a senior associate attorney for the Bilicki Law Firm and Diederiks & Whitelaw, PLC. Her practice has involved intellectual property litigation, the preparation and prosecution of patent applications in the chemical, mechanical arts, and electrical arts, strategic alliance and development agreements, and trademark prosecution and opposition matters. In addition, she is admitted to the Virginia State Bar and is a registered patent attorney with the United States Patent and Trademark Office. She is also a member of the American Bar Association and the American Intellectual Property Law Association.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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