No fees award for PTAB proceedings, rules Fed Circuit
The US Court of Appeals for the Federal Circuit has said it cannot award attorneys’ fees for proceedings before the US Patent Trial and Appeal Board (PTAB).
In a precedential decision issued yesterday, June 4, the Federal Circuit refused Spanish pharmaceutical company Almirall’s request for fees stemming from a patent dispute with Amneal.
The case was the first time the court had to consider whether its authority to award attorneys’ fees extends to PTAB proceedings.
The Federal Circuit has exclusive jurisdiction to hear all patent-related appeals, both from federal district courts and the PTAB, an administrative board of the USPTO.
Almirall argued that the Federal Circuit had authority to award attorneys’ fees covering the entirety of the proceedings, stemming all the way back to an inter partes review (IPR) at the PTAB.
The law around courts awarding attorneys fees’ for PTAB proceedings is still evolving. Section 285 of the US Patent Act allows courts to award fees in “exceptional circumstances”.
“It does not appear that we have yet had occasion to consider to what extent section 285 applies to IPR appeals,” wrote Federal Circuit Judge Timothy Dyk in yesterday’s decision.
Writing on behalf of a unanimous three-judge panel, Dyk indicated that section 285 does not extend to administrative proceedings, such as IPRs.
“The Court of Customs and Patent Appeals, a predecessor court whose decisions are binding on us … on several occasions refused to read section 285 as pertaining to such administrative proceedings,” he wrote.
The dispute arose after Amneal informed the US Food and Drug Administration (FDA) of its intention to launch a generic version of Almirall’s acne cream Aczone.
Amneal also petitioned for IPR of an Almirall patent covering the cream at the PTAB, but was unsuccessful.
The Federal Circuit became involved after Amneal appealed the outcome of the IPR. Both companies have since agreed to drop the case, but Almirall wanted the Federal Circuit to award it attorneys’ fees for the entire proceedings.
Almirall said Amneal had behaved “unreasonably” by continuing to litigate the dispute even after the Spanish company had pledged not to sue for infringing its patent.
Dyk wrote: “Even if we could award fees in appeals from the [PTAB] in an IPR for work in the appellate proceedings, Almirall is impermissibly seeking fees that were incurred for work at the USPTO before this case was commenced.”
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