Dragon Intellectual Property LLC v. DISH Network LLC, No. 19-1283 (Fed. Cir. 2020)Annotate this Case
Dragon sued 10 defendants, alleging patent infringement. Based on petitions by DISH and SXM (collectively, “DISH”), the Board instituted inter partes review (IPR) of the patent. The district court stayed proceedings as to DISH but proceeded as to the other defendants. After the court issued a claim construction order, Dragon, DISH, and the other defendants stipulated to noninfringement as to the accused products. The court entered judgment in favor of all defendants. In the parallel IPR, the Board issued a final decision holding unpatentable all asserted claims.
DISH sought attorneys’ fees under 35 U.S.C. 285 and 28 U.S.C. 1927. Before the motions were resolved, Dragon appealed both the judgment of noninfringement and the Board’s decision. The Federal Circuit affirmed the Board’s decision and dismissed the district court appeal as moot. On remand, the district court vacated the judgment of noninfringement as moot but denied DISH’s motions for attorneys’ fees, holding that “success in a different forum is not a basis for attorneys’ fees” in the district court. The Federal Circuit vacated. The judgment of noninfringement was vacated only because DISH successfully invalidated the claims in parallel IPR proceedings, rendering moot Dragon’s infringement action. DISH’s success in obtaining a judgment of noninfringement, although later vacated because of its success in IPR, supports holding that they are prevailing parties.