Attorney Fees Award Under 35 USC § 285 May Include Fees Incurred in Successful Reexamination

The court granted defendant's motion for attorney fees under 35 U.S.C. § 285, including fees incurred during inter partes reexamination in which all asserted claims were cancelled on grounds of invalidity. "The issue of whether a prevailing party in an exceptional case may recover fees for proceedings before the PTO, when the case was stayed due to the PTO proceedings, has received little attention. . . . Here, the legal services counsel performed for defendant during reexamination of the [patent-in-suit] were related to this suit. Reexamination was initiated during and in reaction to plaintiff’s action here. Further, the PTO’s cancellation of the asserted [patent] claims on grounds of invalidity disposed of plaintiff’s complaint here and made defendant the prevailing party. Thus, just as the parties envisioned when they jointly moved to stay this case, the reexamination proceedings essentially substituted for work that would otherwise have been done before this court. . . . Thus, under the unique circumstances of this case, defendant may recover fees for the reexamination proceedings."

Deep Sky Software, Inc. v. Southwest Airlines Co., 3-10-cv-01234 (CASD August 19, 2015, Order) (Bencivengo, J.)