PTO Fees for CBM Review Not Recoverable as Costs

The court denied defendants' motion for over $70,000 in PTO filing costs after plaintiff voluntarily dismissed its infringement action following CBM review. "[Defendants] argue in their Response that they 'are entitled to recover [their] CBM filing fees because they were proximately caused by [plaintiff's] improper assertion of the [patent-in-suit] against Defendants,' and '[u]nder 35 U.S.C. § 285, USPTO and PTAB proceeding related fees and costs are wholly recoverable when incurred as a result of the 'exceptional' conduct of the losing party.' No other explanation or legal authority as to why such costs should be taxed was provided to the Clerk. . . . The Court adopts the plain language of the Local Rules and finds that filing fees paid to the USPTO as part of CBM proceedings are not recoverable in this case, particularly where the instant action was not found to be 'exceptional' within the meaning of 35 U.S.C. section 285."

Credit Acceptance Corporation v. Westlake Services, LLC et al, 2-13-cv-01523 (CACD January 5, 2016, Order) (Otero, J.)