In Deep Sky Software, Inc., v. Southwest Airlines Co., 10-cv-1234-CAB (S.D. Cal. August 19, 2015), Southwest sought $359,733.17 in attorneys’ under fees under 35 U.S.C. § 285 after Deep Sky’s U.S. Patent No. 6,738,770 was found invalid during reexamination.  Included in this amount were the fees expended on the reexamination.  The district court noted cases where fees were awarded for proceeding before the USPTO, including IA Labs CA, LLC v. Nintendo Co., No. CIV. PJM 10-833, 2012 WL 1565296, at *4 (D. Md. May 1, 2012) aff’d, 515 F. App’x 892 (Fed. Cir. 2013) (awarding fees for work done during reexamination proceedings); Howes v. Med. Components, Inc., 761 F. Supp. 1193, 1198 (E.D. Pa. 1990) (reexamination proceedings); Scott Paper Co. v. Moore Bus. Forms, Inc., 604 F. Supp. 835, 838 (D. Del. 1984) (awarding fees for reissue proceedings); and PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1568 (Fed. Cir. 1988) (reissue proceedings).  The Court also noted some cases where such fees were not awarded.

The district court observed that the legal services counsel performed for defendant during reexamination of the patent were related to the suit. Reexamination was initiated during and in reaction to the suit, and the PTO’s cancellation of the patent claims disposed of the complaint here and made Southwest the prevailing party. The court noted that “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.”  The Court concluded that “under the unique circumstances of this case, defendant may recover fees for the reexamination proceedings.”

If fees are awarded for reexaminations, will it be long before a fee award includes the fees involved in an inter partes review?  It seems that if a patent owner’s assertion of a patent is exceptional, a prevailing accused infringer should be entitled to an award of attorneys’ fees for a successful inter partes review of the asserted patent.