May 26, 2020

May 26, 2020

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A Win is a Win!

B.E. Technology LLC v. Facebook, Inc., Appeal No. 18-2356 (Fed. Cir. Oct. 9, 2019) identifies what it means to win in a case.  More particularly, the Federal Circuit explained how to determine whether a party is “the prevailing party.”  B.E. Technology (“B.E.”) brought a patent infringement suit in district court against Facebook and the case was stayed pending inter partes review.  The Patent Trial and Appeal Board ultimately held the claims of the patent in question to be unpatentable, which was confirmed on appeal.

Facebook then moved to dismiss the corresponding district court case, seeking dismissal with prejudice and costs under Rule 54(d).  As a result, the court dismissed the case, taxed B.E., and declared Facebook the prevailing party.  B.E. agreed with the dismissal but appealed the costs award to the Federal Circuit.

Federal Rule of Civil Procedure 54(d)(1) states that “[u]nless a federal statute, these rules, or a court order provides otherwise, costs—other than attorney’s fees—should be allowed to the prevailing party.”  The Federal Circuit ultimately agreed with the district court’s decision, referencing the Supreme Court decision in CRST Van Expedited, Inc. v. EEOC, 136 S. Ct. 1642 (2016), as guidance.  The proper inquiry was whether the “plaintiff’s challenge [was] rebuffed,” regardless of whether the court’s final judgment was for procedural reasons, for mootness, or on the merits.  In the present case, the district court dismissed the claims for mootness and placed a judicial imprimatur on B.E.’s claim for patent infringement.  No matter how the court arrives at its decision, a favorable ruling may result in costs to the prevailing party.

Copyright 2020 K & L Gates


About this Author

Jason A. Engel, Registered Patent Attorney, KL Gates, Law Firm

Jason A. Engel is a registered patent attorney with an undergraduate degree in electrical engineering. He concentrates his practice on the litigation of intellectual property matters with a focus on patent litigation and patent office litigation. He has substantial experience before the Patent Trial and Appeal Board, in federal district courts across the country, and with Section 337 investigations in the U.S. International Trade Commission.

Mr. Engel is experienced in all aspects of litigation, including discovery, motion practice, claim...

Devon C. Beane, Intellectual Property Lawyer, Patent Litigator, KL Gates, Law Firm

Devon Beane is an intellectual property lawyer concentrating her practice on patent litigation, appellate litigation, post-grant practice at the Patent Trial and Appeal Board, patent licensing, and client counseling. She has a bachelor of science in chemistry.

Ms. Beane is experienced in all phases of patent litigation, including fact and expert discovery, witness preparation, discovery and dispositive motion practice, claim construction practice, and trial and post-trial proceedings. Ms. Beane is also experienced in all phases of Federal Circuit appeals, including initial filings, motion practice, substantive briefs, en banc proceedings, and hearing preparation.