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.