Case: 20-1106 Document: 24 Page: 1 Filed: 06/04/2020
United States Court of Appeals
for the Federal Circuit
______________________
AMNEAL PHARMACEUTICALS LLC, AMNEAL
PHARMACEUTICALS OF NEW YORK, LLC,
Appellants
v.
ALMIRALL, LLC,
Appellee
______________________
2020-1106
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00608.
______________________
ON MOTION
______________________
DENNIES VARUGHESE, Sterne Kessler Goldstein & Fox,
PLLC, Washington, DC, for appellants. Also represented
by ADAM LAROCK, BYRON LEROY PICKARD.
JAMES TRAINOR, IP Litigation, Fenwick & West LLP,
New York, NY, for appellee. Also represented by
ELIZABETH B. HAGAN, Seattle, WA.
______________________
Case: 20-1106 Document: 24 Page: 2 Filed: 06/04/2020
2 AMNEAL PHARMACEUTICALS LLC v. ALMIRALL, LLC
Before LOURIE, DYK, and REYNA, Circuit Judges.
DYK, Circuit Judge.
ORDER
Amneal Pharmaceuticals LLC and Amneal Pharma-
ceuticals of New York, LLC (collectively, “Amneal”) move
to voluntarily dismiss this appeal from a final decision of
the Patent Trial and Appeal Board in an inter partes re-
view (“IPR”) pursuant to Federal Rule of Appellate Proce-
dure 42(b). Almirall, LLC agrees that the appeal should be
dismissed, but asks that the court award its reasonable at-
torney fees and costs pursuant to 35 U.S.C. § 285 and Rules
39 and 42. Specifically, Almirall is seeking attorney fees
that were incurred for work on the IPR and in preparing
its opposition to the present motion. For the following rea-
sons, we deny that request.
BACKGROUND
Almirall markets ACZONE® (dapsone) 7.5% topical
gel, a prescription medication used to treat acne. The Food
and Drug Administration (“FDA”) lists two patents owned
by Almirall in the Orange Book as claiming ACZONE: U.S.
Patent No. 9,161,926 (“the ’926 patent”) and U.S. Patent
No. 9,517,219 (“the ’219 patent”).
In advance of seeking regulatory approval to market a
generic version of ACZONE, Amneal filed a petition for an
IPR in February 2018 (which the Patent Office granted in
August 2018) challenging claims of the ’926 patent, and
filed a second petition concerning the ’219 patent (not the
subject of this appeal) in October 2018. In February 2019,
Amneal filed its Abbreviated New Drug Application with
the FDA, submitting Paragraph IV certifications for the
’219 patent and the ’926 patent.
Almirall subsequently sued Amneal in district court,
alleging infringement of only the ’219 patent. Amneal filed
a counterclaim seeking declaratory judgment that the ’926
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AMNEAL PHARMACEUTICALS LLC v. ALMIRALL, LLC 3
patent is invalid and is not infringed. Shortly after that
suit was filed, the parties engaged in settlement discus-
sions between April 22 and 29, 2019. The parties have dif-
fering accounts about what happened during those
discussions, but there appears to be some agreement that
Almirall offered to enter into a covenant-not-to-sue on the
’926 patent contingent on dismissal of this IPR.
With the parties unable to reach a settlement, the un-
derlying IPR on the ’926 patent proceeded to trial on
June 5, 2019. On August 27, 2019, the Board issued its
final written decision finding claims 1–6 of the ’926 patent
not unpatentable. Amneal filed a timely appeal with this
court on October 28, 2019. On March 30, 2020, Amneal
filed this motion to voluntarily dismiss its appeal. Almirall
argues that Amneal litigated this matter in an unreasona-
ble manner by continuing to litigate the IPR after the cov-
enant-not-to-sue was offered, and Almirall had asked the
FDA to remove the patent from the Orange Book. Almirall
“seeks only fees and costs incurred during the relatively
marginal window of time from [April 29, 2019], the date
settlement negotiations were terminated, to the date of
trial in the underlying IPR, June 5, 2019,” Opp. at. 18,
along with the fees and costs for filing the opposition to this
motion.
DISCUSSION
Generally, our legal system adheres to the “American
Rule” under which “each party in a lawsuit ordinarily shall
bear its own attorney’s fees.” Hensley v. Eckerhart,
461
U.S. 424, 429 (1983). However, in certain categories of
cases, Congress has carved out exceptions to the American
Rule and allowed for recovery of reasonable attorney fees.
See Pennsylvania v. Del. Valley Citizens’ Council for Clean
Air,
478 U.S. 546, 561–62 (1986); Alyeska Pipeline Serv. Co.
v. Wilderness Soc’y,
421 U.S. 240, 247 (1975).
The provision asserted here, section 285 of the Patent
Act, provides that “[t]he court in exceptional cases may
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4 AMNEAL PHARMACEUTICALS LLC v. ALMIRALL, LLC
award reasonable attorney fees to the prevailing party.” It
does not appear that we have yet had occasion to consider
to what extent section 285 applies to IPR appeals. Almirall
argues that the Federal Circuit is a “court” authorized by
section 285 to award fees in exceptional cases and that we
have authority to award fees that were incurred during the
entirety of this matter, including for work at the Board be-
fore Amneal’s appeal was filed. We disagree. Whether or
not this court can award fees for work on appeal from a
decision in an IPR, section 285 does not authorize this court
to award fees for work that was done before the agency on
appeal from an IPR.
We have long recognized this court’s ability to award
attorney fees under section 285 for work done in district
court patent infringement actions. See Rohm & Haas Co.
v. Crystal Chem. Co.,
736 F.2d 688, 692 (Fed. Cir. 1984). In
that specific context, we have explained that “a case should
be viewed more as an ‘inclusive whole’ rather than as a
piecemeal process when analyzing fee-shifting under
§ 285.” Therasense, Inc. v. Becton, Dickinson & Co.,
745
F.3d 513, 516–17 (Fed. Cir. 2014) (citation omitted).
Appeals from the Board are a different matter. The
Court of Customs and Patent Appeals, a predecessor court
whose decisions are binding on us, see S. Corp. v. United
States,
690 F.2d 1368, 1370 (Fed. Cir. 1982) (en banc),
which notably heard appeals from the Patent Office but not
from district courts, on several occasions refused to read
section 285 as pertaining to such administrative proceed-
ings. Relying on the placement of section 285 in Chap-
ter 29, the court explained that “[s]ection 285, which
appears in the chapter of Title 35 concerning infringement
actions, is clearly inapplicable to this court.” Reddy v.
Dann,
529 F.2d 1347, 1349 (C.C.P.A. 1976). Similarly, the
court in Meitzner v. Mindick,
549 F.2d 775, 784 (C.C.P.A.
1977) held that section 285 did not apply to “exceptional
interference cases.” See also Bowmar Instr. Corp. v. Tex.
Instr., Inc., No. F74-137,
1978 WL 21733, at *1 (N.D. Ind.
Case: 20-1106 Document: 24 Page: 5 Filed: 06/04/2020
AMNEAL PHARMACEUTICALS LLC v. ALMIRALL, LLC 5
Aug. 1, 1978) (explaining that, under Reddy and Meitzner,
section 285 does “not authorize it to award fees to a party
prevailing in that court in an interference proceeding”).
Moreover, even were we to accept that section 285 is
not limited to district court proceedings, the plain meaning
of section 285’s reference to “[t]he court” speaks only to
awarding fees that were incurred during, in close relation
to, or as a direct result of, judicial proceedings. See Blyew
v. United States, 80 U.S. (13 Wall.) 581, 595 (1872) (“The
words ‘case’ and ‘cause’ are constantly used as synonyms in
statutes and judicial decisions, each meaning a proceeding
in court, a suit, or action.”). This language is simply incon-
sistent with Almirall’s position that we can award fees in-
curred for work in Patent Office proceedings before this
court has ever asserted its jurisdiction.
That conclusion, though specific to section 285, accords
with conclusions reached under other fee-shifting provi-
sions containing similar language. See, e.g., Kahane v.
UNUM Life Ins. Co. of Am.,
563 F.3d 1210, 1215 (11th Cir.
2009) (joining other circuits that have unanimously held
that 29 U.S.C. § 1132(g)(1), which allows for fee awards in
“any action under this subchapter,” does not authorize
awards for work done in pre-litigation administrative pro-
ceedings); see also W. Watersheds Project v. U.S. Dep’t of
the Interior,
677 F.3d 922, 926–27 (9th Cir. 2012) (collect-
ing similar cases under the Equal Access to Justice Act,
which provides for fees “incurred by that party in any civil
action,” 28 U.S.C. § 2412(d)); Levernier Constr., Inc. v.
United States,
947 F.2d 497, 502 (Fed. Cir. 1991) (“The trial
judge erred in Levernier I by ruling that even though the
consultant fees were incurred at the administrative level
(and thus not in a ‘civil action’), Levernier would be entitled
to recover those fees.”).
The cases upon which Almirall relies—Sullivan v.
Hudson,
490 U.S. 877 (1989) and Therasense—are not to
the contrary. It is true that in Sullivan, the Supreme Court
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6 AMNEAL PHARMACEUTICALS LLC v. ALMIRALL, LLC
explained that fees could be awarded for administrative
proceedings that are “intimately tied to the resolution of
the judicial action and necessary to the attainment of the
results Congress sought to promote by providing for
fees,”
490 U.S. at 888. But the “narrow class of qualifying admin-
istrative proceedings” that Hudson was referring to were
those “where ‘a suit has been brought in a court,’ and where
‘a formal complaint within the jurisdiction of a court of law’
remains pending and depends for its resolution upon the
outcome of the administrative proceedings.” Melkonyan v.
Sullivan,
501 U.S. 89, 97 (1991) (quoting
Hudson, 490 U.S.
at 892). Similarly, in Therasense, while we explained that
“case” under section 285 should be more viewed as an in-
clusive
whole, 745 F.3d at 516, we were clearly only refer-
ring to district court and appellate court proceedings.
Nor are we aware of any case that would support
awarding fees incurred before the Board here. We note
that PPG Indus., Inc. v. Celanese Polymer Specialties Co.,
840 F.2d 1565, 1569 (Fed. Cir. 1988), which was not cited,
is consistent with Hudson and our conclusion. In PPG, this
court allowed for the award of fees where Patent Office
“proceedings substituted for the district court litigation on
all issues considered by the PTO and the Board.”
Id. But
it did so only with respect to fees incurred after the filing of
a civil action, and the fees were awarded in that district
court proceeding. The Patent Office proceedings were
found by the district court to be intimately tied to the res-
olution of that action. Those are clearly not the circum-
stances here. *
* The court notes that the Board has its own means
for regulating litigation misconduct. 37 C.F.R. § 42.12 al-
lows the Board to impose sanctions including “attorney
fees” against a party for misconduct including “[a]dvancing
a misleading or frivolous argument or request for relief”
and “actions that harass or cause unnecessary delay or an
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AMNEAL PHARMACEUTICALS LLC v. ALMIRALL, LLC 7
For these reasons, we reject Almirall’s request for at-
torney fees under section 285. Even if we could award fees
in appeals from the Board in an IPR for work in the appel-
late proceedings, Almirall is impermissibly seeking fees
that were incurred for work at the Patent Office before this
case was commenced. Although Almirall also requests fees
incurred in preparing its opposition to Amneal’s motion, its
contentions as to unreasonable behavior to support such an
award have nothing to do with conduct before this court
and entirely relate to work before the Patent Office. We
therefore deny its request for fees. We also see no separate
basis here to award its request for costs. We therefore
grant the motion to dismiss on the terms proposed.
Accordingly,
IT IS ORDERED THAT:
(1) The motion to dismiss is granted.
(2) The request for fees and costs is denied.
(3) Each side shall bear its own costs.
FOR THE COURT
June 4, 2020 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
ISSUED AS A MANDATE: June 4, 2020
unnecessary increase in the cost of the proceeding.”
§ 42.12(a)(2), (7); (b)(6).
