The Catholic University of America

CUA Law Professor Megan M. La Belle was invited to present her paper Fee Shifting for PTAB Proceedings, 24 Tex. Intell. Prop. L.J.  (forthcoming 2016) at the Texas Intellectual Property Law Journal Symposium in Austin, Texas on March 4. See below. 

Fee Shifting for PTAB Proceedings

From: Texas Intellectual Property Law Journal, 24 Tex. Intell. Prop. L.J.
Date: Forthcoming 2016 
Author: Megan M. La Belle

Fee shifting in patent litigation has been a hot topic in recent years. In Octane Fitness v. ICON and Highmark v. Allcare, the Supreme Court made it easier to shift fees under 35 U.S.C. § 285, which allows courts to award reasonable attorney’s fees to prevailing parties in patent cases. Moreover, several bills have been introduced in Congress since 2013 that would expand courts’ power beyond the parameters of § 285. Various aspects of these proposals have been heavily debated, including whether fee shifting should be mandatory or discretionary, how to recover fees from the “real party in interest,” and whether to adopt a one-way or two-way fee shifting scheme.

One important question about fee shifting that has received surprisingly little attention is whether prevailing parties should be able to recover attorney’s fees incurred for litigation before the Patent Trial and Appeal Board (PTAB)—the administrative tribunal of the U.S. Patent & Trademark Office that was created by the America Invents Act (AIA). With the precipitous rise in both PTAB proceedings (post-AIA) and fee motions (post-Octane), courts are bound to face this question more frequently than before. While the U.S. Court of Appeals for the Federal Circuit has allowed for the recovery of such fees in the past, the Federal Circuit’s analysis was flawed based on Supreme Court precedent. Thus, this Article proposes amendments to the current fee shifting bills to ensure that parties who prevail at the PTAB are able to recover their attorney’s fees.

For additional information on the Texas Intellectual Property Law Journal Symposium click here. 

Lisa Lerman  

Professor Megan M. La Belle's
Areas of Expertise

Intellectual Property

Civil Procedure

Federal Courts

For additional information about our professors' areas of speciality, see the Catholic University Experts page.