G. Hopkins Guy, III

In an important attorney fee question for intellectual property practitioners, G. Hopkins Guy III has taken to the U.S. Court of Appeals for the Federal Circuit a fee request for representing client Dish Network LLC.

Guy got a victory for Dish after Dragon Intellectual Property LLC sued over a patent for a simultaneous recording and playback apparatus that allows a user who missed a portion of a live broadcast to subsequently watch it.

After a Markman hearing, a stipulated judgment of non-infringement was entered in favor of Dish. In a parallel inter partes review, the Patent Trial and Appeals Board found all asserted claims invalid. On appeal, the Federal Circuit affirmed the PTAB and dismissed the non-infringement appeal as moot.

But despite those wins, U.S. District Court Judge Richard G. Andrews of Delaware, found that neither Dish nor co-defendant Sirius XM was a prevailing party for fee purposes because no specific judicial relief had been granted due to the district court’s vacatur of the judgment of noninfringement for mootness.

So Guy and his team took the fee fight back to the Federal Circuit.

“We won, and should the court consider that in a fee case — that’s the simple question.” Dragon Intellectual Property v. DISH Network LLC, 16-2468 (CAFC, appeal filed Feb. 13, 2019).

As he and colleagues wrote in Federal Circuit pleadings, “As has been clear since at least 1988, accused infringers who invalidate a patent or who stave off pending infringement allegations and prevent a patent owner from asserting any future claim of infringement are prevailing parties. …this Court must reverse.”

The matter remains under submission as of press time.

— John Roemer