Post-Grant Patent Blog

PTAB Grants First-Ever Attorneys' Fees Award in IPR
July 18, 2016

Co-authored by Patrick Doyle

The Patent Trial and Appeal Board (PTAB) recently issued its first-ever order granting attorneys’ fees to a party engaged in an inter partes review (IPR) proceeding.  The PTAB awarded Petitioner RPX Corporation (RPX) $13,559.97 in attorneys’ fees after finding that Patent Owner Applications in Internet Time, LLC (AIT) breached a protective order and that RPX suffered harm as a result of that breach.

In 2013, AIT filed suit in federal district court alleging that, Inc. (Salesforce) infringed U.S. Patent Nos. 7,356,482 and 8,484,111.  Salesforce petitioned the PTAB to review the ’482 and ’111 patents under covered business method patent review.  However, the PTAB denied the petition, reasoning that the patents did not meet the criteria for review under the covered business method program.

Shortly after the PTAB’s denial, RPX filed IPR petitions seeking review of the same patents.  The PTAB granted these petitions and began the review process.  AIT agreed to a Protective Order allowing RPX to file confidential information during the proceedings.  However, AIT subsequently shared confidential information with its outside counsel for the litigation.  The PTAB ruled that this “disclosure of RPX’s confidential information . . . without prior agreement of the parties was a clear, unambiguous violation of the Protective Order.”

AIT argued that the Protective Order contained an unresolved ambiguity and that showing outside counsel RPX’s confidential information was not expressly prohibited by the agreement.  Additionally, AIT argued that it provided declarations to clarify the scope of the Protective Order breach.  However, the PTAB did not find these arguments persuasive, holding that no ambiguity existed as to whether outside counsel were considered parties under the Protective Order. 

The PTAB therefore found that a breach of the Protective Order had occurred, and that RPX had been harmed as a result of the breach.  The PTAB ordered AIT to pay $13,559.97 in attorneys’ fees, which covered the work of RPX’s counsel addressing the breach.

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