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United States Court of Appeals
for the Federal Circuit______________________DRAGON INTELLECTUAL PROPERTY LLC,
Plaintiff-Cross-Appellant
v.
DISH NETWORK L.L.C.,
Defendant-Appellant
v.
ROBERT E. FREITAS, FREITAS & WEINBERG
LLP,
Respondents-Appellees______________________
2022-1621, 2022-1777______________________
Appeals from the United States District Court for theDistrict of Delaware in No. 1:13-cv-02066-RGA, Judge
Richard G. Andrews.
------------------------------------------------DRAGON INTELLECTUAL PROPERTY LLC,
Plaintiff-Cross-Appellantv.
SIRIUS XM RADIO INC.,
Defendant-Appellant

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v.
ROBERT E. FREITAS, FREITAS & WEINBERG
LLP,
Respondents-Appellees______________________
2022-1622, 2022-1779______________________
Appeals from the United States District Court for theDistrict of Delaware in No. 1:13-cv-02067-RGA, Judge
Richard G. Andrews.
______________________
Decided: May 20, 2024______________________JAMES F. MCDONOUGH, III, Rozier Hardt McDonough
PLLC, Atlanta, GA, argued for plaintiff-cross-appellant.
LAUREN J. DREYER, Baker Botts LLP, Washington, DC,argued for all defendants-appellants. Defendant-appellant
DISH Network L.L.C. Also represented by JAMIE ROY
LYNN; GEORGE HOPKINS GUY, III, Palo Alto, CA; SPENCERJAMES PACKARD, Houston, TX.
MARK BAGHDASSARIAN, Kramer Levin Naftalis &Frankel LLP, New York, NY, for defendant-appellant Sirius XM Radio Inc. Also represented by SHANNON H.
HEDVAT.
ROBERT E. FREITAS, Freitas & Weinberg LLP, Redwood
Shores, CA, argued for respondents-appellees. Also represented by DANIEL J. WEINBERG, Hopkins & Carley, ALC,
Redwood City, CA.
______________________

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Before MOORE, Chief Judge, STOLL, Circuit Judge, and
BENCIVENGO, District Judge. 1
Opinion for the court filed by Chief Judge MOORE.
Opinion dissenting-in-part filed by District JudgeBENCIVENGO.
MOORE, Chief Judge.
DISH Network L.L.C. (DISH) and Sirius XM Radio Inc.
(SXM) (collectively, Appellants) appeal the United States
District Court for the District of Delaware’s denial-in-partof Appellants’ motion for attorneys’ fees under 35 U.S.C.
§ 285. Dragon Intellectual Property, LLC (Dragon) crossappeals the district court’s grant-in-part of attorneys’ fees.
For the following reasons, we affirm.
BACKGROUND
Dragon separately sued DISH, SXM, and eight otherdefendants in December 2013, alleging infringement ofclaims of U.S. Patent No. 5,930,444. In response, DISH
and SXM each sent letters to Freitas & Weinberg LLP,
Dragon’s counsel, explaining their products were not covered by the ’444 patent and a reasonable pre-suit investigation would have shown the accused products could not
infringe the asserted claims. Dragon continued to pursue
its infringement claims.
In December 2014, DISH filed a petition seeking interpartes review of the ’444 patent. The Patent Trial and Appeal Board instituted review and subsequently granted
SXM’s request for joinder under 35 U.S.C. § 315(c). The
district court stayed proceedings as to DISH and SXM

Honorable Cathy Ann Bencivengo, District Judge,
United States District Court for the Southern District ofCalifornia, sitting by designation.
1

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pending resolution of the Board’s review but proceededwith claim construction as to the other eight defendants.
After the consolidated claim construction hearing,
Freitas & Weinberg LLP withdrew as Dragon’s counsel.
Based on the claim construction order, Dragon, DISH,
SXM, and the other eight defendants stipulated to noninfringement as to the accused products, and the district
court entered judgment of noninfringement in favor of all
defendants. Subsequently, the Board issued a final written
decision holding unpatentable all asserted claims. See
DISH Network L.L.C. v. Dragon Intell. Prop., LLC, No.
IPR2015-00499, 2016 WL 3268756 (PTAB June 15, 2016).
In August 2016, DISH and SXM moved for attorneys’
fees under 35 U.S.C. § 285 and 28 U.S.C. § 1927. Before
the motions were resolved, Dragon appealed both the district court’s judgment of noninfringement and the Board’s
final written decision. We affirmed the Board’s decision,
Dragon Intell. Prop., LLC v. DISH Network LLC, 711 F.
App’x 993 (Fed. Cir. 2017), and dismissed the parallel district court appeal as moot, Dragon Intell. Prop., LLC v. Apple Inc., 700 F. App’x 1005 (Fed. Cir. 2017). On remand,
Dragon moved to vacate the district court’s judgment of
noninfringement and to dismiss the case as moot. The district court vacated the judgment of noninfringement asmoot but retained jurisdiction to resolve Appellants’ fees
motions.
In November 2018, the district court denied Appellants’ motions for attorneys’ fees. The district court held
neither DISH nor SXM was a prevailing party because invalidating the patent through IPR proceedings was not abasis for attorneys’ fees. We reversed and remanded, holding Appellants were prevailing parties under § 285 because
they successfully invalidated the asserted claims in a parallel IPR proceeding. Dragon Intell. Prop., LLC v. DISH
Network LLC, 956 F.3d 1358, 1361–62 (Fed. Cir. 2020).

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Based on a magistrate judge report and recommendation and its own analysis, the district court determinedthese cases were exceptional and granted-in-part Appellants’ motion for attorneys’ fees under § 285 to the extent
Appellants sought fees from Dragon for time spent litigating. The district court denied-in-part the motion to the extent Appellants sought attorneys’ fees incurred solely
during the IPR proceedings and recovery from Dragon’s
former counsel, Freitas & Weinberg LLP and attorney Robert Freitas (collectively, Freitas), holding § 285 does not
permit either form of recovery. DISH and SXM appeal thedenial-in-part of fees. Dragon cross-appeals the district
court’s grant-in-part of fees. We have jurisdiction pursuant
to 28 U.S.C. § 1295(a)(1).
DISCUSSIONI
We first address Dragon’s cross-appeal. A district
court “in exceptional cases may award reasonable attorneyfees to the prevailing party.” 35 U.S.C. § 285. “[A]n ‘exceptional’ case is simply one that stands out from others withrespect to the substantive strength of a party’s litigating
position . . . or the unreasonable manner in which the case
was litigated.” Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554 (2014). Dragon challenges the
district court’s determination that these cases were “exceptional” under § 285.
We review exceptionality determinations for abuse of
discretion. Highmark Inc. v. Allcare Health Mgmt. Sys.,
Inc., 572 U.S. 559, 564 (2014). A district court abuses its
discretion when it “fail[s] to conduct an adequate inquiry.”Atl. Rsch. Mktg. Sys., Inc. v. Troy, 659 F.3d 1345, 1360
(Fed. Cir. 2011).
The district court determined these cases were exceptional based on “the substantive strength of Dragon’s infringement position.” Dragon Intell. Prop., LLC v. Dish

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Network L.L.C., No. 13-2066, 2021 WL 3616147, at *6 (D.
Del. Aug. 16, 2021) (Magistrate Rep. and Rec.). The basesfor exceptionality included clear prosecution history disclaimer, which precluded a finding of infringement by anyof the accused products; public availability of information
demonstrating noninfringement by the accused products
before Dragon filed the infringement suits; notice of noninfringement sent by Appellants to Dragon after the complaints were filed; and Dragon’s continued litigation after
being put on notice of the objective baselessness of its infringement allegations. Id. at *6–7.
Dragon’s argument is premised on its assertion thatvacatur of the noninfringement judgment invalidated theprior claim construction order. Dragon Principal and Resp.
Br. 54–64. Dragon contends an award of fees based on the
district court’s claim construction exposes it to harm basedon an unreviewable decision. Id. at 63–64 (citing UnitedStates v. Munsingwear, Inc., 340 U.S. 36, 40 (1950)).
Therefore, Dragon argues, the district court’s reliance on
its prior conclusion of clear prosecution history disclaimer
was improper and its exceptionality inquiry was inadequate. We do not agree.
The district court did not abuse its discretion by relying
on its prior adjudication of prosecution disclaimer during
claim construction. After we dismissed Dragon’s noninfringement appeal as moot and remanded to the district
court, Dragon moved under Federal Rule of Civil Procedure60(b)(6) requesting the district court “vacate [its] final
judgments of non-infringement” and dismiss the cases asmoot. The district court vacated its noninfringement judgments but declined to dismiss the cases, retaining jurisdiction to resolve Appellants’ fee motions. Dragon Intell.
Prop., LLC v. Apple, Inc., No. 13-2058, 2018 WL 4658208,
at *2–3 (D. Del. Sep. 27, 2018). Dragon did not request,
and the district court did not grant, vacatur of the claim
construction order.

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Dragon’s argument that vacatur of the noninfringement judgment required the district court to ignore its
claim construction order in determining exceptionality isincorrect. The district court was not required to relitigate
claim construction for an invalidated patent to resolve Appellants’ fee motions. Unlike Munsingwear, which concerned application of res judicata when intervening
mootness prevented a non-prevailing party from obtaining
judicial review, Munsingwear, 340 U.S. at 38–39, Dragon
is not at risk of harm by enforcement of the district court’s
claim construction order.
Even though vacatur of the noninfringement judgment
did not entitle Dragon to a claim construction do-over, themagistrate judge independently considered whether theprosecution history disclaimed the functionality of the accused devices in her exceptionality inquiry. Magistrate
Rep. and Rec. at *6 n.10 (noting the clear and unambiguous
prosecution history disclaimer of accused products and rejecting Dragon’s argument of entitlement to “a do-over on
a clean slate”). The district court analyzed the prosecution
history multiple times for this very issue. See id.; Dragon
Intell. Prop., LLC v. Apple, Inc., No. 13-2058, 2015 WL
5298938, at *4 (D. Del. Sep. 9, 2015) (claim construction
order); Dragon Intell. Prop., LLC v. DISH Network L.L.C.,
No. 13-2066, 2021 WL 5177680, at *2 (D. Del. Nov. 8, 2021)(granting-in-part fees under § 285). Dragon has not presented any grounds for holding that this constitutes an inadequate inquiry.
We hold the district court did not abuse its discretionin declaring these cases exceptional and affirm the district
court’s grant-in-part of Appellants’ motions for attorneys’fees.
II
We next address Appellants’ appeal of the denial-inpart of fees. Appellants argue the district court erred indenying attorneys’ fees incurred during the IPR

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proceedings and declining to hold Freitas jointly and severally liable with Dragon for the fee award. The district
court concluded § 285 did not permit either form of recovery. We review the scope of § 285 de novo. Waner v. Ford
Motor Co., 331 F.3d 851, 857 (Fed. Cir. 2003). We hold§ 285 does not entitle Appellants to recovery of fees incurred in parallel IPR proceedings and does not entitle Appellants to hold Dragon’s counsel jointly and severally
liable for fees.
A. Fees Incurred in IPR Proceedings
Appellants challenge the district court’s conclusionthat fees incurred in the parallel IPR proceedings are notrecoverable under § 285. Appellants contend the IPR proceedings were “part and parcel” of the case, and the optional nature of IPR proceedings does not compel the denialof IPR fees. We do not agree.
Appellants voluntarily pursued parallel proceedings infront of the Board instead of arguing invalidity before the
district court. Indeed, there are advantages to doing so. In
district court, challengers must prove each patent claim invalid by clear and convincing evidence. Microsoft Corp. v.
i4i Ltd. P’ship, 564 U.S. 91, 95 (2011). Before the Board,
petitioners need only establish unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). By statute,
IPR proceedings must be completed within one year of institution, 35 U.S.C. § 316(a)(11), providing an expeditious
alternative to potentially years-long litigation. Based onthese advantages, parties often strategically choose to argue invalidity before the Board. The “vast majority” of IPR
petitioners are sued by patent owners in another venue before filing petitions.
UNITED STATES PATENT AND
TRADEMARK OFFICE, PATENT TRIAL AND APPEAL BOARD
PARALLEL LITIGATION STUDY 3 (June 2022). In cases wherea party voluntarily elects to pursue an invalidity challengethrough IPR proceedings, we see no basis for awarding IPR
fees under § 285.
The dissent takes issue with

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characterization of Appellants’ participation in IPR proceedings as “voluntary.” Appellants were not compelled toargue invalidity before the Board. Eight other defendants
chose not to pursue such proceedings and continued to litigate in district court.
Our holding is consistent with PPG Industries v. Celanese Polymer Specialties Co., 840 F.2d 1565 (Fed. Cir.
1988), on which Appellants rely. In PPG, we held that fees
incurred by a defendant in reissue proceedings were recoverable under § 285. Id. at 1568–69. The district court in
PPG denied the defendant reissue fees, reasoning participation in the reissue proceedings was “non-mandatory”
and the party had the option of arguing validity before thecourt. PPG Indus. v. Celanese Polymer Specialties Co., 658
F. Supp. 555, 561 (W.D. Ky. 1987). We reversed on the
grounds that the defendant’s participation in the reissue
proceedings was “not optional” because the plaintiff had initiated the reissue proceedings and “forced” the defendantto perform before the Board “precisely the same type ofwork” the defendant would have performed at trial, so thedefendant “had no other option available.” PPG Indus., 840
F.2d at 1568. Those are not the circumstances here, where
Appellants’ initiation of and participation in the IPR proceedings was voluntary.
Appellants also argue the district court misapplied ourholding in Amneal Pharmaceuticals LLC v. Almirall, LLC,
960 F.3d 1368 (Fed. Cir. 2020), in concluding IPRs are not“cases” under § 285. In Amneal, we denied the patent
owner’s request for fees incurred in IPR proceedings because “section 285 does not authorize [us] to award fees forwork that was done before the agency on appeal from an
IPR.” Id. at 1371–72. We rejected the patent owner’s argument that our previous guidance to view cases “more asan ‘inclusive whole’ . . . when analyzing fee-shifting under§ 285,” Therasense, Inc. v. Becton, Dickinson & Co., 745
F.3d 513, 516–17 (Fed. Cir. 2014) (citation omitted), required application of § 285 to fees incurred in IPR

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proceedings. Amneal, 960 F.3d at 1371–72. We specifically
noted “we were clearly only referring to district court andappellate court proceedings.” Id. at 1372. Appellants argue Amneal is distinguishable because there we denied
fees for an IPR instituted before any district court suit was
filed, see id. at 1370, but here the IPR was filed after
Dragon filed suit in district court. While true, this distinction neither renders irrelevant Amneal’s analysis of § 285
nor creates inconsistency with our precedent.
We note that a district court is particularly well-positioned to determine whether a case before it is exceptional
because it “lives with the case over a prolonged period oftime.” Highmark, 572 U.S. at 564. Were “cases” under§ 285 to include IPR proceedings, district court judges
would be tasked with evaluating the exceptionality of arguments, conduct, and behavior in a proceeding in which
they had no involvement. Such an inquiry is inconsistent
with the rationale articulated in Highmark and the deference with which we review exceptionality determinations.
See id. Indeed, the district court determined these cases
exceptional based on Dragon’s substantive litigation position in the district court and its finding of clear prosecution
history disclaimer. These bases for exceptionality are
wholly unrelated to parallel proceedings before the Board.
For these reasons, we reject Appellants’ argument that
§ 285 allows recovery of fees incurred in the voluntarily undertaken parallel IPR proceedings.
B. Attorney Liability
Appellants challenge the district court’s holding that a
party’s counsel of record cannot be held jointly and severally liable for fee awards under § 285. Appellants argue§ 285 permits wide discretion in fashioning fee awards
based on the circumstances of the case. We agree with the
district court’s analysis and hold that liability for attorneys’ fees awarded under § 285 does not extend to counsel.

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We find support for this conclusion in the text of thestatute. Section 285 is silent as to who can be liable for a
fee award. Conversely, other statutes explicitly allow parties to recover costs and fees from counsel. For example,
under 28 U.S.C. § 1927, “[a]ny attorney . . . who so multiplies the proceedings in any case unreasonably and vexatiously may be required by the court to satisfy personallythe excess costs, expenses, and attorneys’ fees reasonably
incurred because of such conduct.” Similarly, Federal Ruleof Civil Procedure 11 expressly allows the court to impose
monetary sanctions on attorneys and law firms, which can
include “all of the reasonable attorney’s fees and other expenses” incurred as a result of sanctionable conduct. Fed.
R. Civ. P. 11(c)(1), (c)(4). Section 285, however, does not
identify counsel as liable for a fee award. Statutes andrules that expressly identify counsel as liable are more appropriate vehicles to recover fees from counsel.
Appellants acknowledge that other courts have similarly declined to extend liability under fee-shifting statutes
to counsel when the statute is silent on the issue, see, e.g.,
In re Crescent City Ests., LLC, 588 F.3d 822, 825 (4th Cir.
2009), but argue Congress’ inclusion of exceptionality language in § 285 indicates intent to allow recovery of fee
awards from counsel and parties alike. We do not agree.
That Congress has expressly allowed recovery of costs andfees against counsel elsewhere but intended to imply sucha provision in § 285 with exceptionality language is untenable. Cf. Roadway Exp., Inc. v. Piper, 447 U.S. 752, 761(1980) (refusing to allow “costs” recoverable against counsel under 28 U.S.C. § 1927 (1948) to include attorneys’ feesby reading in such a provision where the statute was silent). The requirement of § 285 that a case be exceptional
for the prevailing party to recover attorneys’ fees does notcreate by implication a presumption that liability can extend to counsel. When, as here, the statute does not provide for fee awards against attorneys and other statutes
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conclude, as the district court did, that fees cannot be assessed against counsel.
Appellants argue we have previously allowed assessment of § 285 fees against non-parties based on the natureof the case’s exceptionality. Appellants rely primarily on
Ohio Cellular Products Corp. v. Adams USA, Inc., where
we affirmed a determination that the plaintiff’s president
and sole shareholder, who committed inequitable conduct
during prosecution of a patent, could be joined as a thirdparty against whom fees could be collected. 175 F.3d 1343,
1352 (Fed. Cir. 1999), rev’d sub nom. Nelson v. Adams USA,
Inc., 529 U.S. 460 (2000). The Supreme Court reversed our
opinion on due process grounds but noted its decision“surely does not insulate” the third party “from liability.”
Nelson, 529 U.S. at 472. Unlike here, the third-party in
Nelson was not counsel for either party. In no case have
we imposed liability against a third party because they
were a party’s attorney. We see no basis in our precedent
to allow Appellants to recover § 285 fees from counsel, especially where, as here, exceptionality was based on
Dragon’s substantive litigation position and not on counsel’s manner of litigating.
For these reasons, we reject Appellants’ argument that
§ 285 allows Freitas to be held jointly and severally liable
for the fee award and affirm the district court’s denial-inpart of fees.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. We affirm the district court’s
judgment granting-in-part and denying-in-part Appellants’ motions for attorneys’ fees.
AFFIRMED
COSTS
No costs.

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United States Court of Appeals
for the Federal Circuit______________________DRAGON INTELLECTUAL PROPERTY LLC,
Plaintiff-Cross-Appellant
v.
DISH NETWORK L.L.C.,
Defendant-Appellant
v.
ROBERT E. FREITAS, FREITAS & WEINBERG
LLP,
Respondents-Appellees______________________
2022-1621, 2022-1777______________________
Appeals from the United States District Court for theDistrict of Delaware in No. 1:13-cv-02066-RGA, Judge
Richard G. Andrews.
------------------------------------------------DRAGON INTELLECTUAL PROPERTY LLC,
Plaintiff-Cross-Appellantv.
SIRIUS XM RADIO INC.,
Defendant-Appellant

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v.
ROBERT E. FREITAS, FREITAS & WEINBERG
LLP,
Respondents-Appellees______________________
2022-1622, 2022-1779______________________
Appeals from the United States District Court for theDistrict of Delaware in No. 1:13-cv-02067-RGA, Judge
Richard G. Andrews.
______________________BENCIVENGO, District Judge, dissenting-in-part.
I join Parts I and II.B of the majority’s opinion, but I
respectfully dissent from Part II.A. The majority categorically holds that § 285 does not entitle a defendant to recover fees incurred in IPR proceedings that the defendantsought to institute after being sued for infringement. I disagree.
The majority, by characterizing Appellants’ election toutilize IPR as “voluntary” and “parallel” to the district
court litigation, holds that there is no basis for awarding
IPR fees under § 285. Appellants did not “voluntarily” seek
to invalidate Dragon’s patents through IPR as would arguably have been the case had Appellants initiated IPR before Dragon filed this lawsuit. Instead compelled to contest
the validity of Dragon’s patents in response to Dragon’s
meritless infringement suit, Appellants exercised theirstatutory option to litigate their affirmative invalidity defenses in IPR.
As contemplated by the creation of IPR, Appellants utilized this substitute venue pursuant to 35 U.S.C. § 315(b)for efficiencies in lieu of district court proceedings. There
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majority points out, but there are also constraints. For instance, the challenge must be submitted fully formed
within 12 months of the suit being served with little, if any,
discovery. The results are binding. Estoppel provisions
preclude the challenger from asserting in the district court
invalidity arguments that were raised or could have beenraised in IPR. 35 U.S.C. § 315(e)(2).
In this case the IPR was not “parallel” to the district
court litigation. The Appellants were not litigating invalidity, or anything else, in parallel in the district court. To
the contrary, at Appellants’ request, the district court
stayed the litigation pending the outcome of the IPR. The
IPR, therefore, substituted for district court litigation on
Appellants’ validity challenge. See 157 Cong. Rec. S1376(daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (if an interpartes review is instituted while litigation is pending, that
review will completely substitute for at least the patentand-printed publications portion of the civil litigation).
The Appellants’ success in the IPR proceeding led to thedetermination that Appellants were the prevailing party inthis litigation. Dragon Intell. Prop., LLC v. DISH Network
LLC, 956 F.3d 1358, 1361–62 (Fed. Cir. 2020).
The majority expresses concern that a district court is
not situated to make an exceptional case finding based on
the proceedings in the IPR over which it did not preside.
That, however, is not the situation at hand. The Appellants do not seek an exceptional case finding based on theoutcome of the IPR.
The district court found this case exceptional based ona determination that it was objectively baseless from its inception. Appellants seek the fees they expended in the IPR,
in which they prevailed, as compensation for their defenseof this baseless litigation. The incurrence of these fees is
not wholly unrelated to the bases for exceptionality. Appellants incurred fees in the IPR that they would not haveincurred but for being sued by Dragon in a case that should

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not have been initiated by Dragon. To categorically preclude recovery of IPR fees in this circumstance is inconsistent with § 285 or the intent of IPR itself.
In a case such as this, where exceptionality is based ona determination that the case was objectively baseless fromits inception, it should be within the discretion of the district judge to award all reasonable fees incurred by the prevailing defendant, including fees incurred in an IPR that
resolved any invalidity defenses that were required to beasserted in response to the baseless complaint.
Accordingly, I respectfully dissent-in-part from thisportion of the majority opinion, and this court should reverse the district court’s decision denying Appellants’ request for fees incurred in IPR.