United States Court of Appeals 

for the Federal Circuit ______________________

DRAGON INTELLECTUAL PROPERTY, LLC,

Plaintiff-Appellee

v.

DISH NETWORK LLC,

Defendant-Appellant

v.

ROBERT E. FREITAS, FREITAS & WEINBERG 

LLP, JASON S. ANGELL,

Respondents-Appellees

______________________

2019-1283

______________________

Appeal from the United States District Court for the 

District of Delaware in No. 1:13-cv-02066-RGA, Judge 

Richard G. Andrews.

- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -

DRAGON INTELLECTUAL PROPERTY, LLC,

Plaintiff-Appellee

v.

SIRIUS XM RADIO INC.,

Defendant-Appellant

Case: 19-1283 Document: 101 Page: 1 Filed: 04/21/2020
2 DRAGON INTELLECTUAL PROP. v. DISH NETWORK LLC

v.

JASON S. ANGELL, ROBERT E. FREITAS, 

FREITAS & WEINBERG LLP,

Respondents-Appellees

______________________

2019-1284

______________________

Appeal from the United States District Court for the 

District of Delaware in No. 1:13-cv-02067-RGA, Judge 

Richard G. Andrews.

______________________

Decided: April 21, 2020

______________________

KAI ZHU, Dragon Intellectual Property, LLC, Los Altos, 

CA, for plaintiff-appellee. 

 JAMIE ROY LYNN, Baker Botts, LLP, Washington, DC, 

argued for defendant-appellant DISH Network LLC. Also 

represented by LAUREN J. DREYER; GEORGE HOPKINS GUY,

III, Palo Alto, CA; ALI DHANANI, MICHAEL HAWES, Houston, 

TX. 

 MARK BAGHDASSARIAN, Kramer Levin Naftalis & 

Frankel LLP, New York, NY, argued 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 RACHEL KINNEY, DANIEL J. WEINBERG. 

 ALEXANDRA HELEN MOSS, Electronic Frontier 

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DRAGON INTELLECTUAL PROP. v. DISH NETWORK LLC 3

Foundation, San Francisco, CA, for amicus curiae Electronic Frontier Foundation. 

 ______________________

Before LOURIE, MOORE, and STOLL, Circuit Judges.

MOORE, Circuit Judge.

DISH Network LLC and Sirius XM Radio Inc. (SXM) 

(collectively, Appellants) appeal the United States District 

Court for the District of Delaware’s order denying Appellants’ motions for attorneys’ fees under 35 U.S.C. § 285. 

Because the district court erred in holding that Appellants 

are not prevailing parties under § 285, we vacate and remand.

BACKGROUND

Dragon Intellectual Property, LLC separately sued 

DISH, SXM and eight other defendants1 in December 2013, 

alleging infringement of claims of U.S. Patent No. 

5,930,444. On December 23, 2014, DISH filed a petition 

seeking inter partes review of the ’444 patent. The Board 

instituted review on July 17, 2015 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 

pending the resolution of the Board’s review but proceeded 

with claim construction as to the other eight defendants. 

After a consolidated claim construction hearing, the 

district court issued a claim construction order on September 14, 2015. Following the claim construction order, 

Dragon, DISH, SXM, and the other eight defendants 

1 Dragon also sued Apple, Inc., AT&T Services, Inc., 

Charter Communications Inc., Comcast Cable Communications LLC, Cox Communications Inc., DirecTV LLC, 

Time Warner Cable Inc., and Verizon Communications Inc. 

in separate complaints.

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4 DRAGON INTELLECTUAL PROP. v. DISH NETWORK LLC

stipulated to noninfringement as to the products accused 

of infringing claims of the ’444 patent. On April 27, 2016, 

the district court entered judgment of noninfringement in 

favor of all defendants, including DISH and SXM, based on 

the district court’s claim construction order and the parties’

stipulation. See, e.g., Dragon Intellectual Prop., LLC v. 

DISH Network LLC, No. 1:13-cv-02066-RGA (D. Del. Apr. 

27, 2016), ECF No. 117; Dragon Intellectual Prop., LLC v. 

Sirius XM Radio Inc., No. 1:13-cv-02067-RGA (D. Del. Apr. 

27, 2016), ECF No. 130. On June 15, 2016, in the parallel 

inter partes review, the Board issued a final written decision holding unpatentable all asserted claims. See Dish 

Network L.L.C. v. Dragon Intellectual 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. On November 1, 2017, we affirmed 

the Board’s decision and dismissed the parallel district 

court appeal as moot. See Dragon Intellectual Prop., LLC 

v. Dish Network LLC, 711 F. App’x 993, 998 (Fed. Cir. 

2017); Dragon Intellectual Prop., LLC v. Apple Inc., 700 F. 

App’x 1005, 1006 (Fed. Cir. 2017). On remand, Dragon 

moved to vacate the district court’s judgment of noninfringement and to dismiss the case as moot. On September 

27, 2018, the district court vacated the judgment of noninfringement as moot but retained jurisdiction to resolve Appellants’ fees motions. Dragon Intellectual Prop., LLC v. 

Apple, Inc., No. 1:13-cv-02058-RGA, 2018 WL 4658208, at 

*2–3 (D. Del. Sept. 27, 2018).

On November 7, 2018, the district court denied the 

DISH and SXM motions for attorneys’ fees. Dragon Intellectual Prop., LLC v. DISH Network, LLC, No. 1:13-cv02066-RGA, 2018 WL 5818533, at *1–2 (D. Del. Nov. 7, 

2018). The district court agreed that DISH and SXM 

“achieve[d] a victory” over Dragon but held that neither 

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DRAGON INTELLECTUAL PROP. v. DISH NETWORK LLC 5

DISH nor SXM is a prevailing party because they were not 

granted “actual relief on the merits.” Id. at *1 & n.1. The 

district court further stated that “success in a different forum is not a basis for attorneys’ fees” in the district court. 

Id. at *1 n.1.2 DISH and SXM appeal, arguing that the 

district court erroneously held that they are not prevailing 

parties. We have jurisdiction pursuant to 28 U.S.C. 

§ 1295(a)(1).3

DISCUSSION

A district court “in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. 

§ 285. We review a district court’s determination of 

whether a litigant is a prevailing party under § 285 de 

novo, applying Federal Circuit law. See Highway Equip. 

Co. v. FECO, Ltd., 469 F.3d 1027, 1032 (Fed. Cir. 2006). 

Appellants argue the district court erred in holding that 

2 The district court also denied Appellants’ motions 

for attorneys’ fees under § 1927. Dragon Intellectual Prop., 

LLC v. DISH Network LLC, No. 1:13-cv-02066-RGA, 2018 

WL 5818533, at *2. Dragon has not challenged that aspect 

of the district court’s decision on appeal and has thus 

waived it. 3 Under 28 U.S.C. § 1295(a)(1), we have jurisdiction 

over “an appeal from a final decision of a district court of 

the United States. . . .” The parties do not dispute that together with the district court’s vacatur, the order denying 

the Appellants’ motions for fees resolved all matters before 

the district court. Accordingly, the district court’s order 

constitutes a final appealable decision under 28 U.S.C. 

§ 1295(a)(1). See PPG Indus., Inc. v. Celanese Polymer Specialties Co., Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (“A 

‘final decision’ generally is one which ends the litigation on 

the merits and leaves nothing for the court to do but execute the judgment”). 

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6 DRAGON INTELLECTUAL PROP. v. DISH NETWORK LLC

they are not prevailing parties under § 285 because they 

were not awarded “actual relief on the merits.” We agree. 

We have held that “a defendant can be deemed a prevailing party even if the case is dismissed on procedural 

grounds rather than on the merits.” See, e.g., B.E. Tech., 

L.L.C. v. Facebook, Inc., 940 F.3d 675, 678–79 (Fed. Cir. 

2019). In B.E. Technology, B.E. Technology sued Facebook, 

accusing it of patent infringement. Id. at 676. Facebook 

and two other parties that B.E. Technology had accused of 

infringement, Microsoft and Google, filed separate petitions for inter partes review of the asserted claims. Id. The 

district court stayed proceedings pending the Board’s review. Id. The Board held the asserted claims unpatentable 

in three final written decisions and B.E. Technology appealed. Id. We affirmed the Board’s final written decision 

in the Microsoft inter partes review and dismissed the remaining appeals as moot. Id. On remand, Facebook moved 

for judgment on the pleadings. Id. at 676–77. The district 

court instead dismissed the case as moot. Id. at 677. 

We held that “even though the mootness decision was 

made possible by winning a battle on the merits before the 

PTO,” Facebook was a prevailing party because it “rebuffed 

B.E.’s attempt to alter the parties’ legal relationship in an 

infringement suit.” Id. at 679. Although B.E. Technology

involved the interpretation of prevailing party under Fed. 

R. Civ. P. 54(d), we see no meaningful distinction that 

would warrant a different interpretation under § 285. See 

e.g., B.E. Tech., 940 F.3d at 677 (“We interpret the term 

[prevailing party] consistently between different fee-shifting statutes, and between Rule 54(d) and 35 U.S.C. 

§ 285.”). Like in B.E. Technology, Appellants succeeded in 

invalidating the asserted claims before the Board. After 

we affirmed the Board’s decision, the district court vacated 

the judgment of noninfringement as moot. Therefore, as in 

B.E. Technology, Appellants successfully rebuffed Dragon’s 

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DRAGON INTELLECTUAL PROP. v. DISH NETWORK LLC 7

attempt to alter the parties’ legal relationship in an infringement suit. 

At oral argument, Dragon attempted to distinguish 

B.E. Technology on the basis that the district court here 

vacated the judgment of noninfringement previously entered in favor of Appellants instead of merely dismissing 

the case as moot.4 Oral Arg. 18:10–21:50. But such a distinction elevates form over substance and is inconsistent 

with the reasoning set forth in B.E. Technology. See 940 

F.3d at 679 (holding that the distinction between a dismissal for mootness and a dismissal for lack of standing does 

not warrant a different result). The judgment of noninfringement was vacated only because the Appellants successfully invalidated the asserted claims in a parallel inter 

partes review proceeding, rendering moot Dragon’s infringement action. If anything, Appellants’ success in obtaining a judgment of noninfringement, although later 

vacated in view of Appellants’ success in invalidating the 

asserted claims, further supports holding that they are prevailing parties. Therefore, consistent with our decision in 

B.E. Technology, we hold that DISH and SXM are prevailing parties. Accordingly, we vacate and remand the district 

court’s order denying Appellants’ motions for attorneys’ 

fees under 35 U.S.C. § 285.

Appellants further argue that fees awarded under 

§ 285 should include fees incurred in related proceedings, 

including parallel proceedings under the Leahy–Smith 

America Invents Act and appeals therefrom, and that fees 

under § 285 should be awarded against counsel of record as 

4 Dragon’s remaining arguments are directed to 

overturning B.E. Technology. We cannot consider these arguments at the panel stage as we are bound to follow the 

precedential decisions of prior panels. See CCA Assocs. v. 

United States, 667 F.3d 1239, 1244 (Fed. Cir. 2011). 

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8 DRAGON INTELLECTUAL PROP. v. DISH NETWORK LLC

jointly and severally liable with a party. Appellants request that we resolve these legal issues prior to any remand. Though we see no basis in the Patent Act for 

awarding fees under § 285 for work incurred in inter partes 

review proceedings that the Appellants voluntarily undertook, we remand to the district court for initial consideration of Appellants’ fee motions. We note that fees are 

awarded only in exceptional cases, and not to every prevailing party. Should the district court determine that this is 

not an exceptional case, there would be no need to reach 

the additional issues regarding fee-shifting in inter partes 

reviews or joint and several liability of counsel. For this 

reason, we decline counsel’s request that we resolve these 

issues in the first instance. 

CONCLUSION

We have considered the parties’ remaining arguments 

and find them unpersuasive. For the foregoing reasons, we 

vacate and remand the district court’s order denying Appellants’ motions for attorneys’ fees under 35 U.S.C. § 285. 

VACATED AND REMANDED

COSTS

Costs to Appellants.

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