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 the 

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

Richard G. Andrews.

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

DRAGON INTELLECTUAL PROPERTY LLC,

Plaintiff-Cross-Appellant

v.

SIRIUS XM RADIO INC.,

Defendant-Appellant

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DRAGON INTELLECTUAL PROPERTY LLC v.

DISH NETWORK L.L.C.

2

v.

ROBERT E. FREITAS, FREITAS & WEINBERG 

LLP,

Respondents-Appellees

______________________

2022-1622, 2022-1779

______________________

Appeals from the United States District Court for the 

District 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; SPENCER 

JAMES 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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DRAGON INTELLECTUAL PROPERTY LLC v.

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3

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 Judge

BENCIVENGO.

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-part 

of 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 other 

defendants in December 2013, alleging infringement of 

claims 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 inter 

partes 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 

1 Honorable Cathy Ann Bencivengo, District Judge, 

United States District Court for the Southern District of 

California, sitting by designation.

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pending resolution of the Board’s review but proceeded 

with 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 as 

moot 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 a 

basis 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 determined 

these 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 the 

denial-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).

DISCUSSION

I

We first address Dragon’s cross-appeal. A district 

court “in exceptional cases may award reasonable attorney 

fees to the prevailing party.” 35 U.S.C. § 285. “[A]n ‘exceptional’ case is simply one that stands out from others with 

respect 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 bases 

for exceptionality included clear prosecution history disclaimer, which precluded a finding of infringement by any 

of 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 that 

vacatur of the noninfringement judgment invalidated the 

prior 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 based 

on an unreviewable decision. Id. at 63–64 (citing United 

States 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 Procedure 

60(b)(6) requesting the district court “vacate [its] final 

judgments of non-infringement” and dismiss the cases as 

moot. 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 is 

incorrect. 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, the 

magistrate judge independently considered whether the 

prosecution 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 discretion 

in 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 in

denying 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 conclusion 

that fees incurred in the parallel IPR proceedings are not 

recoverable 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 denial 

of IPR fees. We do not agree.

Appellants voluntarily pursued parallel proceedings in 

front 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 on 

these 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 where 

a party voluntarily elects to pursue an invalidity challenge 

through 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 to 

argue 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 the 

court. 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 defendant

to perform before the Board “precisely the same type of 

work” the defendant would have performed at trial, so the 

defendant “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 our 

holding 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 for 

work 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 as 

an ‘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 and 

appellate 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 of 

time.” 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 the 

statute. 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 personally 

the excess costs, expenses, and attorneys’ fees reasonably 

incurred because of such conduct.” Similarly, Federal Rule 

of 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 and 

rules 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 and 

fees against counsel elsewhere but intended to imply such 

a 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’ fees 

by 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 not 

create 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 

expressly do for similar types of conduct, it is reasonable to 

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12

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 nature 

of 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 the 

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

Richard G. Andrews.

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

DRAGON INTELLECTUAL PROPERTY LLC,

Plaintiff-Cross-Appellant

v.

SIRIUS XM RADIO INC.,

Defendant-Appellant

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DRAGON INTELLECTUAL PROPERTY LLC v.

DISH NETWORK L.L.C.

2

v.

ROBERT E. FREITAS, FREITAS & WEINBERG 

LLP,

Respondents-Appellees

______________________

2022-1622, 2022-1779

______________________

Appeals from the United States District Court for the 

District 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 defendant 

sought to institute after being sued for infringement. I disagree. 

The majority, by characterizing Appellants’ election to 

utilize 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 their 

statutory 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 

are advantages in doing so for challengers to be sure, as the 

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3

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 been 

raised 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 inter 

partes 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 the 

determination that Appellants were the prevailing party in 

this 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 the 

outcome of the IPR.

The district court found this case exceptional based on 

a 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 defense 

of 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 have 

incurred but for being sued by Dragon in a case that should 

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4

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 on 

a determination that the case was objectively baseless from 

its 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 be 

asserted in response to the baseless complaint. 

Accordingly, I respectfully dissent-in-part from this 

portion of the majority opinion, and this court should reverse the district court’s decision denying Appellants’ request for fees incurred in IPR.

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