Judge Sue L. Robinson recently denied without prejudice motions filed by several defendants for an award of attorneys’ fees pursuant to § 285 in a string of cases that were dismissed for lack of standing. Walker Digital, LLC v. Expedia, Inc., et al., Civ. No. 11-313-SLR (D. Del. Oct. 16, 2013); Walker Digital v. Amazon.com, Inc., Civ. No. 12-140-SLR (D. Del. Oct. 16, 2013); Walker Digital v. Barnes & Noble, Inc., Civ. No. 12-141-SLR (D. Del. Oct. 16, 2013); Walker Digital, LLC v. Expedia, Inc., Civ. No. 12-142-SLR (D. Del. Oct. 16, 2013). The cases had been dismissed for lack of standing after the plaintiff, as part of a settlement agreement, assigned the patents-at-issue to one of the original defendants. The plaintiff appealed that dismissal to the Federal Circuit, and the defendants subsequently moved for fees. Id. at 2. The Court explained that under Rule 54(d)(2)(8), “if an appeal on the merits of a case is pending, a court ‘may rule on the claim for fees, may defer its ruling on the motion, or may deny the motion without prejudice, directing under subdivision (d)(2)(8) a new period for filing after the appeal has been resolved.’” Id. at 3 (quoting Fed. R. Civ. P. 54, Advisory Committee Note, 1993 Amendment, Paragraph (2), Subparagraph (B)).
Although the parties made competing arguments addressing whether prevailing on a lack of standing argument represented prevailing on the merits of the litigation, and the defendants provided arguments purporting to justify a finding that the case was exceptional (including that the plaintiff continued litigating the cases after assigning the patents away and allegedly altered the language in the public notice of the assignment in an effort to hide it), the Court in this case opted to exercise its discretion under Rule 54 and denied the motions for attorneys’ fees without prejudice, explaining that “[i]f the Federal Circuit affirms, defendants may request a briefing schedule for their attorney fee motions.” Id. at 4.