CRST highlighted "the asymmetry in the parties’ litigation objectives, which affects the showing that each party must make to achieve prevailing-party status" and held that a defendant "prevails ‘whenever the plaintiff's challenge is rebuffed, irrespective of the precise reason for the court's decision.’ " Robinson v. O'Rourke, 891 F.3d 976, 982 (Fed. Cir. 2018) (quoting CRST, 136 S. Ct. at 1651 ); see also B.E. Tech., L.L.C. v. Facebook, Inc., 940 F.3d 675, 679 (Fed. Cir. 2019), cert denied, ––– U.S. ––––, 141 S. Ct. 618, 208 L.Ed.2d 227 (2020) ("Facebook obtained the outcome it sought via the mootness dismissal; it rebuffed B.E.’s attempt to alter the parties’ legal relationship in an infringement suit .... CRST explains that a defendant, like Facebook, can prevail by ‘rebuffing’ plaintiff's claim, irrespective of the reason for the court's decision."). Of course, in order to confer prevailing party status, the rejection of the plaintiff's attempt to alter the parties’ legal relationship "must be marked by ‘judicial imprimatur.’ " CRST, 136 S. Ct. at 1646 (citation omitted).
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.
. In identifying the prevailing party, a court must consider whether it has “effect[ed] or rebuff[ed] a plaintiff's attempt to effect a ‘material alteration in the legal relationship between the parties.'” B.E. Tech., L.L.C. v. Facebook, Inc., 940 F.3d 675, 679 (Fed. Cir. 2019) (quoting Raniere v. Microsoft Corp., 887 F.3d 1298, 1306 (Fed. Cir. 2018)). While there is “a strong presumption” that the prevailing party will be awarded costs, a court may “exercise its discretion and refuse to award costs to the prevailing party.”
Zaxcom further points out that the Federal Circuit “has awarded defendant prevailing 11 party status in cases in which patent infringement claims are dismissed for mootness.” (Doc. 97 at 22 (citing B.E. Tech. L.L.C. v. Facebook, Inc., 940 F.3d 675, 676-77 (Fed. Cir. 2019)).) In B.E. Technology, the plaintiff's patent claims were found unpatentable and cancelled, and the district court dismissed the case as moot.
(Id. at 6, citing, for example, Sony Elecs., Inc. v. Soundview Techs., Inc., 359 F. Supp. 2d 173, 176 (D. Conn. 2005) ("Section 285, however, is not an independent basis for jurisdiction.")). Similar arguments were rejected by the Federal Circuit in B.E. Tech., L.L.C. v. Facebook, Inc., 940 F.3d 675 (Fed. Cir. 2019), cert. denied, 141 S. Ct. 618 (2020). There, B.E. Technology argued that, once the case was dismissed as moot following PTAB inter partes review, the district court "lacked a live case or controversy" from which to identify the prevailing party and render a decision on attorney's fees.
Id. Defendants seek relief because of a recently issued decision from the Federal Circuit—B.E. Technology, L.L.C. v. Facebook, Inc., 940 F.3d 675 (Fed. Cir. 2019). See Motion for Relief ("Mot.") at 1, Docket No. 227.
Although the dismissal here is without prejudice, a dismissal of a patent action for mootness or lack of standing can, at least in some cases, confer prevailing party status. See B.E. Tech., L.L.C. v. Facebook, Inc., 940 F.3d 675, 679 (Fed. Cir. 2019). However, even if Yita achieved prevailing party status, this is not an exceptional case entitling it to fees.
To determine whether the Defendants were the prevailing parties in this action, the Court examines whether the district court's judgment rebuffed Plaintiffs' efforts to effect a material alteration in the legal relationship between the parties. See B.E. Tech., L.L.C. v. Facebook, Inc., 940 F.3d 675, 679 (Fed. Cir. 2019), cert denied, 141 S.Ct. 618 (2020). In other words, the Court conducts a practical examination of whether “the case [was] resolved in the defendant's favor.”
The Court's dismissal of the AC unambiguously "rebuffs [Blair's] attempt to effect a 'material alteration in the legal relationship between the parties.'" Raniere, 887 F.3d at 1306 (quoting CRST, 136 S. Ct. at 1651); see also, e.g., B.E. Tech., L.L.C. v. Facebook, Inc., 940 F.3d 675, 677-79 (Fed. Cir. 2019) (defendant was prevailing party where cancellation of asserted claims in IPR proceeding led to dismissal for mootness). However, this is not an exceptional case.
Raniere v. Microsoft Corp., 887 F.3d 1298, 1308 (Fed. Cir. 2018); see also Giesecke & Devrient GmbH v. United States, No. 17-1812C, 2020 WL 401806, at *10 (Fed. Cl. Jan. 24, 2020) (holding that defendant was a prevailing party under 35 U.S.C. § 285 after voluntary dismissal because defendant fulfilled its primary objective and "it would have made little sense to force the parties to go through a charade of a merits determination no one wanted simply to apply the moniker 'with prejudice'"). B.E. Tech., L.L.C. v. Facebook, Inc., 940 F.3d 675, 677 (Fed. Cir. 2019). Marks Studios argues that it would be prejudiced by a voluntary dismissal because it would lose its "substantial right" to be deemed a prevailing party under Rule 54(d)(1) and 35 U.S.C. § 285.