Catholic Law Professor Megan La Belle was cited in a recent Bloomberg Law article, “Doubts Deepen if ‘Exceptional’ Patent Case Fees Include PTAB Work.” The article on fee-shifting for PTAB proceedings considers recent court decisions that have raised questions on recovering fees for board disputes and also puts a spotlight on a previous Federal Circuit decision that has drawn scrutiny. La Belle previously wrote an article on the topic, “Fee Shifting For PTAB Proceedings,” in 2016.

Bloomberg Law
By: Matthew Bultman
Date: September 2, 2021
Doubts Deepen if ‘Exceptional’ Patent Case Fees Include PTAB Work

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Megan La Belle, a law professor at Catholic University of America who studied the subject, said the U.S. Supreme Court has established a clear framework for recovering fees for work in administrative tribunals.

The first step is to look at the language of the relevant statute.

Section 285 states that courts “in exceptional cases may award reasonable attorney fees to the prevailing party.” Administrative proceedings, like PTAB reviews, generally aren’t viewed as “cases,” La Belle said.

“You only get to that second step if there’s an argument that administrative proceedings are captured by the language of the statute,” La Belle said. “I think clearly they’re not under 285.”

Another avenue for companies could be to pursue fees directly at the patent office. The PTAB has the power to sanction a party for misconduct at the board, which can include frivolous arguments. But La Belle suggested in a 2016 article that Congress pass legislation allowing for recovery of PTAB fees in exceptional cases in district court.

“From a policy perspective, to me it seems obvious that the Congress that passed the AIA, if they thought about this and if they were asked the question, ‘Can you recover fees for AIA proceedings?,’ I don’t see why they would ever say ‘No,’” La Belle said.

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