Attorney Fees Claim Permissible Even After Action Dismissed With Prejudice
Client Alert | 1 min read | 11.27.06
A claim for attorney fees under 35 U.S.C. 285 is properly entertained by a district court even after an action's dismissal with prejudice by that court, a Federal Circuit panel determines in Highway Equipment Company, Inc. v. FECO, Ltd. and Stan Duncalf (Nos. 05-1547, 1578, November 21, 2006). The dismissal is deemed to have the necessary judicial imprimatur to constitute a judicially sanctioned change in the legal relationship of the parties.
On the day of a final scheduled pretrial conference in a suit in federal district court involving claims of both patent infringement and violations of state law, Highway Equipment filed a covenant not to assert any claim of patent infringement under its patent, thus withdrawing the patent infringement controversy. FECO subsequently filed its motion for attorney fees and, following dismissal of its motion, FECO appealed.
The district court dismissal of the attorney fees motion is affirmed. Effects of a dismissal with prejudice of attorney fees claims under the Patent Act must be determined by Federal Circuit law in order to promote national uniformity concerning the availability of attorney fees, the Federal Circuit panel concludes. Application of regional circuit law could cause a dismissal with prejudice on such claims to vary with the regional circuit in which the case originated. There is a noted lack of uniformity among the regional circuits regarding the effect of a dismissal on the availability for attorney fees, and applying the Federal Circuit's own law is considered to ensure uniformity when patent issues are litigated. Since the facts at issue in the claim arising under the applicable state statute are insufficiently related to those in the federal counts as to form a part of the same case or controversy, however, the district court's judgment on the alleged violation of state law is vacated, and the case is remanded with instructions to dismiss that claim.
Insights
Client Alert | 8 min read | 10.01.25
On September 29, 2025, the U.S. Department of Commerce Bureau of Industry and Security (BIS) announced a sweeping Interim Final Rule (IFR), (the “Affiliates Rule”) expanding which entities qualify as Entity List or Military End-User entities, thereby subjecting those entities to elevated export control restrictions under the Export Administration Regulations (EAR). U.S. export restrictions applicable to entities on the Entity List, Military End-User (MEU) List, and Specially Designated Nationals and Blocked Persons (SDN List) now apply to foreign affiliates that are, in the aggregate, owned 50% or more by one or more of the aforementioned entities. An entity that becomes subject to these restrictions because of its ownership structure will be subject to the most restrictive controls that attach to any of its parent entities, regardless of ownership stakes.
Client Alert | 2 min read | 09.30.25
CARB Issues Preliminary List of Entities Covered by California Climate Disclosure Laws
Client Alert | 10 min read | 09.30.25
Client Alert | 7 min read | 09.29.25
White House Seeks Industry Input on Laws and Rules that Hinder AI Development