First PTAB Grant of Attorneys' Fees Awarded to Wolf Greenfield Client RPX

Since its inception as a result of the America Invents Act, the USPTO’s Patent Trial and Appeal Board has rarely sanctioned a party in a post-grant proceeding, and never previously awarded attorneys’ fees as a sanction. That changed on July 1, when the Board granted a motion for attorneys’ fees filed by Wolf Greenfield client RPX Corp., a leading provider of patent risk solutions, in three inter partes review (IPR) proceedings in which RPX challenged patents owned and asserted by Applications in Internet Time (AIT).

This unprecedented attorneys’ fees award followed the Board’s granting in May of RPX’s motion for sanctions against AIT. The Board held that sanctions, rarely granted, were appropriate in this case since AIT violated a protective order in its handling of RPX’s confidential information. In addition to attorneys’ fees, the Board also granted RPX’s request for other types of sanctions.

The first-ever award of attorneys’ fees is the latest in a list of “firsts” that Wolf Greenfield’s Post-Grant Proceedings Group has achieved for its clients before the PTAB. Wolf Greenfield client Saint Gobain was the first party to be granted permission by the PTAB to file a motion for sanctions, and the first patent owner to successfully establish a case of commercial success that was cited with approval by the Board in its final decision upholding the patentability of the claims in IPR2014-00309. Wolf Greenfield client EMC was the first party to be granted a pre-institution deposition, which proved helpful in gaining denial of institution of all four petitions filed against EMC patents in IPR2014-01254, IPR2014-01295, IPR2014-01329, and IPR2014-01332.

The Wolf Greenfield post-grant proceedings team that achieved this latest victory on behalf of RPX included Richard Giunta, Elisabeth Hunt and Randy Pritzker. The cases are IPR2015-01750, IPR2015-01751, and IPR2015-01752, and the patents at issue are 7,356,482 and 8,484,111. Read more in Law360.