IMPERIUM IP HOLDINGS CAYMAN LTD v. SAMSUNG ELECTRONICS CO LTD (2019)

Imperium IP Holdings (Cayman), Ltd. brought this action in 2014 against Samsung Electronics Co., Ltd, Samsung Electronics America, Inc., and Samsung Semi-conductor, Inc. (plus another Samsung entity that has since merged into one of those just named), which we refer to collectively as “Samsung.” Imperium alleged infringement of three Imperium-owned patents: U.S. Patent Nos. 6,271,884; 7,092,029; and 6,836,290. The district court eventually entered a judgment of liability against Samsung based on a jury verdict. The court also concluded that Imperium was entitled to attorney's fees as a prevailing party under 35 U.S.C. § 285, Imperium IP Holdings (–Cayman–), Ltd. v. Samsung Elecs. Co., No. 4:14-CV-371, 2017 WL 4038883, at *1 (E.D. Tex. Sept. 13, 2017), and later calculated the amount of fees and awarded them, Imperium IP Holdings (–Cayman–), Ltd. v. Samsung Elecs. Co., No. 4:14-CV-00371, 2018 WL 1602460 (E.D. Tex. Apr. 3, 2018). The present appeal is Samsung's appeal from the award of fees.

We reverse that award. Under § 285, a party may not be awarded fees unless it is “the prevailing party.” 35 U.S.C. § 285. The district court found the “prevailing party” requirement met because “Imperium was successful in proving [Samsung] infringed asserted claims in the ’884 and ’029 Patents.” Imperium IP Holdings (–Cayman–), Ltd., No. 4:14-CV-371, 2017 WL 4038883, at *2. Today, in a separate opinion, we reverse the judgment of liability against Samsung and affirm the judgment of no liability on the ’290 patent. Imperium IP Holdings (–Cayman–), Ltd. v. Samsung Elecs. Co., Nos. 2017-2107, 2017-2133, --- Fed.Appx. ----, 2019 WL 404570, slip op. (Fed. Cir. Jan. 31, 2019). Accordingly, Imperium is no longer the prevailing party, and we must reverse the award of attorney's fees at issue in this case.

REVERSED

Taranto, Circuit Judge.