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By Connor Scholes, Daniel Sloan, and John Marlott –
Third-party IPRs can moot previously favorable decisions and leave a previously successful party to bear its own costs. On October 16, 2024, Judge Rodney Gilstrap denied the plaintiff’s Motion to be Confirmed as the Prevailing Party under Fed. R. Civ. P. 54(d) and for Taxable Costs. Packet Intelligence L.L.C. v. Netscout Sys., Inc., No. 2:16-CV-00230, 2024 WL 4505457 (E.D. Tex. Oct. 16, 2024) (“Order”) at *4. Judge Gilstrap also granted in part the defendants’ Motion for Bill of Costs. Id. Although the court declined to grant Costs to either party, it found that Defendant was the prevailing party after the Federal Circuit affirmed the PTAB’s parallel IPR decisions finding the asserted patents invalid. Id.
Plaintiff initially prevailed in a jury trial, where the jury found that Defendants willfully infringed the patents-in-suit and did not establish that any of the asserted claims are invalid, and that Plaintiff was entitled to damages in the amount of $5.75 million as a running royalty and an additional enhancement of $2.8 million. Id at *1. The district court issued a final judgment ordering Defendants to pay damages and found Plaintiff was the prevailing party. The district court also ordered entry of a Bill of Costs. Defendant then appealed the issue of pre-suit damages. The Federal Circuit affirmed the Court’s Final Judgment in almost all respects but reversed the district court’s award of pre-suit damages and vacated enhancement of that award. Packet Intelligence LLC v. NetScout Sys., Inc., 965 F.3d 1299, 1303 (Fed. Cir. 2020). On remand, the district court issued an Amended Final Judgment similar to the previous judgment but incorporating the...
