Case: 19-1134 Document: 46 Page: 1 Filed: 04/13/2020
United States Court of Appeals
for the Federal Circuit
______________________
O.F. MOSSBERG & SONS, INC.,
Plaintiff-Appellee
v.
TIMNEY TRIGGERS, LLC, TIMNEY
MANUFACTURING, INC.,
Defendants-Appellants
______________________
2019-1134
______________________
Appeal from the United States District Court for the
District of Connecticut in No. 3:12-cv-00198-VAB, Judge
Victor A. Bolden.
______________________
Decided: April 13, 2020
______________________
MARY MINTEL MILLER, Reid & Riege, P.C., Hartford,
CT, argued for plaintiff-appellee. Also represented by
DOMINIC FULCO, III.
BRETT L. FOSTER, Dorsey & Whitney LLP, Salt Lake
City, UT, argued for defendants-appellants. Also repre-
sented by ELLIOT HALES, MARK A. MILLER, TAMARA
KAPALOSKI.
______________________
Case: 19-1134 Document: 46 Page: 2 Filed: 04/13/2020
2 O.F. MOSSBERG & SONS, INC. v. TIMNEY TRIGGERS, LLC
Before LOURIE, REYNA, and HUGHES, Circuit Judges.
HUGHES, Circuit Judge.
This is an attorney’s fees case involving a voluntary
dismissal without prejudice under Rule 41(a)(1)(A)(i) of the
Federal Rules of Civil Procedure. Appellee O.F. Mossberg
& Sons, Inc. sued appellants Timney Triggers, LLC and
Timney Manufacturing, Inc. (collectively, Timney) for pa-
tent infringement. Timney pursued invalidation of Moss-
berg’s patent through post-grant proceedings for over five
years. The district court proceedings were stayed during
this time. Timney ultimately succeeded; the United States
Patent and Trademark Office invalidated Mossberg’s pa-
tent for obviousness. Mossberg then voluntarily dismissed
its suit under Rule 41(a)(1)(A)(i) and Timney applied for at-
torney’s fees under
35 U.S.C. § 285. The district court de-
nied Timney’s motion because, without a court decision
with the necessary judicial imprimatur, Timney was not a
prevailing party. We agree and therefore affirm. 1
I
Mossberg purchased the patent-in-suit,
U.S. Patent
No. 7,293,385, in September 2011. Soon after, Mossberg
began licensing negotiations with Timney. When these dis-
cussions failed, Mossberg sued Timney for patent infringe-
ment in February 2012.
Instead of answering the complaint, Timney filed for
inter partes reexamination of the ’385 patent and a stay of
the district court proceedings pending the outcome of the
inter partes reexamination. The district court granted the
stay. The Patent Office instituted the inter partes
1 Because we affirm the district court’s decision that
Timney is not a prevailing party, we need not reach Tim-
ney’s arguments regarding the exceptional nature of the
case.
Case: 19-1134 Document: 46 Page: 3 Filed: 04/13/2020
O.F. MOSSBERG & SONS, INC. v. TIMNEY TRIGGERS, LLC 3
reexamination as to claims 1–2, 5–6 and 8–10, and subse-
quently rejected those claims in December 2012. Mossberg
responded by cancelling the rejected claims and adding
new claims. But before the inter partes reexamination pro-
ceeded further, the Patent Office vacated its institution de-
cision because Timney had not identified the real party in
interest in its petition.
Mossberg subsequently moved to lift the stay. The dis-
trict court maintained the stay. From June 2014 to Decem-
ber 2015, Timney filed three ex parte reexamination
requests. In the third ex parte reexamination, the exam-
iner rejected all pending claims over the cited prior art.
The Patent Trial and Appeal Board affirmed the invalidity
of all active claims of the ’385 patent. Throughout these
reexaminations, the district court maintained the stay de-
spite several motions by Mossberg to lift it.
Mossberg then filed a notice of voluntary dismissal un-
der Rule 41(a)(1)(A)(i). See Fed. R. Civ. P. 41(a)(1)(A)(i)
(providing for voluntary dismissal by the plaintiff without
court order). The next day, the district court entered a
docket text order stating that the case was dismissed with-
out prejudice under Rule 41(a)(1)(A)(i).
Following dismissal, Timney filed a motion to declare
the case exceptional so that it could pursue attorney’s fees.
35 U.S.C. § 285 (“The court in exceptional cases may award
reasonable attorney fees to the prevailing party.”). But
§ 285 only allows a prevailing party to collect attorney’s
fees. The district court denied the motion, reasoning that
Timney was not a “prevailing party” because a “Rule 41
dismissal without prejudice is not a decision on the merits
and thus cannot be a judicial declaration altering the legal
relationship between the parties.” O.F. Mossberg & Sons,
Inc. v. Timney Triggers, LLC, No. 3:12-CV-00198,
2018 WL
4398249, at *6 (D. Conn. Sept. 14, 2018); J.A. 11.
Timney timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(1).
Case: 19-1134 Document: 46 Page: 4 Filed: 04/13/2020
4 O.F. MOSSBERG & SONS, INC. v. TIMNEY TRIGGERS, LLC
II
“[O]ur review of the meaning of the term ‘prevailing
party’ is de novo.” Inland Steel Co. v. LTV Steel Co.,
364 F.3d 1318, 1320 (Fed. Cir. 2004), abrogated on other
grounds by Raniere v. Microsoft Corp.,
887 F.3d 1298 (Fed.
Cir. 2018) (citing Waner v. Ford Motor Co.,
331 F.3d 851,
857 (Fed. Cir. 2003) (reviewing de novo whether the district
court properly applied the
35 U.S.C. § 285 standard)).
Under § 285, a court may award reasonable attorney’s
fees to the prevailing party in an exceptional patent in-
fringement case.
35 U.S.C. § 285; see also Octane Fitness,
LLC v. ICON Health & Fitness, Inc.,
572 U.S. 545, 553−54
(2014). The Supreme Court has said that “the touchstone
of the prevailing party inquiry must be the material alter-
ation of the legal relationship of the parties. This change
must be marked by judicial imprimatur.” CRST Van Ex-
pedited, Inc. v. E.E.O.C.,
136 S. Ct. 1642, 1646 (2016) (in-
ternal quotation marks and citation omitted). In CRST, in
the context of a claim for attorney’s fees under Title VII,
the Court held that a defendant may be “prevailing” for
purposes of attorney’s fees “even if the court’s final judg-
ment rejects the plaintiff’s claim for a nonmerits reason.”
Id. at 1651.
Applying CRST, we have held that “defendants need
not prevail on the merits to be classified as a ‘prevailing
party.’ ” Raniere, 887 F.3d at 1306. Accordingly, the rele-
vant inquiry “is not limited to whether a defendant pre-
vailed on the merits, but also considers whether the district
court’s decision—‘a judicially sanctioned change in the le-
gal relationship of the parties’—effects or rebuffs a plain-
tiff’s attempt to effect a ‘material alteration in the legal
relationship between the parties.’ ” Id. (quoting CRST,
136 S. Ct. at 1646, 1651).
On appeal, Timney argues that the district court erred
in its prevailing party analysis. According to Timney, by
Case: 19-1134 Document: 46 Page: 5 Filed: 04/13/2020
O.F. MOSSBERG & SONS, INC. v. TIMNEY TRIGGERS, LLC 5
staying 2 the district court proceedings over five years of
post-grant proceedings at the Patent Office, the district
court provided the necessary judicial imprimatur. Appel-
lants’ Br. 27 (arguing that the district court’s stay “ap-
proved, authorized[,] or supported the [Patent Office] as an
alternative forum to decide invalidity”). Timney contends
that CRST altered the landscape of the prevailing party
analysis by prioritizing substance over form, making clear
that a decision on the merits is not necessary to qualify as
a prevailing party. This is true. And we have applied this
principle to subsequent cases decided on non-merits issues.
In Raniere,
887 F.3d 1298, we held that the defendants
were the prevailing party when the district court dismissed
a plaintiff’s claims for lack of standing. And in B.E. Tech.
L.L.C. v. Facebook, Inc.,
940 F.3d 675 (Fed. Cir. 2019), we
held that a dismissal for mootness imparts sufficient judi-
cial imprimatur to satisfy the prevailing party inquiry.
But the issue here is not whether there was a final de-
cision on the merits. It is whether there was a final deci-
sion at all. Neither CRST, nor Raniere, nor B.E.
Technology went so far as to hold that one could become a
prevailing party without a final court decision. E.g., CRST,
2 Though Timney’s opening brief argued that the dis-
trict court’s “dismissal order” was judicial imprimatur, Ap-
pellant’s Br. 23 (“The district court’s dismissal order is a
judicially sanctioned change in the legal relationship be-
tween the parties.” (capitalization removed)), its reply brief
makes clear that the district court’s repeated stays are the
determinative judicial actions. See Appellant’s Reply Br.
3−5 (“Timney’s position from the outset has been that the
district court’s stay of the case pending reexamination is
the judicial action that led to the invalidation of the pa-
tent.”). We therefore focus our analysis on those stays in-
stead of the supposed “dismissal order” confirming
Mossberg’s voluntary Rule 41(a)(1)(A)(i) dismissal.
Case: 19-1134 Document: 46 Page: 6 Filed: 04/13/2020
6 O.F. MOSSBERG & SONS, INC. v. TIMNEY TRIGGERS, LLC
136 S. Ct. at 1651 (holding that a “defendant has . . . ful-
filled its primary objective whenever the plaintiff’s chal-
lenge is rebuffed, irrespective of the precise reason for the
court’s decision,” and that a “defendant may prevail even if
the court’s final judgment rejects the plaintiff’s claim for a
nonmerits reason” (emphases added)).
In this case, there was no such final court decision. A
properly filed Rule 41(a)(1)(A)(i) voluntary dismissal be-
comes effective immediately upon plaintiff’s filing of the
notice of dismissal. See Fed. R. Civ. P. 41(a)(1)(A) (for vol-
untary dismissals by the plaintiff “Without a Court Order,”
the plaintiff may “dismiss an action without a court order”
(emphasis added)). Although the district court in this case
entered a dismissal order after Timney filed its notice of
voluntary dismissal, that dismissal order had no legal ef-
fect. That leaves only the stay, which cannot “change . . .
the legal relationship of the parties,” Raniere, 887 F.3d
at 1306, because it remained in place while the parties de-
termined the patent’s validity in a separate venue—the Pa-
tent Office. And the stay did not change the legal
relationship between the parties; the Board’s invalidity de-
cision and Mossberg’s voluntary Rule 41(a)(1)(A)(i) dismis-
sal did. A stay, standing alone, is simply not a final court
decision capable of establishing the judicial imprimatur re-
quired for a litigant to emerge as the prevailing party un-
der § 285.
III
We have considered Timney’s remaining arguments
and find them unpersuasive. Because there is no final
court decision here, Timney cannot be a prevailing party
for purposes of attorney’s fees under § 285. We therefore
affirm the district court’s decision that Timney is not a pre-
vailing party.
AFFIRMED
