Raniere v. Microsoft Corporation , 887 F.3d 1298 ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
KEITH RANIERE,
Plaintiff-Appellant
v.
MICROSOFT CORPORATION, AT&T CORP.,
Defendants-Appellees
______________________
2017-1400, 2017-1401
______________________
Appeals from the United States District Court for the
Northern District of Texas in Nos. 3:15-cv-00540-M, 3:15-
cv-02298-M, Chief Judge Barbara M.G. Lynn.
______________________
Decided: April 18, 2018
______________________
ROBERT DALE CROCKETT, Crockett & Associates, San-
ta Clarita, CA, argued for plaintiff-appellant. Also repre-
sented by CHASE TAJIMA, LISA DEARDEN TREPANIER.
STEPHEN BLAKE KINNAIRD, Paul Hastings LLP, Wash-
ington, DC, argued for defendants-appellees. Defendant-
appellee AT&T Corp. also represented by IGOR VICTOR
TIMOFEYEV; CHRISTOPHER WOOD KENNERLY, Palo Alto,
CA.
CONSTANTINE L. TRELA, JR., Sidley Austin LLP, Chi-
cago, IL, for defendant-appellee Microsoft Corporation.
2 RANIERE v. MICROSOFT CORPORATION
Also represented by RICHARD ALAN CEDEROTH, DOUGLAS
LEWIS; JOSHUA JOHN FOUGERE, Washington, DC.
______________________
Before LOURIE, O’MALLEY, and WALLACH, Circuit Judges.
O’MALLEY, Circuit Judge.
Keith Raniere (“Raniere”) appeals from the district
court’s decisions awarding attorney fees and costs to
Microsoft Corporation and AT&T Corporation (together,
“Appellees”). Raniere v. Microsoft Corp., Nos. 15-0540 &
15-2298, 2016 WL 4626584 (N.D. Tex. Sept. 2, 2016) (Fees
Decision); Raniere v. Microsoft Corp., Nos. 15-0540 & 15-
2298, slip op. (N.D. Tex. Dec. 22, 2016) (J.A. 34–40).
Because the district court did not err in finding that
Appellees are prevailing parties under 35 U.S.C. § 285
(2012), and did not abuse its discretion in awarding
attorney fees and costs under that provision, we affirm.
BACKGROUND
Raniere sued Appellees for patent infringement, as-
serting five patents against AT&T (U.S. Patent Nos.
6,373,936, 6,819,752, 7,215,752 (“the ’5752 patent”),
7,391,856, and 7,844,041 (“the ’041 patent”)) and two of
these five patents against Microsoft (the ’5752 patent and
the ’041 patent). Fees Decision, 2016 WL 4626584, at *1.
In 1995, Raniere and the other named inventors of the
patents at issue assigned all rights in these patents to
Global Technologies, Inc. (“GTI”). Id. at *2. Raniere is
not listed on GTI’s incorporation documents as an officer,
director, or shareholder. GTI was administratively dis-
solved in May 1996. Id.
In December 2014, Raniere executed a document on
behalf of GTI, claiming to be its “sole owner,” that pur-
portedly transferred the asserted patents from GTI to
himself. Id. Raniere’s suits against Appellees identified
himself as the owner of the patents at issue.
RANIERE v. MICROSOFT CORPORATION 3
In 2015, Microsoft moved to dismiss Raniere’s suit for
lack of standing, noting that the PTO’s records indicated
that Raniere did not own the patents at issue. Raniere’s
counsel represented to the district court that GTI’s own-
ership passed to Raniere in its entirety at some point, and
that Raniere properly transferred ownership of the pa-
tents from GTI to himself. Id. The court ordered Raniere
to produce documentation proving these representations.
Id. Raniere produced various documents that, according
to the district court, failed to indicate that Raniere had an
ownership interest in GTI at any time or that Raniere had
the right to assign the patents at issue from GTI to him-
self. Id. at *3. Given Raniere’s failure to produce evi-
dence to support his standing, the district court permitted
Appellees to conduct limited discovery into the standing
issue and stayed the cases pending its resolution. Id.
Appellees suspended discovery when the parties be-
gan negotiating terms of settlement, but Raniere refused
to finalize the settlement. Id. AT&T then filed a motion
for an order to show cause why the action should not be
dismissed under Federal Rule of Civil Procedure 41(b) for
lack of standing. Id. AT&T also noted that Raniere was
seeking third-party discovery in violation of the district
court’s discovery order. Id. Raniere informed the district
court that he could produce evidence to establish his
standing, but he required a subpoena to obtain evidence
from Alan Rubens, a Washington state attorney. Id. The
district court permitted this limited discovery request and
ordered Rubens to produce all relevant documentation.
Id. Rubens’s documents showed the GTI shareholders’
consent to a transfer of shares from Raniere’s ex-
girlfriend—who owned 75% of GTI’s shares—to Raniere.
The documents Raniere proffered did not indicate that
any such transfer was ever completed, however, and did
not establish that Raniere owned the patents at issue.
In light of these documents, Appellees filed a renewed
motion to dismiss for lack of standing. Id. In response,
4 RANIERE v. MICROSOFT CORPORATION
Raniere filed a motion seeking the court’s permission to
submit additional evidence showing that he had sole
ownership over GTI. Id. The district court granted-in-
part and denied-in-part this motion, stating that Raniere
had received “more than a fair opportunity to adduce
evidence to establish his standing.” J.A. 2340.
The district court held a hearing on Appellees’ motion
to dismiss. Fees Decision, 2016 WL 4626584, at *4. Rani-
ere testified, over Appellees’ objection, that the other
inventors had disavowed any interest in GTI and given
their ownership interests to Raniere. Id. Raniere also
testified that his ex-girlfriend held her shares in the
corporation in trust for him, based on a side letter execut-
ed between these parties, but he did not have possession
of that letter nor did he know where the letter could be.
Id. The district court found that Raniere’s testimony
surrounding the alleged transfer contradicted Raniere’s
earlier representation that the shares had already been
transferred to him and was “wholly incredible and un-
truthful.” Id.
The district court concluded that Raniere was unlike-
ly to be able to cure the standing defect, and dismissed
the case with prejudice. Id.; J.A. 2362. The district court
also stated that it dismissed with prejudice because it
found that Raniere’s conduct demonstrated “a clear
history of delay and contumacious conduct.” Fees Deci-
sion, 2016 WL 4626584, at *4.
Raniere appealed the district court’s decision on
standing. We summarily affirmed the district court’s
dismissal with prejudice of Raniere’s action for lack of
standing. Raniere v. Microsoft Corp., 673 F. App’x 1008
(Fed. Cir. 2017).
While the merits appeal was pending, Appellees filed
a motion seeking attorney fees and costs pursuant to
35 U.S.C. § 285. The district court concluded that, be-
cause it dismissed Raniere’s claims with prejudice, Appel-
RANIERE v. MICROSOFT CORPORATION 5
lees were prevailing parties for the purposes of § 285.
Fees Decision, 2016 WL 4626584, at *4. Although Raniere
disputed that dismissal for lack of standing with prejudice
was sufficient to confer prevailing-party status on Appel-
lees, the district court explained that “[a] dismissal with
prejudice alters the relationship between the parties and
is sufficient to confer prevailing party status for purposes
of considering a claim for fees under section 285.” Id. The
district court also concluded that dismissal with prejudice
is an appropriate remedy where it is unlikely that the
plaintiff will be able to cure the standing defect. On this
point, the district court explained that it had given Rani-
ere multiple opportunities to cure the identified standing
defect, but “[n]one of the evidence produced or arguments
advanced by [Raniere] in support of his alleged standing
gave the Court any reason to believe that the problem
could be cured.” Id. at 2.
The district court next concluded that this case was
exceptional because it stood out from other cases “with
respect to the unreasonable manner in which it was
litigated. [Raniere]’s conduct throughout this litigation,
culminating in his untruthful testimony at the hearing on
the motion to dismiss, demonstrates a pattern of obfusca-
tion and bad faith.” Id. at *5. The district court noted
that Raniere promised repeatedly that he could produce
evidence that would cure the standing defect identified by
Appellees and the district court. Id. But Raniere failed to
satisfy these promises, according to the district court, as
“[d]espite numerous representations, [Raniere] failed to
produce any written document or other credible evidence
that he had an interest in GTI that would allow him to
transfer the patents to himself.” Id. Raniere’s conduct
required Appellees “to expend significant resources to
oppose [Raniere]’s arguments, which the Court now finds
were made in bad faith to vexatiously multiply these
proceedings and avoid early dismissal.” Id. The district
court rejected Raniere’s attempts to recharacterize his
6 RANIERE v. MICROSOFT CORPORATION
conduct as “zealous pursuit of his good faith claim of
ownership,” noting its finding that Raniere “made false
and misleading representations to Defendants and the
Court that resulted in, among other things, prejudice to
Defendants in the form of significant legal fees incurred
in defending this action.” Id. The district court awarded
fees and non-taxable costs for the period of time between
the Federal Rule of Civil Procedure 16 conference and the
district court’s order of dismissal. Id.
In the alternative, the district court sanctioned Rani-
ere’s conduct under its inherent authority. Id. The
district court reiterated that Raniere had “acted in bad
faith and vexatiously multiplied these proceedings” by
failing to seize on any of the multiple opportunities to
correct the standing issue. Id. “From the inception of the
litigation, [Raniere] engaged in a pattern of obfuscation,
offering inconsistent theories and arguments and promis-
ing to produce evidence that never materialized.” Id. The
district court noted that Raniere failed to voluntarily
dismiss the case when confronted with the fatal standing
defect, instead imposing expenses on both Appellees and
the district court. Id. According to the district court,
“[t]his deplorable conduct constitutes an abuse of the
judicial process and warrants an imposition of sanctions
under the Court’s inherent powers.” Id.
Although Raniere argued that his conduct was not
sufficiently egregious to justify imposition of sanctions
under the district court’s inherent powers, the district
court rejected Raniere’s characterization of his actions,
noting that it “requires full candor on all matters from the
parties who come to it seeking relief. [Raniere]’s submis-
sion of a document that contained a knowingly false
representation constitutes an abuse of the judicial process
that warrants sanctions.” Id. The district court found
“that an award of fees is the least severe sanction ade-
quate to deter similar conduct by [Raniere] in the future
and to preserve the integrity of the Court.” Id.
RANIERE v. MICROSOFT CORPORATION 7
In the order granting attorney fees, the district court
directed Appellees to submit evidence of their reasonable
fees and costs. Id. at *6. AT&T submitted evidence that
it incurred $395,050.30 in attorney fees and $13,917.10 in
costs, and Microsoft submitted evidence that it incurred
$176,166.40 in attorney fees and $2,073.68 in costs.
Raniere objected to these figures.
The district court applied the lodestar method to de-
termine the appropriate amount of attorney fees. The
district court found that the hourly rates Appellees’
counsel charged were reasonable. Although Raniere
argued that AT&T improperly redacted its invoices and
included unintelligible time entries, thus justifying a
lower fee award, the district court found that “[t]he alleg-
edly objectionable time entries are not block billed, or so
vague or unintelligible as to prevent meaningful review.”
J.A. 30. The district court found Appellees were not
entitled to fees spent on certain matters after the district
court issued its stay order. And, the district court reduced
the lodestar for both Appellees by twenty percent due to
duplication of efforts between Microsoft and AT&T attor-
neys. In view of these determinations, the district court
awarded $300,295.71 to AT&T and $143,719.26 to Mi-
crosoft in attorney fees and costs. J.A. 33.
Raniere appeals the district court’s fee award. We
have jurisdiction to review this appeal under 28 U.S.C.
§ 1295(a).
DISCUSSION
A district court “in exceptional cases may award rea-
sonable attorney fees to the prevailing party.” 35 U.S.C.
§ 285. An exceptional case, though rare,
is simply one that stands out from others with re-
spect to the substantive strength of a party’s liti-
gating position (considering both the governing
law and the facts of the case) or the unreasonable
8 RANIERE v. MICROSOFT CORPORATION
manner in which the case was litigated. District
courts may determine whether a case is “excep-
tional” in the case-by-case exercise of their discre-
tion, considering the totality of the circumstances.
Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134
S. Ct. 1749, 1756 (2014). As such, “the exceptional-case
determination is to be reviewed only for abuse of discre-
tion.” Highmark Inc. v. Allcare Health Mgmt. Sys., Inc.,
134 S. Ct. 1744, 1748 (2014). “An abuse of discretion
occurs when a district court’s decision commits legal error
or is based on a clearly erroneous assessment of the
evidence.” Univ. of Utah v. Max-Planck-Gesellschaft Zur
Foerderung der Wissenschaften e.V., 851 F.3d 1317, 1322
(Fed. Cir. 2017). “A factual finding is clearly erroneous if,
despite some supporting evidence, we are left with the
definite and firm conviction that a mistake has been
made.” Id. (quoting Insite Vision Inc. v. Sandoz, Inc., 783
F.3d 853, 858 (Fed. Cir. 2015)).
Raniere challenges the district court’s decision on four
grounds. First, he contends that the district court erred
in finding that Appellees are prevailing parties under
§ 285. Second, he argues that the district court abused its
discretion in finding this case “exceptional.” Third, he
asserts that the district court erred in sanctioning Rani-
ere under its inherent authority, in the alternative to a
fee award under § 285. Finally, he argues that the dis-
trict court abused its discretion in determining the
amount of the fee award.
We conclude that Appellees are prevailing parties,
and that the district court did not abuse its discretion in
finding this case exceptional under § 285 or in its fee
award. We, thus, need not reach the district court’s
sanction under its inherent authority in the alternative.
RANIERE v. MICROSOFT CORPORATION 9
A. Appellees Are Prevailing Parties
Raniere first disputes whether Appellees are prevail-
ing parties under § 285. Raniere contends that dismissal
with prejudice for lack of standing is not an adjudication
on the merits, as he contends is required to find that a
defendant is a “prevailing party” under our case law.
Raniere also asserts that dismissal with prejudice, with-
out adjudication of a patent infringement claim, should
preclude finding that a defendant has prevailed in a
litigation. We disagree with these statements, particular-
ly in light of the Supreme Court’s recent decision in CRST
Van Expedited, Inc. v. EEOC, which held that a favorable
judgment on the merits is not necessary for a defendant to
be deemed a prevailing party for purposes of statutory
fee-shifting. 136 S. Ct. 1642, 1651 (2016). Even without
CRST, we conclude that the district court’s dismissal with
prejudice of Raniere’s case for lack of standing is tanta-
mount to a judgment on the merits. Under either of these
rationales, Appellees have in fact prevailed in this case.
The Supreme Court has addressed the issue of what
constitutes a “prevailing party” on several occasions. In
Buckhannon Board & Care Home, Inc. v. West Virginia
Department of Health & Human Resources, 532 U.S. 598
(2001), the Supreme Court rejected the “catalyst” theory
for identifying a prevailing party, under which a plaintiff
is a “prevailing party” in a lawsuit if it achieves the
desired result by bringing about a voluntary change in the
defendant’s behavior. There, the Court stated:
Our “[r]espect for ordinary language requires that
a plaintiff receive at least some relief on the mer-
its of his claim before he can be said to prevail.”
....
A defendant’s voluntary change in conduct, alt-
hough perhaps accomplishing what the plaintiff
sought to achieve by the lawsuit, lacks the neces-
10 RANIERE v. MICROSOFT CORPORATION
sary judicial imprimatur on the change. Our
precedents thus counsel against holding that the
term “prevailing party” authorizes an award of at-
torney[] fees without a corresponding alteration in
the legal relationship of the parties
....
We cannot agree that the term “prevailing party”
authorizes federal courts to award attorney[] fees
to a plaintiff who, by simply filing a nonfrivolous
but nonetheless potentially meritless lawsuit (it
will never be determined), has reached the
“sought-after destination” without obtaining any
judicial relief.
Id. at 603–06 (emphasis in original) (quoting Hewitt v.
Helms, 482 U.S. 755, 760 (1987)).
We have interpreted Buckhannon and its application
to jurisdictional dismissals in prior cases. We interpreted
Buckhannon to require that, “[i]n determining whether a
party is a prevailing party in patent litigation, we apply
the general principle that ‘to be a prevailing party, one
must receive at least some relief on the merits, which
alters . . . the legal relationship of the parties.’” Inland
Steel Co. v. LTV Steel Co., 364 F.3d 1318, 1320 (Fed. Cir.
2004) (quoting Former Emps. of Motorola Ceramic Prods.
v. United States, 336 F.3d 1360, 1364 (Fed. Cir. 2003)
(internal quotations omitted)). We clarified later that
“‘relief on the merits’ at least required that the party
obtain a court order materially changing the legal rela-
tionship of the parties.” Rice Servs., Ltd. v. United States,
405 F.3d 1017, 1023 (Fed. Cir. 2005) (citing Buckhannon,
532 U.S. at 604−05).
Raniere argues that Appellees cannot be prevailing
parties because Appellees did not prevail on the merits.
In his view, Appellees only “won” a judgment that Raniere
did not possess standing to bring his suit, which is merely
RANIERE v. MICROSOFT CORPORATION 11
jurisdictional. And, he contends that we have previously
made clear that a dismissal for lack of standing is gener-
ally to be without prejudice because it is not an adjudica-
tion on the merits. Univ. of Pittsburgh v. Varian Med.
Sys., Inc., 569 F.3d 1328, 1332 (Fed. Cir. 2009). But as
noted, the Supreme Court recently clarified Buckhannon’s
rule in CRST, holding that “a defendant need not obtain a
favorable judgment on the merits in order to be a ‘prevail-
ing party.’” 136 S. Ct. at 1651.
In CRST, the Court first summarized its prior prece-
dent on the issue of prevailing parties, noting that the
“touchstone of the prevailing party inquiry must be the
material alteration of the legal relationship of the par-
ties.” Id. at 1646 (quoting Tex. State Teachers Ass’n v.
Garland Indep. Sch. Dist., 489 U.S. 782, 792–93 (1989)).
Acknowledging Buckhannon’s requirement that the
change in relationship between the parties “must be
marked by ‘judicial imprimatur,’” the Court explained
that, “when a plaintiff secures an ‘enforceable judgmen[t]
on the merits’ or a ‘court-ordered consent decre[e],’ that
plaintiff is the prevailing party because he has received a
‘judicially sanctioned change in the legal relationship of
the parties.’” Id. (alterations in original) (quoting Buck-
hannon, 532 U.S. at 604–05).
The Court explained, though, that, before CRST, it
had “not set forth in detail how courts should determine
whether a defendant has prevailed.” Id. On this point, it
concluded that “[c]ommon sense undermines the notion
that a defendant cannot ‘prevail’ unless the relevant
disposition is on the merits,” and that “[t]he defendant
may prevail even if the court’s final judgment rejects the
plaintiff’s claim for a nonmerits reason.” Id. at 1651.
This is logical, explained the Court, because “[t]he de-
fendant has . . . fulfilled its primary objective whenever
the plaintiff’s challenge is rebuffed, irrespective of the
precise reason for the court’s decision,” even if the defend-
ant “might prefer a judgment vindicating its position
12 RANIERE v. MICROSOFT CORPORATION
regarding the substantive merits of the plaintiff’s allega-
tions.” Id.
The Court further noted that, in the context of
42 U.S.C. § 2000e-5(k), the fee-shifting provision of Title
VII of the Civil Rights Act of 1964:
[C]ongressional policy regarding the exercise of
district court discretion in the ultimate decision
whether to award fees does not distinguish be-
tween merits-based and non-merits-based judg-
ments. . . . [O]ne purpose of the fee-shifting
provision is to deter the bringing of lawsuits with-
out foundation. . . . The Court, therefore, has in-
terpreted the statute to allow prevailing
defendants to recover whenever the plaintiff’s
“claim was frivolous, unreasonable, or ground-
less.” It would make little sense if Congress’ poli-
cy of sparing defendants from the costs of
frivolous litigation[] depended on the distinction
between merits-based and non-merits-based fri-
volity. Congress must have intended that a de-
fendant could recover fees expended in frivolous,
unreasonable, or groundless litigation when the
case is resolved in the defendant’s favor, whether
on the merits or not.
Id. at 1652 (emphasis in original) (internal quotations and
citations omitted).
Although CRST considered the fee-shifting provision
of Title VII, the Court explained there that “Congress has
included the term ‘prevailing party’ in various fee-shifting
statutes, and it has been the Court’s approach to interpret
the term in a consistent manner.” Id. at 1646 (citing
Buckhannon, 532 U.S. at 602–03); see Buckhannon, 532
U.S. at 602 (“Congress . . . has authorized the award of
attorney[] fees to the ‘prevailing party’ in numerous
statutes in addition to those at issue here.”); Hensley v.
Eckerhart, 461 U.S. 424, 433 n.7 (1983) (holding that
RANIERE v. MICROSOFT CORPORATION 13
interpretation of “prevailing party” in a case involving the
Civil Rights Attorney’s Fees Awards Act of 1976, 42
U.S.C. § 1988, is “generally applicable in all cases in
which Congress has authorized an award of fees to a
‘prevailing party’”).
Our sister circuits have interpreted CRST to mean
that, if a defendant succeeds on a jurisdictional issue, it
may be a prevailing party. The First Circuit recently
examined a similar issue: whether a defendant that
prevailed because plaintiffs failed to demonstrate their
standing can be a “prevailing party” under 17 U.S.C.
§ 505 (2012), the fee-shifting provision of the Copyright
Act. See Small Justice LLC v. Xcentric Ventures LLC, 873
F.3d 313 (1st Cir. 2017). The First Circuit concluded that,
under CRST and its circuit law, the district court did not
abuse its discretion in awarding fees when that court
“resolved the parties’ copyright dispute on standing
grounds without reaching the merits of ownership.” Id. at
327–28 (internal quotation marks omitted).
Similarly, the Ninth Circuit concluded that CRST
overruled its earlier holding in Branson v. Nott, 62 F.3d
287 (9th Cir. 1995) that, when a defendant wins based on
a dismissal for lack of subject matter jurisdiction, that
defendant is not a prevailing party under 42 U.S.C.
§ 1988. Amphastar Pharms. Inc. v. Aventis Pharma SA,
856 F.3d 696, 710 (9th Cir. 2017). The district court in
the Amphastar qui tam case applied Branson’s holding,
but the Ninth Circuit panel concluded that, even though
the defendant in the action did not win on the “merits,” it
had spent significant time and resources fighting the
lawsuit, and fees should be awarded to deter future
frivolous filings. Id. In other words, “[c]ommon sense
says that [the defendant] has won a significant victory
14 RANIERE v. MICROSOFT CORPORATION
and permanently changed the ‘legal relationship of the
parties.’” Id. (quoting CRST, 136 S. Ct. at 1646). 1
We reach the same conclusion our sister circuits have
reached regarding CRST, which clarified the application
of Buckhannon to defendants seeking prevailing-party
status. The relevant inquiry post-CRST, then, is not
limited to whether a defendant prevailed on the merits,
but also considers whether the district court’s decision—
“a judicially sanctioned change in the legal relationship of
the parties”—effects or rebuffs a plaintiff’s attempt to
effect a “material alteration in the legal relationship
between the parties.” CRST, 136 S. Ct. at 1646, 1651.
And the same policy rationales the CRST Court empha-
sized in support of its holding underscore § 285 actions:
the statute deters filing of “exceptional” cases—those
“that stand[] out from others with respect to the substan-
tive strength of a party’s litigating position (considering
both the governing law and the facts of the case) or the
unreasonable manner in which the case was litigated.”
Octane Fitness, 134 S. Ct. at 1756.
Raniere has not persuasively explained why we
should make a distinction between § 285 and other statu-
tory provisions that award attorney fees to “prevailing
parties,” and we see no reason to make such a distinction
in light of the Supreme Court’s clear command to construe
the term “prevailing party” consistently across fee-
shifting regimes. We hold CRST applies to our analysis of
1 Other circuits also have applied CRST to conclude
that a defendant need not prevail on the merits to be a
“prevailing party.” See LeFande v. Mische-Hoeges, 712 F.
App’x 9, 11 (D.C. Cir. 2018); In re Nat. Gas Royalties Qui
Tam Litig., 845 F.3d 1010, 1025–26 (10th Cir. 2017);
United States v. Thirty-two thousand eight hundred
twenty dollars & fifty-six cents ($32,820.56) in United
States Currency, 838 F.3d 930, 936 (8th Cir. 2016).
RANIERE v. MICROSOFT CORPORATION 15
prevailing-party status under § 285, and that defendants
need not prevail on the merits to be classified as a “pre-
vailing party.” To the extent inconsistent with this con-
clusion, our prior case law to the contrary—Inland Steel
and its progeny—is abrogated accordingly.
Even if the district court’s decision to dismiss with
prejudice for lack of standing is not based on the substan-
tive merits of a plaintiff’s case, CRST makes clear that a
merits decision is not required. Appellees spent signifi-
cant time and resources to prevail in this action, as re-
flected by their request for attorney fees and costs. And
here, Appellees “won” through the court’s dismissal of
Raniere’s case with prejudice—they prevented Raniere
from achieving a material alteration of the relationship
between them, based on a decision marked by “judicial
imprimatur.” CRST, 136 S. Ct. at 1646. Appellees re-
ceived all relief to which they were entitled. The district
court’s findings entitle Appellees to a finding that they
have prevailed in this litigation, such that an award of
attorney fees would be appropriate.
Even without the benefit of CRST’s clarification of
Buckhannon, moreover, we still would conclude that the
district court did not err in finding that Appellees are
prevailing parties. The district court’s dismissal with
prejudice of Raniere’s infringement suit was tantamount
to a decision on the merits, making it sufficient to estab-
lish Appellees as prevailing parties.
Raniere objects to this conclusion, arguing that Vari-
an makes clear that a dismissal for lack of standing is not
an adjudication on the merits under Rule 41(b). But
Varian examined whether dismissal with prejudice is
appropriate when jurisdictional defects exist, and ex-
plained that “a dismissal for lack of standing should
generally be without prejudice, particularly when the
defect is curable.” 569 F.3d at 1332. Varian did not hold
that a dismissal with prejudice is never appropriate in
16 RANIERE v. MICROSOFT CORPORATION
such circumstances, however. Here, the district court
found explicitly that the standing defect was unlikely to
be curable, based on Raniere’s repeated failures to correct
the defect. Fees Decision, 2016 WL 4626584, at *4. The
district court also based its decision to dismiss the matter
with prejudice on Raniere’s pattern of delay and “contu-
macious conduct.” Id. This case is, thus, materially
distinguishable from Varian because the dismissal here
was with prejudice. 2
As we noted in Highway Equipment Co. v. FECO,
Ltd., a voluntary dismissal with prejudice under Federal
2 To the extent Raniere’s objection to the district court’s
prevailing party determination relies on a dispute with
the district court’s dismissal of his case with prejudice,
Raniere cannot challenge that finding at this stage of the
proceeding—we have already affirmed that finding in the
appeal of the merits proceeding. Raniere, 673 F. App’x at
1008. Even if we could review this determination, we
have explained on numerous occasions that, where stand-
ing cannot be cured, a dismissal with prejudice is appro-
priate. See, e.g., Fieldturf, Inc. v. Sw. Recreational Indus.,
357 F.3d 1266, 1269 (Fed. Cir. 2004) (“Ordinarily, dismis-
sal for lack of standing is without prejudice. On occasion,
however, a dismissal with prejudice is appropriate, espe-
cially where it is plainly unlikely that the plaintiff will be
able to cure the standing problem.” (internal citations,
quotation marks, and alterations omitted)); Sicom Sys.
Ltd. v. Agilent Techs. Inc., 427 F.3d 971, 980 (Fed. Cir.
2005) (affirming district court’s dismissal with prejudice
because the suit “was Sicom’s second suit that was dis-
missed for lack of standing” and “Sicom already had a
chance to cure the defect and failed”); Textile Prods., Inc.
v. Mead Corp., 134 F.3d 1481, 1484–85 (Fed. Cir. 1998)
(affirming district court’s dismissal with prejudice be-
cause the standing defect was unlikely to be cured).
RANIERE v. MICROSOFT CORPORATION 17
Rule of Civil Procedure 41(a)(2) “has the necessary judi-
cial imprimatur to constitute a judicially sanctioned
change in the legal relationship of the parties, such that
the district court properly could entertain [the defend-
ant’s] fee claim under 35 U.S.C. § 285.” 469 F.3d 1027,
1035 (Fed. Cir. 2006). And in Power Mosfet Technologies,
LLC v. Siemens AG, where the plaintiff voluntarily dis-
missed one defendant from the case with prejudice, we
concluded that the district court erred in not finding that
defendant to be a prevailing party as to Federal Rule of
Civil Procedure 54 costs. 3 378 F.3d 1396, 1416 (Fed. Cir.
2004). There, we stated that “[t]he dismissal of a claim
with prejudice, however, is a judgment on the merits
under the law of the Federal Circuit.” Id. (citing Hallco
Mfg. Co. v. Foster, 256 F.3d 1290, 1297 (Fed. Cir. 2001)).
Raniere objects, but does not explain why this princi-
ple would not apply to dismissals under Rule 41(b). To
the contrary, the Supreme Court has explained, in the
context of discussing the differences between Rule 41(a)
and Rule 41(b), that “an ‘adjudication upon the merits’ is
the opposite of a ‘dismissal without prejudice.’” Semtek
Int’l Inc. v. Lockheed Martin Corp., 531 U.S. 497, 505
(2001) (emphasis added). Semtek cites to Wright & Miller
for the propositions that “[b]oth parts of Rule 41 . . . use
the phrase ‘without prejudice’ as a contrast to adjudica-
tion on the merits,” id. (citing 18 Wright, Miller, &
Cooper, Federal Practice & Procedure § 4435, at 329 n.4
(1981)), and that “‘with prejudice’ is an acceptable form of
shorthand for ‘an adjudication upon the merits,’” id.
(citing 9 Wright, Miller, & Cooper, Federal Practice &
Procedure § 2373, at 396 n.4 (1981)). As Wright & Miller
3 We have treated the prevailing party issue under
Rule 54 and § 285 in a similar fashion. See Highway
Equip. Co., 469 F.3d at 1035; see also Inland Steel, 364
F.3d at 1319–20.
18 RANIERE v. MICROSOFT CORPORATION
explains with respect to awarding costs to the prevailing
party, “dismissal of the action, whether on the merits or
not, generally means [the] defendant is the prevailing
party,” and “[a] party who is only partially successful also
can be deemed a prevailing party.” 10 Wright, Miller &
Kane, Federal Practice and Procedure § 2667 (3d ed.
2002); cf. Schwarz v. Folloder, 767 F.2d 125, 129–30 (5th
Cir. 1985) (“Dismissal of an action with prejudice is a
complete adjudication of the issues presented by the
pleadings and is a bar to a further action between the
parties. An adjudication in favor of the defendants, by
court or jury, can rise no higher than this.” (quoting
Smoot v. Fox, 340 F.2d 301, 303 (6th Cir. 1964))).
The district court’s dismissal with prejudice of Rani-
ere’s action gave Appellees the full relief to which they
were legally entitled. Thus, to the extent any relief on the
merits remains a necessary predicate to prevailing-party
status after CRST, the dismissal with prejudice here was
such a judgment. This suffices to make Appellees “pre-
vailing parties.”
For these reasons, we conclude the district court did
not err in finding Appellees are “prevailing parties” for
the purposes of § 285. We affirm this determination
accordingly.
B. The District Court Did Not Abuse Its Discretion
in Finding This Case “Exceptional”
Raniere also contends that the district court abused
its discretion in finding this case exceptional. We disa-
gree, and affirm the district court’s well-reasoned deter-
mination on this issue. Many of Raniere’s objections to
the district court’s exceptionality determination raise
factual disputes with the underlying merits ruling, which
we cannot review at this stage of the proceeding. The
attorney fee award is separately appealable here, and
thus collateral, because it cannot “alter the [merits] order
or moot or revise decisions embodied in the [merits]
RANIERE v. MICROSOFT CORPORATION 19
order.” Budinich v. Becton Dickinson & Co., 486 U.S. 196,
199 (1988).
The district court specifically found that Raniere’s be-
havior throughout the litigation employed “a pattern of
obfuscation and bad faith,” and that this behavior caused
Appellees to incur significant fees and costs to oppose
Raniere’s positions. These positions, in the district court’s
view, “were made in bad faith to vexatiously multiply
these proceedings and avoid early dismissal”—in effect, to
stall the termination of the proceedings. Fees Decision,
2016 WL 4626584, at *5. “Because the district court lives
with the case over a prolonged period of time, it is in a
better position to determine whether a case is exceptional
and it has discretion to evaluate the facts on a case-by-
case basis.” SFA Sys., LLC v. Newegg Inc., 793 F.3d 1344,
1351 (Fed. Cir. 2015) (internal quotations, alterations,
and citations omitted). The district court properly exam-
ined the totality of the circumstances in this case and
found the case to be exceptional. We see no reason to
disturb the district court’s well-reasoned determination.
Raniere requests that, if we affirm the district court’s
finding of exceptionality, we reduce the amount of the fee
and costs award. We conclude, however, that the district
court’s discretionary determination of fees and costs is
well-supported and reflects the court’s careful considera-
tion of the relevant billing rates, invoices, and records.
The district court explicitly found that various time
entries to which Raniere objected were “not block billed,
or so vague or unintelligible as to prevent meaningful
review.” J.A. 30. The district court exercised its discre-
tion in electing to not accept Appellees’ fee request in its
entirety—it made modifications to the lodestar for dupli-
cation in effort between Microsoft and AT&T’s lawyers,
and it also declined to allow Appellees to recover all
requested fees and costs. J.A. 30–33. On this record, we
decline to modify the district court’s discretionary award.
20 RANIERE v. MICROSOFT CORPORATION
CONCLUSION
For the foregoing reasons, we affirm the district
court’s award of attorney fees and costs under 35 U.S.C.
§ 285.
AFFIRMED
COSTS
Costs to Appellees.