The
case is Giesecke & Devrient GmbH v. United States, nonprecedential
opinion authored by Judge Stoll, joined by Judges Prost and Hughes.  The case is an appeal from the United States
Court of Federal Claims, which hears claims against the federal
government.  Patentee G&D filed suit
against the U.S. claiming infringement of a patent directed to a “contactless
data carrier,” which according to the patent includes “readable identification documents,
such as passports and identity cards” (p.2). 
HID, which provides the U.S. with permanent resident cards and global
entry cards, joined the case and moved to dismiss with prejudice.  G&D then “sought leave to amend its
complaint to drop the claims against HID’s card-based products.”  The court granted leave to amend and denied
the motion to dismiss as moot, after which it “voluntarily dismissed the
withdrawn claims without prejudice” (p.3). 
HID moved for attorney fees, which the court initially granted pursuant
to 35 U.S.C. § 285 on the grounds that HID was the prevailing party and the
case exceptional.  The case was then
transferred to a new judge, Judge (and former law professor) Ryan Holte, who
after additional briefing concluded that the court lacked jurisdiction to
consider the motion for fees under § 285.

The
Federal Circuit affirms, reasoning that “the touchstone of the prevailing party
inquiry must be the material alteration of the legal relationship of the
parties” (p.4, quotation omitted), and that under Federal Circuit precedent
defendants are not prevailing parties if the plaintiff voluntarily dismisses
the case without prejudice (but would be if the dismissal were with prejudice)
(p.5).  From the opinion:

We hold that, under our precedent,
HID cannot be a “prevailing party” because the Court of Federal Claims permitted
G&D to withdraw the claims then dismissed them without prejudice and, thus,
G&D may refile or reassert the withdrawn claims against HID. See O.F.
Mossberg & Sons, 955 F.3d at 991, 993. Like O.F. Mossberg & Sons
and RFR, this case “involve[s] voluntary rather than involuntary
dismissal[s] without prejudice.” Oscar, 541 F.3d at 981. But regardless
of whether the dismissal is voluntary or involuntary, “the risk of re-filing
underlying their reasoning applies in both procedural postures.” Id. Indeed,
the Court of Federal Claims’ decision to dismiss without prejudice lacks “an
adjudication on the merits,” Raniere, 887 F.3d at 1308, and therefore is not
the “judicially sanctioned change in the legal relationship of the parties”
that “effects or rebuffs a plaintiff’s attempt to effect a ‘material alteration
in the legal relationship between the parties.’” Id. at 1306 (quoting CRST,
578 U.S. at 432) (p.6).

I’m
not sure if the above language, suggesting that a dismissal “on the merits” is
a prerequisite, is necessarily accurate in view of other Federal Circuit precedent, but
this case is consistent with precedent indicating that, for the Federal
Circuit, the key distinction appears to be whether the dismissal is with or
without prejudice.  For previous
discussion on this blog, see here and here. 

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In other news, Florian Mueller’s new blog notes two potentially very far-reaching developments, one in Germany relating to extraterritorial damages stemming from domestic infringement, and one from China regarding the jurisdiction of Chinese courts to set FRAND royalties for patent pools.  I will have more to say about the first and possibly the second next week.