by Dennis Crouch
LG Electronics v. Iancu (Fed. Cir. 2018) [ORDER]
In a R.36 Affirmance, the Federal Circuit upheld the PTAB obviousness judgment. The USPTO promptly filed a request for a bill of costs for $387.60. The Federal Circuit has now rejected that request since the PTO was an intervenor, not a party.
LG Electronics (LG) sued Advanced Micro Devices, Inc. (AMD) for infringement back in 2014 and AMD responded with the filing of this inter partes review (IPR) petition. U.S. Patent 7,664,971. The PTAB found all the challenged claims obvious and LGE appealed, but AMD did not defend the case on appeal since the parties settled the underlying infringement dispute. At that point, the PTO “exercised its right to intervene” under 35 U.S.C. 143.
The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board in a derivation proceeding under section 135 or in an inter partes or post-grant review under chapter 31 or 32.
After affirming on the merits, the PTO asked for its costs Federal Circuit Rule 39. Under the rule, costs just include copying, service of process, clerk fees, etc. — and here added up to $388.
The Federal Circuit rule states that “if a judgment is affirmed, costs are taxed against the appellant.” However, the rule includes a caveat when costs are “for or against” the US. In that case, costs are assessed “only if authorized by law.” 28 U.S.C. § 2412(a) allows for costs when the Government is a party to litigation. Here, however, the Government was an intervenor.
This appeal was not brought by or against the United States. It was a dispute arising between two private parties, AMD and LG. The PTO was an intervenor, which, although having a right to intervene, see 35 U.S.C. § 143, had no obligation to intervene. No one asked it to intervene. It was in effect a volunteer. Section 2412(a) is therefore not applicable to this case.
The court found no other particular statute authorizing costs to the government — and thus the court “decline[d] to award costs in these circumstances.”