B.E. TECHNOLOGY, L.L.C., Plaintiff-Appellant
FACEBOOK, INC., Defendant-Appellee
from the United States District Court for the Western
District of Tennessee in No. 2:12-cv-02769-JPM-tmp, Chief
Judge Jon P. McCalla.
J. Weinberg, Freitas & Weinberg LLP, Redwood Shores, CA,
argued for plaintiff-appellant. Also represented by Kayla Ann
E. Terrell, Cooley LLP, Washington, DC, argued for
defendant-appellee. Also represented by Heidi Lyn Keefe, Palo
Alto, CA; Orion Armon, Broomfield, CO.
Lourie, Plager, and O'Malley, Circuit Judges.
Lourie, Circuit Judge.
Technology, L.L.C. ("B.E.") appeals from a decision
of the United States District Court for the Western District
of Tennessee affirming the Clerk's Order finding
Facebook, Inc. ("Facebook") to be the prevailing
party in their lawsuit and taxing $4, 424.00 in costs against
B.E. B.E. Tech., LLC v. Facebook, Inc., No.
2:12-cv-2769-JPM-TMP, 2018 WL 3825226, at *1 (W.D. Tenn. Aug.
10, 2018) ("Decision"). For the
reasons detailed below, we affirm.
September 7, 2012, B.E. filed suit in the Western District of
Tennessee accusing Facebook of infringing claims 11, 12, 13,
15, 18, and 20 of its U.S. Patent 6, 628, 314 ("the
'314 patent"). Approximately a year into the case,
Fa-cebook and two other parties B.E. had also accused of
infringement, Microsoft and Google, filed multiple petitions
for inter partes review of the asserted claims. The
district court stayed its proceedings in this case pending
the outcome of the Board's review. B.E. Tech., LLC v.
Amazon Digital Servs., Inc., No. 2:12-cv-2767-JPM-TMP,
2013 WL 12158571, at *1 (W.D. Tenn. Dec. 6, 2013).
Board instituted review of the '314 patent and held the
claims unpatentable in three final written decisions. See
Google, Inc. v. B.E. Tech., LLC, Nos. IPR2014-00038,
IPR2014-00699, 2015 WL 1735099, at *1 (P.T.A.B. Mar. 31,
2015); Microsoft Corp. v. B.E. Tech., LLC, Nos.
IPR2014-00039, IPR2014-00738, 2015 WL 1735100, at *1
(P.T.A.B. Mar. 31, 2015) ("Microsoft
Decision"); Facebook, Inc. v. B.E. Tech.,
LLC, Nos. IPR2014-00052, IPR2014-00053, IPR2014-00698,
IPR2014-00743, IPR2014-00744, 2015 WL 1735098, at *2
(P.T.A.B. Mar. 31, 2015). B.E. appealed, and we affirmed the
Microsoft Decision, dismissing the remaining appeals
as moot. B.E. Tech., LLC v. Google, Inc., Nos.
2015-1827, 2015-1828, 2015-1829, 2015-1879, 2016 WL 6803057,
at *1 (Fed. Cir. Nov. 17, 2016).
then moved in the district court for judgment on the
pleadings under Fed.R.Civ.P. 12(c), seeking a dismissal with
prejudice and costs under Rule 54(d). B.E. agreed that
dismissal was appropriate but argued that the claims should
be dismissed for mootness, rather than with prejudice. The
district court ultimately agreed with B.E., issuing an Order
holding that, "[i]n light of the cancellation of claims
11-22 of the '314 patent, B.E. no longer ha[d] a basis
for the instant lawsuit" and that its patent
infringement "claims [were] moot." J.A. 37. As for
costs, the court initially declined to award Facebook costs
because the request was lodged before entry of judgment. J.A.
renewed its motion for costs after judgment was entered, and
this time the district court awarded costs under Rule 54(d).
The Clerk of Court held a hearing on the motion and
ultimately taxed $4, 424.20 in costs against B.E. B.E. sought
review by the court, and the court affirmed. In its decision,
the court relied on CRST Van Expedited, Inc. v.
E.E.O.C., 136 S.Ct. 1642 (2016), to hold that, although
the case was dismissed for mootness, Face-book "obtained
the outcome it sought: rebuffing B.E.'s attempt to alter
the parties' legal relationship." Decision,
2018 WL 3825226, at *2. The court thus held Facebook to be
the prevailing party in B.E.'s lawsuit and affirmed the
timely appealed, and we have jurisdiction under 28 U.S.C.
Federal Rules of Civil Procedure provide that "[u]nless
a federal statute, these rules, or a court order provides
otherwise, costs-other than attorney's fees-should be
allowed to the prevailing party." Fed.R.Civ.P.
54(d)(1) (emphasis added). The district court determined here
that Facebook was the prevailing party, and we review the
court's interpretation of the term "prevailing
party" de novo, Highway Equip. Co. v. FECO,
Ltd., 469 F.3d 1027, 1032 (Fed. Cir. 2006), and apply
Federal Circuit law, Manildra Milling Corp. v. Ogilvie
Mills, Inc., 76 F.3d 1178, 1182 (Fed. Cir. 1996). We
interpret the term consistently between different
fee-shifting statutes, CRST, 136 S.Ct. at 1646, and
between Rule 54(d) and 35 U.S.C. § 285, Raniere v.
Microsoft Corp., 887 F.3d 1298, 1307 n.3 (Fed. Cir.
2018) ("We have treated the prevailing party issue under
Rule 54 and § 285 in a similar ...