MEMORANDUM AND ORDER
JULIE A. ROBINSON, UNITED STATES DISTRICT JUDGE.
Plaintiff Hopkins Manufacturing Corporation ("Hopkins") filed this single-count action for alleged patent infringement of U.S. Patent No. 6,837,551 ("'551 Patent"). On February 10, 2015, this Court granted a motion to stay the case pending inter partes review ("IPR") of the patent by the United States Patent and Trademark Office ("USPTO"). This matter is before the Court on Defendant Cequent Performance Products, Inc.'s ("Cequent") Motion for Summary Judgment and Motion to Lift the Stay (Doc. 27). The motions are fully briefed and the Court is prepared to rule. As described more fully below, Defendant's Motion for Summary Judgment and Motion to Lift the Stay are granted.
I. Legal Standard
Summary judgment is appropriate if the moving party demonstrates that there is no genuine dispute as to any material fact and that it is entitled to judgment as a matter of law.1 In applying this standard, the court views the evidence and all reasonable inferences therefrom in the light most favorable to the nonmoving party.2 "There is no genuine issue of material fact unless the evidence, construed in the light most favorable to the nonmoving party, is such that a reasonable jury could return a verdict for the nonmoving party."3 A fact is "material" if, under the applicable substantive law, it is "essential to the proper disposition of the claim."4 An issue of fact is "genuine" if "the evidence is such that a reasonable jury could return a verdict for the non-moving party."5
The moving party initially must show the absence of a genuine issue of material fact and entitlement to judgment as a matter of law.6 In attempting to meet this standard, a movant that does not bear the ultimate burden of persuasion at trial need not negate the other party's claim; rather, the movant need simply point out to the court a lack of evidence regarding an essential element of the other party's claim.7
Once the movant has met this initial burden, the burden shifts to the nonmoving party to "set forth specific facts showing that there is a genuine issue for trial."8 The nonmoving party may not simply rest upon its pleadings to satisfy its burden.9 Rather, the nonmoving party must "set forth specific facts that would be admissible in evidence in the event of trial from which a rational trier of fact could find for the nonmovant."10
The facts "must be identified by reference to an affidavit, a deposition transcript, or a specific exhibit incorporated therein."11 Rule 56(c)(4) provides that opposing affidavits must be made on personal knowledge and shall set forth such facts as would be admissible in evidence.12 The nonmoving party cannot avoid summary judgment by repeating conclusory opinions, allegations unsupported by specific facts, or speculation.13
Finally, summary judgment is not a "disfavored procedural shortcut;" on the contrary, it is an important procedure "designed to secure the just, speedy and inexpensive determination of every action."14 In responding to a motion for summary judgment, "a party cannot rest on ignorance of facts, on speculation, or on suspicion and may not escape summary judgment in the mere hope that something will turn up at trial."15
II. Uncontroverted Facts
The following facts are uncontroverted, stipulated to, or viewed in the light most favorable to Plaintiff.
Hopkins filed this single-count action against Cequent for alleged infringement of United State Patent No. 6,837,551. On January 23, 2015, Cequent filed a petition for IPR of eight claims of the '551 Patent with the USPTO.16 On August 17, 2015, the USPTO granted Cequent's petition and instituted IPR of the eight claims of the '551 Patent.
On December 7, 2015, Hopkins filed a request for adverse judgment in the IPR proceedings in accordance with 37 C.F.R. § 42.73(b)(4), and in its notice, Hopkins acknowledged that "such abandonment will lead to cancellation of the claims involved in this inter partes review."17 On December 11, 2015, the USPTO granted Hopkins' request, entered judgment adverse to Hopkins, and ordered that "claims 1-8 of U.S. Patent No. 6,837,551 B2 shall be canceled."18
On February 10, 2016, Cequent forwarded to Hopkins what it called "a draft motion for consent judgment with the judgment for [Hopkins'] review."19 The transmittal email requested Hopkins to "[p]lease let us know whether you agree to this language or have comments." Cequent followed up on February 18, 2016 by email requesting that Hopkins "[p]lease let us know if the draft is acceptable, otherwise we will have to move for summary judgment against Hopkins."20
Later in the day on February 18, 2016, Hopkins responded with its comment and attached a redlined version of a proposed stipulation of dismissal. The transmittal email read:
Attached is a redline version of what Hopkins is willing to stipulate to. When we had our phone call, we did not discuss a consent judgment, Dave stated you needed an express acknowledgment that Cequent is the prevailing party in the stipulation. We have included such in this version along with a little more factual context and we don't believe a consent judgment is appropriate. Further, the attached will be self-executing and require no further action by the Court on this issue. Given what Hopkins is willing to stipulate to in this version, a motion for summary judgment by Cequent would be unnecessarily complicating the matter and driving up costs for no reason we can discern.21
Cequent did not respond to Hopkins' email or request any changes to Hopkins' proposed stipulation of dismissal before filing its Motion to Lift the Stay and Motion for Summary Judgment on February 24, 2016.22
III. Discussion
The only issue to resolve in this motion for summary judgment is whether Defendant is entitled to summary judgment in its favor in order to proceed as the prevailing party for purposes of seeking attorney's fees under § 285 of the Patent Act.23 The parties both agree that the merits of the patent infringement case were resolved with the adverse judgment entered against Plaintiff at the USPTO.24 However, Defendant argues that a final judgment on the merits is necessary to establish it as the prevailing party; Plaintiff argues that a stipulation of dismissal under Fed. R. Civ. P. 41(a)(1)(A)(ii) is sufficient in this case.
Plaintiff offers three arguments for denial of summary judgment under the circumstances of this case. First, Plaintiff argues that cancellation of the claims during the IPR with the adverse judgment entered against it mooted this case. Second, Plaintiff contends that existing case law does not require a judgment on the merits, such as a granting of summary judgment, to seek exceptional-case attorney's fees. Third, Plaintiff argues that a stipulated dismissal under Rule 41(a)(1)(A)(ii) is sufficient to allow Defendant to be the prevailing party for purposes of seeking attorney's fees.
A. Mootness
The Court first addresses whether this case is moot for purposes of considering summary judgment and lifting the stay based on the USPTO's cancellation of the patent claims. Article III of the Constitution gives federal courts the power to exercise jurisdiction only over "Cases" and "Controversies." As the Supreme Court has explained:
In limiting the judicial power to "Cases" and "Controversies," Article III of the Constitution restricts it to the traditional role of Anglo-American courts, which is to redress or prevent actual or imminently threatened injury to persons caused by private or official violation of law. Except when necessary in the execution of that function, courts have no charter to review and revise legislative and executive action.25
The standing doctrine requires federal courts, before considering the merits of an action, to "satisfy themselves that the plaintiff has alleged such a personal stake in the outcome of the controversy as to warrant [the plaintiff's] invocation of federal-court jurisdiction."26 Standing considers whether there is a case or controversy at the time the action is filed, while "mootness ensures it remains one at the time a court renders a decision."27 A case is moot only when it is impossible for a court to grant any effectual relief to the prevailing party.28 "Failure to satisfy the requirements of either doctrine places a dispute outside the reach of the federal courts."29
The Court notes that Plaintiff has not cited any authority supporting its assertion that a case is moot upon a cancellation of claims in the USPTO office. Plaintiff cited Cartner v. Alamo Group, Inc. where the district court entered a judgment for defendants upon a motion for a consent judgment following a remand of the case from the circuit.30 The district court also awarded attorney's fees.31 Plaintiff distinguishes Cartner from this case because it argues there was a live controversy when the consent judgment was entered in Cartner — namely, the invalidity of the patent was still in question on remand. Plaintiff argues the validity of the patent is not at issue in this case. However, here, the Court finds that while the adverse judgment cancelled the claims and patent validity, the issue of who is the prevailing party is still a live controversy given the Supreme Court's requirements.
Case law does not support Plaintiff's position that this case is moot. In Inland Steel Co. v. LTV Steel Co.,32 the Federal Circuit faced a procedural posture similar to this case. The district court stayed the litigation pending the resolution of reexamination proceedings in the USPTO. Following the reexamination, which ended in cancellation of the patents, the district court, on defendant's motion, reopened the case and entered judgment dismissing the case with prejudice in favor of the defendant.33 The district court dismissed the counterclaims made by defendant as moot in light of the USPTO's reexamination, but the district court did enter judgment in favor of the defendant on the issue of infringement.34 The Federal Circuit considered the case, and it did not indicate or raise the issue of mootness when the district court entered judgment.35
Similarly, in Credit Card Fraud Control Corp. v. Maxmind, Inc.,36 the United States District Court for the Northern District of Texas considered a patent infringement action, which was stayed pending a petition with the USPTO's Patent Trial and Appeal Board ("PTAB").37 The plaintiff filed a request for cancellation and adverse judgment with the PTAB, which then cancelled the patent claim.38 At the parties' request, the district court entered an order of dismissal.39 Although mootness was not raised, there was no finding of mootness such that the district court did not have the authority to enter an order of dismissal.40
Here, the Court finds that this case is not moot as Plaintiff contends. Both of the above cases proceeded to entry of judgment at the district court despite cancellation of the claims in the USPTO and the PTAB. Despite the cancellation of claims in this case at the USPTO upon entry of adverse judgment, this case may proceed to entry of judgment. As will be explained more fully below, the issue of whether Defendant is the prevailing party depends on the entry of judgment in this case. This decision will impact the parties going forward — the district court's entry of judgment is necessary to confer status as a prevailing party in order to seek attorney's fees under § 285 of the Patent Act. The adverse judgment entered in the USPTO did not resolve the case in this Court. Therefore, this case is not moot.
B. Prevailing Party Status
The dispositive question is whether a stipulation of dismissal under Rule 41(a)(1)(A)(ii) or a final judgment on the merits is required to confer prevailing party status on Cequent for purposes of § 285 of the Patent Act.
Section 285 of the Patent Act provides that "[t]he court in exceptional cases may award reasonable attorney's fees to the prevailing party."41 Similar to § 285 of the Patent Act, many statutes contain fee-shifting provisions for prevailing parties. The Supreme Court has consistently held that such statutes prohibit an award of fees unless the court awards relief on the merits, either through a judgment on the merits or through a settlement agreement enforced through a consent decree.42 In order to be a prevailing party, the Court has explained that the focus is not on the defendant's voluntary change in conduct, but rather whether there is a "judicially sanctioned change in the legal relationships of the parties."43 The Court held that a defendant's voluntary change in conduct, even if it accomplishes what the plaintiff sought to achieve, lacks the necessary "judicial imprimatur on the change."44 The Federal Circuit applies the Supreme Court's requirements in Buckhannon to § 285 of the Patent Act.45
The Federal Circuit has not addressed whether voluntary dismissal under Rule 41(a)(1)(A)(ii) is sufficient to render a defendant a prevailing party.46 Rule 41(a)(1)(A)(ii) states that "the plaintiff may dismiss an action without a court order by filing ... a stipulation of dismissal signed by all parties who have appeared."47 Under Rule 41(a)(1)(B), the dismissal is without prejudice unless stated otherwise in the notice or the plaintiff previously dismissed the same claim.48 The Federal Circuit has held that Rule 41(a)(1)(A)(i), a notice of dismissal filed before the opposing party serves an answer or motion for summary judgment without a court order, does not bestow prevailing party status.49 The Federal Circuit explained that Rule 41(a)(1)(A)(i) was insufficient to confer prevailing party status because it is without prejudice leaving the plaintiff free to refile and it is not judicially sanctioned given that it does not require a court order.50
In contrast to the voluntary dismissals without court order under Rule 41(a)(1), a number of courts have ruled that a dismissal with prejudice under Rule 41(a)(2) renders the party against whom the claims were made the prevailing party.51 Rule 41(a)(2) states that "an action may be dismissed at the plaintiff's request only by court order, on terms that the court considers proper."52 Unlike Rule 41(a)(1)(ii), Rule 41(a)(2) dismissals require judicial approval. In Bryant v. MV Transportation, Inc.,53 the district court explained that:
While a voluntary dismissal under Rule 41(a)(1)(ii) is effective with little to no court involvement, the court plays a significant role in resolving a case that is dismissed under Rule 41(a)(2). A voluntary dismissal under Rule 41(a)(2) is not valid unless the parties obtain a court order. The plaintiff must move the court, in writing, to dismiss the action. The court has the discretion to approve or disapprove of the motion, and hence constitutes the determining factor as to whether the case is dismissed. The court also has the authority to impose conditions on the moving party, thereby shaping the terms of the dismissal.... Thus, a Rule 41(a)(2) dismissal has the "judicial imprimatur" and "judicially sanctioned" relief lacking in a Rule 41(a)(1)(ii) dismissal.54
The Court agrees with Defendant that dismissal under Rule 41(a)(1)(A)(ii) would be insufficient to confer prevailing party status under the Supreme Court's standards announced in Buckhannon. As with Rule 41(a)(1)(A)(i), Rule 41(a)(1)(A)(ii) is a dismissal without prejudice unless the notice states otherwise, so it does not constitute a change in the legal relationship of the parties. Even if the stipulation were to state the dismissal was with prejudice, a plaintiff's voluntary dismissal under Rule 41(a)(1)(A)(ii) is not judicially sanctioned because it does not require a court order, nor does the court have the authority to place any conditions on it. By plaintiff's own admission, the stipulated dismissal it proposed would "be self-executing and require no further action by the Court on this issue."55 This would undoubtedly not have "judicial imprimatur" and "judicially sanctioned" relief necessary for the requirements to be a prevailing party. Therefore, if the action were to be dismissed under Rule 41(a)(1)(A)(ii), Hopkins' dismissal would not give Cequent prevailing party status in order to pursue attorney's fees under § 285 of the Patent Act.
Further, the Court considers whether judgment on the merits from summary judgment is proper to confer prevailing party status for § 285 of the Patent Act. The Federal Circuit has held that a defendant may be the prevailing party where the district court entered a final judgment in its favor in response to a request by the defendant for a judgment based on the action of the USPTO in cancelling the patent in suit.56 Here, following the adverse judgment entered against Hopkins, Cequent moves the Court to enter a final judgment in its favor based on "the cancellation of the claims involved in [the] inter partes review."57 The Court finds that summary judgment, a relief on the merits, satisfies the Supreme Court's requirement in Buckhannon. Summary judgment is a "judicially sanctioned change in the legal relationships of the parties."58 Therefore, the Court finds that summary judgment is properly granted in favor of Defendant based on the cancellation of the claims in the USPTO. The entry of judgment will confer on Defendant prevailing party status in order to pursue attorney's fees under § 285 of the Patent Act.59
IT IS THEREFORE ORDERED BY THE COURT that Defendant's Motion for Summary Judgment and Motion to Lift the Stay (Doc. 27) are granted.
IT IS SO ORDERED.
