Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

NantKwest, Inc. v. Iancu

En Banc Court Bars PTO Recovery of Attorney’s Fees in § 145 District Court Actions

NantKwest, Inc. v. Iancu, __ F.3d __, 2018 WL ___ (Fed. Cir. July 27, 2018) (Opinion by STOLL (joined by Newman, Lourie, Moore, O’Malley, Wallach, Taranto); Dissenting opinion by Prost (joined by Dyk, Reyna, Hughes)) (E.D. Va.: Lee) (4 of 5 stars)

Sitting en banc, Fed Cir affirms denial of PTO attorneys’ fees following PTO’s successful defense of examiner’s rejection in district court. This was contrary to the panel opinion (860 F.3d 1362 (Fed. Cir. 2017)), previously vacated. The en banc opinion describes how under the “American Rule” each litigant bears its own attorneys’ fees absent clear contrary instruction from Congress. It rejects the PTO’s argument that 35 U.S.C. § 145 (providing for patent applicants to appeal rejections to the Eastern District of Virginia), because it requires the applicant to pay “all the expenses of the proceedings” regardless of who prevails, is not subject to the American Rule. § 145 is subject to the American Rule, as per Hardt, 560 U.S. 242 (2010), and Ruckelshaus, 463 U.S. 680 (1983). Cloer, 569 U.S. 639 (2013), is not contrary, as that case involved a statute explicitly awarding attorneys’ fees regardless of litigation success—not the case here. The opinion expressly rejects the reasoning of Shammas, 784 F.3d 219 (4th Cir. 2015), which had held that “expenses” included attorneys’ fees when interpreting a parallel provision in the Lanham Act.

Applying the American Rule, the opinion concludes that § 145’s award of “expenses” does not include attorneys’ fees, based on close examination of the word “expenses” and comparison to other statutes that use “expenses” and “attorneys’ fees” separately. While there are cases where “expenses” includes “attorneys’ fees,” those cases do so explicitly. The opinion also rejects the dissent’s citation to Taniguchi, 566 U.S. 560 (2012). While Taniguchi uses the phrase “expenses borne by litigants for attorneys,” such phrasing was not used to authorize departure from the American Rule. The opinion rejects the dissent’s citation to legislative history, and in any event finds the legislative history unsupportive of the PTO or the dissent.

Dissent: Chief Judge Prost criticizes the majority for creating an unnecessary split between the Fourth and Federal Circuits, and for interpreting § 145’s phrase “all the expenses of the proceedings” to mean just some of the expenses. She would have reversed the district court and awarded attorneys’ fees to the PTO.

Judge Chen did not participate.

KEYWORDS: SECTION 145; ATTORNEYS’ FEES; AMERICAN RULE