The en banc decision in NantKwest v. Iancu is available here. (7-4 majority opinion by Judge Stoll, dissent by Chief Judge Prost.) As I discussed in my blog post from June 2017, following the original panel decision:
The examiner and the PTAB rejected the inventor's patent application on nonobviousness grounds, and rather than immediately appealing to the Federal Circuit (which is one option under these circumstances) the applicant initiated a lawsuit against the director in the U.S. District Court for the Eastern District of Virginia (which is another, less commonly invoked, option). The district court ruled in favor of the director, and in May the Federal Circuit affirmed (here). The district court also awarded the director expert witness fees but denied a request for attorney's fees. On appeal of this matter, the Federal Circuit (in an opinion by Chief Judge Prost) concludes that the relevant statute--which in the present context is not 35 U.S.C. § 285, but rather 35 U.S.C. § 145--requires the court to award both expert and attorneys' fees--and, although it isn't at issue in this case, since the director won--the rule applies regardless of outcome.
The Federal Circuit thereafter agreed to rehear the case en banc, and as I stated in a follow-up post from this past March:
[T]hough I'm sure its resolution is important to the parties, I suspect that the number of § 145 cases filed every year is quite small, so whatever the result is its systemic effect will be pretty limited. For what it's worth, I'm inclined to think the en banc court will reverse the panel, though again I haven't read the briefs or otherwise immersed myself in considering the question presented.
So I called this one correctly, hooray for me. The relevant statute reads as follows:
An applicant dissatisfied with the decision of the Patent Trial and Appeal Board in an appeal under section 134(a) may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the Eastern District of Virginia if commenced within such time after such decision, not less than sixty days, as the Director appoints. The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Patent Trial and Appeal Board, as the facts in the case may appear and such adjudication shall authorize the Director to issue such patent on compliance with the requirements of law. All the expenses of the proceedings shall be paid by the applicant.
The majority today writes:
Historically, the agency relied on this provision to recover sums it spent on travel and printing and, more recently, expert witnesses. Now, 170 years after Congress introduced § 145’s predecessor, the agency argues that § 145 also compels applicants to pay its attorneys’ fees. We hold that it does not, for the American Rule prohibits courts from shifting attorneys’ fees from one party to another absent a “specific and explicit” directive from Congress. The phrase “[a]ll the expenses of the proceedings” falls short of this stringent standard. Accordingly, we affirm the district court’s judgment (p.1).
Both the majority and dissent go through a great deal of history, statutory interpretation, comparison to other statutory provisions found throughout the United States Code, etc. I'm no expert on this particular topic, but as I stated in my earlier blog post I'm not surprised at the outcome, nor terribly excited about the topic itself--though the fact that the decision today creates a conflict with the Fourth Circuit's interpretation of an analogous statute applicable in trademark matters could, I suppose, induce the Supreme Court to consider hearing the case, if asked.
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