Nantkwest, Inc. v. Iancu, No. 16-1794 (Fed. Cir. 2018)Annotate this Case
The 2001 patent application, directed to a method of treating cancer by administering natural killer cells, was rejected on obviousness grounds, after years of examination. The Patent and Trial Appeal Board affirmed. The assignee of the application appealed to the district court under 35 U.S.C. 145, in lieu of an immediate appeal to the Federal Circuit. The statute provides that the applicant must pay “[a]ll of the expenses of the proceeding,” “regardless of the outcome.” After prevailing in the district court, the Patent and Trademark Office (USPTO) sought to recover $111,696.39 in fees under section 145. Although the district court granted the USPTO’s expert fees, it denied attorneys’ fees. Initially, the Federal Circuit reversed. On reconsideration, the court affirmed. 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 that stringent standard.
This opinion or order relates to an opinion or order originally issued on June 23, 2017.