Nantkwest, Inc. v. Matal

In 2001, Dr. Klingemann filed a patent application directed to a method of treating cancer by administering natural killer cells. After years of examination, the United States Patent and Trademark Office (USPTO) rejected the application on obviousness grounds. The Patent and Trial Appeal Board affirmed that rejection. Nantkwest, as 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 35 U.S.C. 145. 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 USPTO sought to recover $111,696.39 in fees under section 145. Although the district court granted the USPTO’s expert fees, it denied its requested attorneys’ fees, citing the “American Rule,” under which litigants pay their own attorneys’ fees, win or lose, unless a statute or contract provides otherwise. The district court concluded that the “[a]ll expenses” provision of the statute was neither sufficiently specific nor explicit enough for the authorization of attorneys’ fees. The Federal Circuit reversed. Section 145 entitles the USPTO to compensation for the diversion of its resources in the defense of section 145 appeals. View "Nantkwest, Inc. v. Matal" on Justia Law