Federal Circuit Orders Rehearing En Banc in Nantkwest v. Matal

By Kevin E. Noonan --

The first scene in the iconic dystopian 1985 sci-fi movie Brazil by Terry Gilliam (one of the Monty Python troop) is of a peaceful citizen being snatched from his comfy chair by jackbooted, black-clad members of a SWAT team, who unceremoniously stuff him into a body bag-restraint as they take him away.  As a final insult, they leave something behind for his wife and family -- a bill, for the cost of taking him into custody.

This scene came to mind when a panel of the Federal Circuit held, on June 23rd of this year, that the provision of 35 U.S.C. § 145 (Civil Action to Obtain a Patent) providing that all expenses of the proceedings be borne by the plaintiff/appellant be construed to mean that a court can award attorney's fees to the Patent Office.  This decision came as somewhat of a surprise to many at the time, and it seems to have raised eyebrows to a sufficient number of Federal Circuit judges that the Court today issued a per curiam, sua sponte order that the question be heard en banc.  The order requests the parties submit briefs addressing this question:

Did the panel in NantKwest, Inc. v. Matal, 860 F.3d 1352 (Fed. Cir. 2017) correctly determine that 35 U.S.C. § 145's "[a]ll the expenses of the proceedings" provision authorizes an award of the United States Patent and Trademark Office's attorneys' fees?

Appellant's brief is due Monday, October 16th, and appellee's brief is due Tuesday, November 14th.  Amicus briefs "will be entertained" on the question, without requiring consent of the parties or leave from the Court but subject to Fed. R. App. P. 29 and Federal Circuit Rule 29.

Comments

[leslie]

I love, love, love your open. I will now follow this case, all because you mentioned Brazil.

[EG]

I do hope the en banc Federal Circuit overturns the panel decision-giving the Federal government attorneys fees as "costs" for simply appealing is a gross miscarriage of justice.

[Paul F. Morgan]

Not to comment on the specific "who pays for what" issue, but that movie was not a great analogy. A 35 U.S.C. § 145 civil action only occurs when the applicant voluntarily chooses to file such a suit before going to the Fed. Cir. on an appeal. In most cases to introduce evidence the applicant could have introduced ex parte with declarations and exhibits in the application prosecution, or in a continuation, that is now instead subject to cross-examination and rebuttal in a 145 action. Few 145 actions change the outcome.

[Kevin E. Noonan]

Paul: no analogy is perfect, of course, but unless the PTO goes the way of the FDA (which would be bad for innovation, no?) it seems unfair to make an applicant pay government attorneys' fees. Just my opinion

[Atari Man]

Dealing a with a case right now in which the examiner doesn't understand the difference between a Fe (II) salt and a Fe (III) salt - the sort of thing a high school chemistry student is expected to know. It's bad enough that we need to spend thousands of dollars educating the examiner because the PTO doesn't know how to hire technically competent people. But to then add the PTO's attorney fees should this thing eventually go to court via 145? Are you kidding me?

[skeptical]

Dr. Noonan,

Is this a question of "fairness" or is this a question of the law?

As I am sure that you are aware, the two are not always the same.

As to whether THIS court has the authority to rewrite the law, solely as a matter of "fairness,"...

well, call me:

[Kevin E Noonan]

Well, Skep, as I understand it the issue is whether the law is interpreted to include attorneys fees (which is a new interpretation). There was no hint here of anything other than an applicant availing herself of the opportunity to have review of the administrative agency's decision.Insofar as policy goes fairness should be a part of that analysis (at least insofar as inventors that are not big companies are concerned).