07 September 2017
Washington DC
Reporter: Mark Dugdale

Federal Circuit to rehear NantKwest v Matal

The Court of Appeals for the Federal Circuit has agreed to rehear en banc NantKwest v Matal, a dispute that centres on the US Patent and Trademark Office’s (USPTO) request for attorneys’ fees.

The Federal Circuit’s 23 June decision to award attorneys’ fees to the USPTO was vacated and biotechnology company NantKwest’s request for an en banc rehearing was granted in a sua sponte rehearing en banc decision.

The principal issue at dispute is whether Section 145’s “[a]ll expenses of the proceedings” provision authorises an award of the USPTO’s attorneys’ fees.

In June, the Federal Circuit ruled that ‘all expenses’ contains “breath” and the provision places “substantial financial burden” on applicants of Section 145 appeals.

The Federal Circuit held: “Congress intended that all applicants unconditionally assume this financial burden when seeking review directly in district court—whether they win, or lose. We thus concluded that Congress drafted this provision without requiring any degree of success on the merits (much less a prevailing party) as a necessary precedent for shifting this ‘heavy economic burden’ onto the applicant.”

Circuit Judge Kara Farnandez Stoll dissented from the majority in June, arguing that Section 145 fails to provide the necessary congressional directive to overcome the American Rule’s bar against shifting attorneys’ fees.

Under the American Rule, “each party in a lawsuit ordinarily shall bear its own attorney’s fees unless there is express statutory authorisation to the contrary.”

The full Federal Circuit will now rehear the case.

More news
The latest news from IPPro Patents
Join Our Newsletter

Sign up today and never
miss the latest news or an issue again

Subscribe now
Ex-Oblon attorneys start own patent firm
22 September 2017 | Virginia | Reporter: Barney Dixon
Ex-Oblon attorneys Kirsten Grüneberg and Eric Myers have launched their own patent boutique law firm in Virginia
Red Hat expands Patent Promise
22 September 2017 | Raleigh | Reporter: Barney Dixon
Open-source software provider Red Hat has revised its Patent Promise, which was initially intended to discourage patent aggression against free and open-source software
Google and HTC sign $1.1 billion deal
21 September 2017 | California | Reporter: Barney Dixon
Google and HTC have signed a $1.1 billion agreement that will net Google a portion of HTC’s smartphone research and development team and a separate non-exclusive intellectual property license
IP Awareness Summit to be held in November
20 September 2017 | Chicago | Reporter: Barney Dixon
The Centre for Intellectual Property Understanding, alongside the Chicago-Kent College of Law, will be holding the first Intellectual Property Awareness Summit in Chicago on 6 November
Motorola wins direct infringement challenge
20 September 2017 | Washington DC | Reporter: Barney Dixon
Motorola has won its direct patent infringement appeal against Intellectual Ventures, but failed to secure an invalidity ruling
Dali and Fiplex settle down
19 September 2017 | California | Reporter: Barney Dixon
Dali Wireless has settled with Fiplex Communications over patents for its Public Safety distributed antenna systems (DAS) products
Nokia and LG complete arbitration
18 September 2017 | Espoo | Reporter: Barney Dixon
Nokia and LG Electronics have finally settled their patent licence dispute at the International Court of Arbitration