Peter v. Nantkwest

Under section 145 of the Patent Act, the term “expenses” does not include attorney’s fees.

Section 145 of the Patent Act allows dissatisfied applicants the opportunity to file a civil action and specifies that “[a]ll expenses of the proceedings shall be paid by the applicant.” Respondent filed said action against Petitioner and Petitioner was granted summary judgment. Petitioner moved for reimbursement of the pro rata salaries for attorneys and paralegals who worked on the case, arguing that “expenses” include their salaries. The district court denied the motion and a divided Federal Circuit panel reversed. The en banc Federal Circuit reversed the panel. On appeal, the Supreme Court affirmed, holding that the term “expenses” was not intended to include attorney’s fees under 35 U.S.C. § 145. The Supreme Court reasoned that Congress intended expenses to be separate and distinct from attorney’s fees, and that while attorney’s fees are sometimes included as a subset of expenses, that inclusion does not indicate a default rule. The Court further reasoned that when Congress has intended fee shifting under the Patent Act, it has done so explicitly, and the text of § 145 was not explicit enough to rebut the presumption that parties will pay their own attorney’s fees. Therefore, Petitioner cannot recover attorney’s fees under §145. AFFIRMED.