Iancu v. NantKwest, Inc.

Whether the phrase “[a]ll expenses of the proceedings” in the Patent Act encompasses personnel expenses incurred by the United States Patent and Trademark Office through employees defending the agency in a civil action under 35 U.S.C. § 145.

Respondent challenged Petitioner’s rejection of a patent application ultimately assigned to Respondent, which involved a method of treating cancer cells. The district court granted summary judgment to Petitioner on the issue of patentability and the court of appeals affirmed. Subsequently, Petitioner moved for reimbursement of personnel expenses that included attorney’s fees and expert witness fees. The district court denied Petitioner’s motion with respect to attorney’s fees but granted reimbursement for expert witness fees. Ultimately, the Federal Circuit affirmed denial of Petitioner’s motion for attorney’s fees, concluding that the American Rule requiring parties to pay their own attorney’s fees applied to 35 U.S.C. § 145, absent Congress’s express displacement of such a rule. Petitioner argues that the Federal Circuit’s exclusion of attorney’s fees from the phrase “all expenses of proceedings” violates ordinary usage of the term while existing as inconsistent with 35 U.S.C. § 145’s history and purpose. Regarding ordinary usage, Petitioner relies on a definition of “all expenses” as including the money, time, labor, or resources used in the attempt to attain a desired result, further arguing that no evidence exists to suggest that Congress intended a narrower meaning. Regarding the structure and purpose of 35 U.S.C. § 145, Petitioner also argues that the Federal Circuit’s holding undermines Congress’s intent to protect the United States Patent and Trademark Office’s resources and discourage abusive filings, as evidenced by the requirement that applicants pay all expenses of the proceeding, regardless of the outcome.