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On June 23, 2017, the Federal Circuit held that, whether they
win or lose, patent applicants who appeal adverse PTAB decisions
directly to a district court must pay the PTO's attorneys'
fees.
Patent applicants seeking judicial review of Board decisions
have two options under the America Invents Act: appeal to the
Federal Circuit under 35 U.S.C. § 141, or to the Eastern
District of Virginia under 35 U.S.C. § 145. Appeals taken
under Section 145 offer certain benefits to the applicant, such as
allowing discovery and the introduction of further evidence.
Section 145 also provides that applicants must pay "[a]ll the
expenses of the proceeding." When Dr. Hans Klingemann's
patent application directed to a method of treating cancer was
rejected as obvious, Nantkwest, the assignee of the application,
appealed under Section 145. After prevailing on the merits, the
Director of the PTO moved for expert and attorneys' fees,
citing the "all expenses" provision of the statute.
The district court granted the PTO's expert fees, but denied
the requested attorneys' fees, citing the "American
Rule," under which litigants pay their own attorneys' fees
regardless of the outcome. Though courts recognize an exception to
this Rule when a statute "specific[ally]" and
"explicit[ly]" authorizes an award of attorneys'
fees, the district court concluded that Section 145 did not satisfy
the specificity requirement.
The Federal Circuit reversed. The Court found that the ordinary
meaning of "expenses" was clear and includes
attorneys' fees. In support, the Court pointed to dictionary
definitions and treatises, as well as a Supreme Court case that
recognized a distinction between costs and fees, and which
determined that fees include "expenses born by litigants for
attorneys." The Court rejected Nantkwest's argument that
the term "expenses" is ambiguous. According to Nantkwest,
in approximately twenty other statutory provisions, Congress uses
the term "expenses" to authorize attorneys' fees
either in addition to expenses, or as a component of them,
demonstrating that the term can either include or exclude
attorneys' fees, depending on the statute. The Court, however,
found this recitation of statutes insufficient to dislodge the
reasonable and ordinary meaning of the term, stating: "At
best, these examples demonstrate that Congress will not confine
itself to a single word or phrase when referencing attorneys'
fees."
Writing in dissent, Judge Stoll argued that the American
Rule's presumption against fee shifting in litigation is a
"bedrock principle" that dates back more than 200 years.
As such, the high bar it sets should be the starting point of the
analysis. Judge Stoll found Section 145 ambiguous at best, citing
contemporaneous dictionary definitions and other statutory
provisions that distinguish "expenses" from
"attorneys' fees." Further, she noted that if Section
145 were a fee-shifting statute, it diverts from the American Rule
because it requires even successful plaintiffs to pay the PTO's
attorneys' fees. Given such atypical circumstances, Judge Stoll
maintained that Congress's intent to shift fees should have
been more clear. Moreover, Judge Stoll was concerned that, given
the substantial fees involved, the majority's interpretation
"will likely deter applicants, particularly solo inventors and
other smaller entities, from pursuing review under §
145."
Notably, the Fourth Circuit reached the same result, though by
different reasoning, in a 2015 case interpreting the almost
identical "all expenses" provision in 15 U.S.C. §
1071(b)(3) of the Lanham Act, which governs appeals from the
Trademark Trial and Appeal Board.
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20 Aug 2017, Speaking Engagement, Washington, DC, United States
Finnegan is a sponsor of the Chemistry and the Law (CHAL) Reception at the 254th American Chemical Society National Meeting. Additionally, Finnegan partners Krista Bianco and Erin Sommers will join the panel discussion "Careers in Patent Law."
Justin Hasford and Erin Sommers present "Interplay Between Patent Office Post-Grant Challenges and District Court Patent Infringement Cases." Krista Bianco and Kassandra Officer will present "Recent Developments in Post-Grant Review Proceedings," and Krista Bianco will present "Practical Considerations for Patent Portfolio Management." Matthew Hlinka will present "Options for Protecting Your Intellectual Property and IP Trends in Renewable Energy." Charles Collins-Chase will present "Better Together? How to Avoid Com
Finnegan’s Shanghai Office will host the next session in its Advanced Intellectual Property Seminar Program series. This program features Finnegan attorneys Smith R. Brittingham IV, Kelly Lu, and Qingyu Yin discussing the Hoverboard War: The Section 337 Investigations at the International Trade Commission (ITC).
Chinese companies continue to be a main target in section 337 investigations by the ITC. About 33% of the section 337 respondents from 2016 to the present are Chinese companies from many different industries: electrical, mechanical, medical devices, and chemical. Lawyers from Finnegan led the defense in the high-profile war on Hoverboards, which involved two section 337 investigations and several district court suits. In this program, the lead attorneys from the Finnegan team will talk about the war and recent developments at the ITC that may affect Chinese companies.
24 Aug 2017, Webinar, Washington, DC, United States
As part of Strafford Publications' webinar series, Finnegan attorneys Tom Irving and Amanda Murphy will discuss leveraging decisions by the Court of Customs and Patent Appeals (CCPA) and the Federal Circuit regarding application of §112 written description.
The program will consider lessons learned through CCPA and early Federal Circuit decisions, offering strategies to overcome the challenges of §112. For more information, or to register, please see Strafford Publications' website.
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Today, we have a public service announcement in hopes you don't fall victim to this ever-growing problem. If you have filed a federal trademark application or own a trademark registration with the U.S. Patent and Trademark Office (USPTO), you are probably going to receive—if you haven't already—fake or misleading invoices.
As a special feature of our blog—special guest postings by experts, clients, and other professionals—please enjoy this blog entry from Jonathan Karchmer, a senior managing consultant...
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McDermott's Reverse Engineered Podcast | Top IP Decisions from the US Supreme Court in 2017
