September 08, 2017
Authored and Edited by John E. Nappi; Kevin D. Rodkey; Elizabeth D. Ferrill
In NantKwest, Inc. v. Matal, 860 F.3d 1352 (Fed. Cir. 2017), a Federal Circuit panel determined that 35 U.S.C. § 145 permits awarding a pro-rata share of the USPTO’s attorneys’ fees as “expenses” incurred while defending § 145 appeals from the Patent Trial and Appeal Board to a district court.
The Federal Circuit sua sponte requested a poll on whether to reconsider this decision en banc. A majority of the judges voted for reconsideration, and the court vacated the panel decision and reinstated the appeal.
In the en banc order, the court asked the parties to file new briefs addressing whether the panel decision “correctly determine[d] that 35 U.S.C. § 145’s ‘[a]ll the expenses of the proceedings’ provision authorizes an award of [USPTO]’s attorneys’ fees.”
Absent extensions, Appellant USPTO’s en banc brief will be due 45 days from the order. Appellee NantKwest’s response brief is due 30 days after the USPTO’s brief. The USPTO may file a reply brief 15 days after NantKwest’s brief.
The court will permit amicus briefs to be filed. And oral argument will be held at a later-announced date.
Copyright © 2017 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Workshop
Life Sciences Workshop: Updates and Key Trends in Pharmaceutical and Biotechnology IP Law
May 2, 2024
Cambridge
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.