Federal Circuit Orders En Banc Rehearing of Decision Awarding USPTO Attorneys’ Fees in District Court Appeals from USPTO

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.