SCOTUS Watch: High Court Strikes Down USPTO Attorney’s Fees

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On December 11, 2019, the U.S. Supreme Court affirmed the Court of Appeals for the Federal Circuit’s en banc ruling in Peter v. NantKwest, Inc.,[1] holding that the USPTO was not entitled to attorney’s fees under the 35 U.S.C. §145.  Our discussion of the Fed Circuit’s en banc opinion, affirmed by the Supreme Court, was discussed previously on the blog.

The rationale for the Supreme Court’s decision was the bedrock principle that each party pays for each own’s attorney’s fees, or the so-called “American Rule.”  The decision was unanimous, written by Justice Sotomayor.  The justices determined that because §145 did no specify in a “specific and explicit” manner Congressional intent to override the American Rule, and therefore, the term “expenses” could not be considered to include award of attorney’s fees in cases where the USPTO was the prevailing party.

The NantKwest decision, although expected, is entirely consistent with current jurisprudence regarding award of attorney’s fees, which includes the American Rule.


[1] 589 U.S.___ (2019), aff’g NantKwest, Inc. v. Iancu, 898 F.3d 1177, 1184 (Fed. Cir. 2018) (en banc), reversing NantKwest, Inc. v. Matal, 860 F.3d 1352 (Fed. Cir. 2017), aff’g NantKwest, Inc. v. Lee, 162 F. Supp. 3d 540, 542 (E.D. Va. 2016).