NANTKWEST, INC. V. IANCU

When the Patent Office’s   Patent Trial and Appeal Board (“Board”) affirms an examiner’s rejection of a patent application, § 145 of the   Patent Act permits the disappointed applicant to challenge the Board’s decision in district court. Applicants who invoke § 145 are required by statute to pay “[a]ll the expenses of the proceedings” incurred by the Patent   Office in defending the Board ’s decision, regardless of the outcome. Historically, the agency relied on this provision to recover sums it spent on travel and printing and, more recently, expert witnesses. Now, 170 years after Congress introduced § 145’s predecessor,   the agency argues that § 145 also compels applicants to pay its attorneys’ fees. The CAFC holds that it does not,   for the American Rule prohibits courts from shifting attorneys’ fees from one party to another absent a “specific and explicit” directive from Congress. The phrase “[a]ll the expenses of the proceedings” falls short of this stringent standard. Accordingly, the CAFC affirms the district court’s judgment in this en banc decision.  Chief Judge Prost, dissents, with Judges Dyk, Reyna, and Hughes joining.