All The Expenses Of The Proceedings, Just Not Expert Witness Fees

• Published date: 27 August 2021
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Mr Brad Richards, Kara A. Specht and Elizabeth D. Ferrill

In Hyatt v. Hirshfeld, the Federal Circuit found the phrase "[a]ll the expenses of the proceedings" in civil litigations under 35 U.S.C. ' 145 does not include expert witness expenses. ("Hyatt II"). After adverse results at the USPTO, Mr. Hyatt filed a civil action in federal district court under ' 145 arguing his patent applications should have been allowed. Hyatt v. Hirshfeld, 998 F.3d 1347, 1351 (Fed. Cir. 2021) ("Hyatt I"). In response, the USPTO hired an expert witness and incurred expert fees. Mr. Hyatt prevailed on his claim and was awarded attorney's fees as a "prevailing party" under the Equal Access to Justice Act (EAJA); the USPTO appealed. On appeal in Hyatt I, the Federal Circuit reversed. Based on this reversal, the USPTO moved to recover its expert witness fees under the "[a]ll expenses" provision of ' 145. Its motion was denied, and the USPTO appealed again.

In this appeal, the Court determined that the "[a]ll expenses" language of ' 145 did not explicitly and specifically include expert witness fees and denied the USPTO an award of its expert fees. Hyatt II at *4. The Court heavily relied on the recent Supreme Court decision, Peter v. NantKwest, Inc., 140 S. Ct. 365 (2019), which outlined the longstanding American Rule...