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Volume XI, Number 338

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All the Expenses of the Proceedings, Just Not Expert Witness Fees

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 presumption against fee-shifting without “explicit and specific” Congressional intent to the contrary, noting the “high bar” of this presumption.  Hyatt II at *6-7.  The Court found no such “explicit and specific” indication in § 145 or its legislative history. The USPTO argued 1) that district courts across the country have included expert witness fees in § 145 cases (Hyatt II at *11-13, 17); and 2) that § 145 has been reenacted with the same language, even after Congress witnessed the widespread district court practice of expert witness fee inclusion (Hyatt II at *11-13).  But the Court found the USPTO’s arguments were not persuasive enough to overcome the “high bar,” absent an “explicit and specific” intent by Congress to allow shifting of expert witness fees.

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 238
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About this Author

Associate

Brad Richards focuses on intellectual property litigation in various forums, including U.S. district courts, the U.S. Patent and Trademark Office (USPTO), and the International Trade Commission (ITC). Brad’s litigation experience includes drafting and working closely with seasoned attorneys on inter partes review (IPR) proceedings. He also served as a volunteer law clerk at the ITC’s Office of Unfair Imports Investigations, assisting with researching patent and trademark issues and drafting motions and responses. Brad has a technical background in mechanical engineering and works with...

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Kara Specht Patent Litigation Attorney Finnegan, Henderson, Farabow, Garrett & Dunner Law Firm Atlanta GA
Associate

Kara Specht focuses on patent litigation before district courts and before the International Trade Commission (ITC). Her practice covers a wide range of electronic and electrical technology areas related to computers, consumer electronics, and computer-implemented business methods.

Kara has experience in all aspects of patent litigation before district courts, the ITC, and the Federal Circuit. Before district court and the ITC, Kara has experience from both a plaintiff and defendant perspective, ranging from pre-filing planning and strategy,...

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Elizabeth Ferrill Patent Attorney Finnegan Law Firm
Partner

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

202 408 4445
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