Summary
requesting that the parties brief the issue of whether the panel correctly determined "that 35 U.S.C. § 145's '[a]ll the expenses of the proceedings' provision authorizes an award of [USPTO's] attorneys' fees?"
Summary of this case from Taylor v. MatalOpinion
2016-1794
08-31-2017
NANTKWEST, INC., Plaintiff–Appellee v. Joseph MATAL, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office, Defendant–Appellant
Alan J. Heinrich, Gary N. Frischling, Lauren Nicole Drake, Morgan Chu, Esq., Morgan Chu, Esq., Los Angeles, CA, Sandra Haberny, Irell & Manella LLP, Newport Beach, CA, for Plaintiff–Appellee. Mark R. Freeman, Attorney, Jaynie Randall Lilley, Department of Justice, Washington, DC, Thomas L. Casagrande, Associate Solicitor, Nathan K. Kelley, Solicitor, Thomas W. Krause, Esq., Deputy Solicitor, Scott Weidenfeller, United States Patent and Trademark Office, Office of the Solicitor, Alexandria, VA, for Defendant–Appellant.
Alan J. Heinrich, Gary N. Frischling, Lauren Nicole Drake, Morgan Chu, Esq., Morgan Chu, Esq., Los Angeles, CA, Sandra Haberny, Irell & Manella LLP, Newport Beach, CA, for Plaintiff–Appellee.
Mark R. Freeman, Attorney, Jaynie Randall Lilley, Department of Justice, Washington, DC, Thomas L. Casagrande, Associate Solicitor, Nathan K. Kelley, Solicitor, Thomas W. Krause, Esq., Deputy Solicitor, Scott Weidenfeller, United States Patent and Trademark Office, Office of the Solicitor, Alexandria, VA, for Defendant–Appellant.
Before Prost, Chief Judge, Newman, Lourie, Dyk, Moore, O'Malley, Reyna, Wallach, Taranto, Hughes, and Stoll, Circuit Judges.
Circuit Judge Chen did not participate.
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ORDER
Per Curiam.
This case was argued before a panel of three judges on February 9, 2017. A sua sponte request for a poll on whether to reconsider this case was made. A poll was conducted and a majority of the judges who are in regular active service voted for sua sponte en banc consideration.
Accordingly,
IT IS ORDERED THAT:
(1) The panel opinion of June 23, 2017 is vacated, and the appeal is reinstated.
(2) This case will be heard en banc sua sponte under 28 U.S.C. § 46 and Federal Rule of Appellate Procedure 35(a). The court en banc shall consist of all circuit judges in regular active service who are not recused or disqualified.
(3) The parties are requested to file new briefs. The briefs should address the following issue:
Did the panel in NantKwest, Inc. v. Matal , 860 F.3d 1352 (Fed. Cir. 2017) correctly determine that 35 U.S.C. § 145's "[a]ll the expenses of the proceedings" provision authorizes an award of the United States Patent and Trademark Office's attorneys' fees?
(4) An original and thirty copies of the new en banc briefs shall be filed, and two copies of each en banc brief shall be served on opposing counsel. Appellant's en banc brief is due 45 days from the date of this order. Appellee's en banc response brief is due within 30 days of service of appellant's en banc brief, and the reply brief within 15 days of service
of the response brief. Briefs shall adhere to the type-volume limitations set forth in Federal Rule of Appellate Procedure 32 and Federal Circuit Rule 32.
(5) Briefing should be strictly limited to the issue set forth above.
(6) In addition, the parties are directed to file with the court thirty paper copies of their original briefs and any appendix within 17 days from the date of this Order.
(7) Briefs of amici curiae will be entertained, and any such amicus briefs may be filed without consent and leave of court but otherwise must comply with Federal Rule of Appellate Procedure 29 and Federal Circuit Rule 29.
(8) This appeal will be heard en banc on the basis of the original briefs, the supplemental briefs ordered herein, and oral argument.
(9) Oral argument will be held at a time and date to be announced later.