Nantkwest, Inc. v. Matal , 860 F.3d 1352 ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
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
______________________
2016-1794
______________________
Appeal from the United States District Court for the
Eastern District of Virginia in No. 1:13-cv-01566-GBL-
TCB, Judge Gerald Bruce Lee.
______________________
Decided: June 23, 2017
______________________
ALAN J. HEINRICH, Irell & Manella LLP, Los Angeles,
CA, argued for plaintiff-appellee. Also represented by
MORGAN CHU, LAUREN NICOLE DRAKE, GARY N.
FRISCHLING; SANDRA HABERNY, Newport Beach, CA.
JAYNIE RANDALL LILLEY, Appellate Staff, Civil Divi-
sion, United States Department of Justice, Washington,
DC, argued for defendant-appellant. Also represented by
2 NANTKWEST, INC. v. MATAL
MARK R. FREEMAN, DANA J. BOENTE, BENJAMIN C. MIZER;
NATHAN K. KELLEY, THOMAS W. KRAUSE, SCOTT C.
WEIDENFELLER, THOMAS L. CASAGRANDE, Office of the
Solicitor, United States Patent and Trademark Office,
Alexandria, VA.
MARK N. MUTTERPERL, Zeisler PLLC, New York, NY,
for amicus curiae International Trademark Association.
______________________
Before PROST, Chief Judge, DYK and STOLL, Circuit
Judges.
Opinion for the court filed by Chief Judge PROST.
Dissenting opinion filed by Circuit Judge STOLL.
PROST, Chief Judge.
Nantkwest, Inc. appeals from a decision of the United
States District Court for the Eastern District of Virginia
granting-in-part and denying-in-part the United States
Patent and Trademark Office (“USPTO”) Director’s mo-
tion for fees. In its order, the district court granted the
Director’s requested witness’ fees but denied the request-
ed attorneys’ fees. The Director appeals the court’s denial
of attorneys’ fees. We reverse.
I
In 2001, Dr. Hans Klingemann filed a patent applica-
tion directed to a method of treating cancer by adminis-
tering natural killer cells. After several years of
examination, the USPTO rejected Dr. Klingemann’s
application on obviousness grounds. The Patent and Trial
Appeal Board (“PTAB”) affirmed the examiner’s rejection
and Nantkwest, as assignee of the application, appealed
to the district court under 35 U.S.C. § 145. We have
provided a summary of the technology and the proceed-
ings at the USPTO and district court in Nantkwest’s
NANTKWEST, INC. v. MATAL 3
companion appeal. Nantkwest, Inc. v. Michelle K. Lee, No.
2015-2095, slip op. at 2–5 (Fed. Cir. May 3, 2017).
Section 145 provides that an applicant dissatisfied
with the PTAB’s decision may appeal directly to the
United States District Court for the Eastern District of
Virginia in lieu of immediate appeal to this court. 35
U.S.C. § 145. The statute further provides that the appli-
cant must pay “[a]ll of the expenses of the proceeding,”
id., “regardless of the outcome,” Hyatt v. Kappos, 625 F.3d
1320, 1337 (Fed. Cir. 2010) (en banc), aff’d and remanded,
132 S. Ct. 1690 (2012). After prevailing at the district
court on the merits, the Director filed a motion to recover
$111,696.39 of the USPTO’s fees under the § 145 expense
provision. See J.A. 84 (seeking $78,592.50 in attorneys’
fees (including paralegal fees) and $33,103.89 in expert
fees). 1
Although the district court granted the USPTO’s ex-
pert fees, it denied its requested attorneys’ fees, citing the
“American Rule.” J.A. 10–11. Under this Rule, litigants
pay their own attorneys’ fees, win or lose, unless a statute
or contract provides otherwise. Hardt v. Reliance Stand-
ard Life Ins. Co., 560 U.S. 242, 252–53 (2010). Applying
this Rule, the court found that in order to recover these
fees, “[d]efendants must be able to articulate a statutory
provision that clearly and explicitly allows them to recov-
ery attorneys’ fees from Plaintiff.” J.A. 3–4. The district
court concluded that the “[a]ll expenses” provision of the
statute was neither sufficiently specific nor explicit
enough for the authorization of attorneys’ fees under this
1 To arrive at this value, the USPTO calculated the
pro-rata share of the salaries of the two attorneys and one
paralegal who worked on the appeal. J.A. 83–84.
Nantkwest did not challenge the number of hours ex-
pended or the pro-rata share of salaries the USPTO
proffered at the district court. J.A. 138–40.
4 NANTKWEST, INC. v. MATAL
Rule. Id. On appeal, the Director argues that the district
court erred by excluding the USPTO’s attorneys’ fees
under § 145. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(C).
II
The principal issue on appeal is whether § 145’s “[a]ll
expenses of the proceedings” provision authorizes an
award of the USPTO’s attorneys’ fees under this section. 2
We review a district court’s interpretation of a statute
de novo. Weatherby v. Dep’t of the Interior, 466 F.3d 1379,
1383 (Fed. Cir. 2006). “In construing a statute or regula-
tion, we begin by inspecting its language for plain mean-
ing.” Meeks v. West, 216 F.3d 1363, 1366 (Fed. Cir. 2000)
(citation omitted). In the absence of a definition of a term,
courts give the words their “ordinary, contemporary,
common meaning.” Williams v. Taylor, 529 U.S. 420, 421
(2000).
Under 35 U.S.C. § 145,
[a]n applicant dissatisfied with the decision of the
[PTAB] . . . may, unless appeal has been taken to
the United States Court of Appeals for the Federal
Circuit, have remedy by civil action against the
Director in the United States District Court for
the Eastern District of Virginia . . . . All the ex-
penses of the proceedings shall be paid by the ap-
plicant.
2 Throughout its briefing, the Director routinely re-
fers to these attorneys’ fees as “personnel expenses.” See,
e.g., Appellant’s Br. 3. Because there is no genuine dis-
pute that the terms “personnel expenses” and “attorneys’
fees” are interchangeable within the context of this ap-
peal, we refer to them as “attorneys’ fees” throughout this
opinion.
NANTKWEST, INC. v. MATAL 5
Id. (emphasis added).
At the outset, we observe that we have previously
construed other portions of § 145. See, e.g., Hyatt, 625
F.3d at 1322. Although Hyatt resolved a different issue
than the one presented here, we based our holding, in
part, on our recognition of the breath of the “all expenses”
provision and the substantial financial burden that appli-
cants must bear for initiating § 145 appeals. Id. at 1337.
“To deter applicants from exactly the type of procedural
gaming that concerns the Director, Congress imposed on
the applicant the heavy economic burden of paying ‘[a]ll
the expenses of the proceedings’ regardless of the out-
come.” Id. (alteration in original) (citing 35 U.S.C. § 145).
Put another way, Congress intended that all applicants
unconditionally assume this financial burden when seek-
ing review directly in district court—whether they win, or
lose. We thus concluded that Congress drafted this provi-
sion without requiring any degree of success on the merits
(much less a prevailing party) as a necessary precedent
for shifting this “heavy economic burden” onto the appli-
cant. Id.A
Before determining whether § 145 authorizes an
award of the USPTO’s attorneys’ fees, we first address the
government’s argument that the American Rule does not
apply to these proceedings. Like the Fourth Circuit, we
have substantial doubts that this provision even impli-
cates this Rule. See Shammas v. Focarino, 784 F.3d 219,
223 (4th Cir. 2015), cert. denied sub nom. Shammas v.
Hirshfeld, 136 S. Ct. 1376 (2016) (concluding that a
nearly identical statutory provision governing Trademark
appeals (15 U.S.C. § 1071(b)(3)) does not “operate[]
against the backdrop of the American Rule” because that
provision made no reference to prevailing parties).
In response to the government’s arguments,
Nantkwest relies on Baker Botts L.L.P. v. ASARCO LLC
6 NANTKWEST, INC. v. MATAL
to support its position that the American Rule applies
whenever a litigant seeks to recover attorneys’ fees. 135 S.
Ct. 2158, 2164 (2015). 3 Baker Botts, however, does not
stand for a general proposition that courts must apply the
American Rule’s specific and explicit requirements to all
fee statutes irrespective of a prevailing party as
Nantkwest contends. Rather, it demonstrates that a
statute must meet these requirements before a party may
recover its fees when attempting to extend its reach to
ancillary litigation Congress never intended. See id. at
2165. Nevertheless, despite our doubts as to the applica-
bility of the American Rule here, we analyze § 145’s “[a]ll
expenses of the proceeding” provision assuming the Rule
applies, as we conclude that even under this Rule, the
expenses at issue here include the USPTO’s attorneys’
fees.
B
Under the American Rule, “the prevailing litigant is
ordinarily not entitled to collect a reasonable attorneys’
fee from the loser.” Alyeska Pipeline Serv. Co. v. Wilder-
ness Soc’y, 421 U.S. 240, 247 (1975). Courts uniformly
recognize an exception to this general proposition, howev-
er: when the statute itself “specific[ally]” and “explicit[ly]”
authorizes an award of fees, the prevailing party may be
entitled to collect its fees. Id. at 260. In agreement with
3 In that case, although the statute made no refer-
ence to prevailing parties, Congress drafted the fees
provision to apply exclusively to non-adversarial bank-
ruptcy proceedings. Id. at 2163–65. Nevertheless, Baker
Botts used this provision as a basis to recover its fees for
work it performed in a related, but adversarial, fee-
defense litigation. Id. at 2166. By applying this statute to
a proceeding Congress never contemplated in the first
instance, Baker Botts effectively sought its fees in the
absence of a fee statute altogether.
NANTKWEST, INC. v. MATAL 7
two other circuits, we conclude that “expenses” here
includes attorneys’ fees. See Shammas, 784 F.3d at 222–
23 (holding that the term “expenses” covers the USPTO’s
attorneys’ fees); United States v. 110-118 Riverside Ten-
ants Corp., 886 F.2d 514, 520 (2d Cir. 1989) (observing
that attorneys’ fees are “expenses of the proceedings”
under § 6342 of the Internal Revenue Code). 4
1
The definitions and explanations that standard legal
dictionaries and treatises provide for the term “expense”
support this conclusion. Wright & Miller on Federal
Practice and Procedure, for example, defines this term as
“includ[ing] all the expenditures actually made by a
litigant in connection with the action,” including “attor-
ney’s fees.” 10 Charles Alan Wright et al., Federal Prac-
tice and Procedure § 2666 (3d ed. 1998). Similarly, Black’s
Law Dictionary defines “expenses” as “expenditure[s] of
money, time, labor, or resources to accomplish a result.”
Black’s Law Dictionary 698 (10th ed. 2014) (“Black’s”)
(emphasis added).
The dissent summarily dismisses these definitions,
declaring that “they are not contemporaneous with Con-
gress’s introduction of the word ‘expenses’ into the Patent
Act in 1839.” Dissenting Op. 14. Relying on Nineteenth
Century dictionaries instead, the dissent concludes that
“the words ‘expense,’ ‘cost,’ and ‘damage’ were considered
4 The court in Riverside relied on the statutory lan-
guage of this section’s “expenses of the [foreclosure]
proceedings” provision when awarding the Apartment
Corporation its attorneys’ fees. See id. (“The attorneys’
fees incurred . . . for selling the shares . . . are in the same
category as expenses of foreclosure and sale proceed-
ings . . . .”).
8 NANTKWEST, INC. v. MATAL
synonymous around the time of the 1839 Amendments.” 5
Id. at 6. Not so. The Patent Act of 1836 specifically distin-
guished among these three terms. Compare Act of July 4,
1836, ch. 357, 5 Stat. 117, § 9 (“[M]oneys received into the
Treasury under this act shall constitute a fund for the
payment of salaries of the officers and clerks herein
provided for, and all other expenses of the Patent Office.”
(emphasis added)), with id. § 14 (“[W]henever, in any
action for damages for making, using, or selling the thing
whereof the exclusive right is secured by any patent . . . ,
a verdict shall be rendered . . . , it shall be in the power of
the court to render judgment for any sum above the
amount found by such verdict as the actual damages
sustained . . . , not exceeding three times the amount
thereof, according to the circumstances of the case, with
costs.” (emphases added)). The historical statute that the
dissent relies on simply does not support its conclusion. If
anything, this statute lends support to the majority’s
position by expressly characterizing the salaries of
USPTO officers and clerks and as “expenses.” Id. § 9. The
Supreme Court has observed the distinction between
“expenses” and “costs” recently, providing an interpreta-
tion that comports with the modern definitions that the
dissent disregards.
In Taniguchi v. Kan Pacific Saipan, Ltd., the Court
recognized the distinction between costs and fees; deter-
mining that the term “fees” includes “expenses borne by
5 The dissent’s position here not only lacks support
in the briefing, but also directly undermines the party’s
position it purports to advance. Specifically, in arguing
that § 145 does not include attorneys’ fees, Nantkwest
cited the same dictionary and definitions that the dissent
now concludes bear no relevance to the interpretation of
this statute. See Appellee’s Br. 27–28 (relying on the 2014
Black’s Law Dictionary definition for the term, “expense”).
NANTKWEST, INC. v. MATAL 9
litigants for attorneys.” 132 S. Ct. 1997, 2006 (2012).
There, the Court distinguished “expenses” from the more
limited term “costs,” which represent only a fraction of
expenses, relying specifically on the 1998 Wright & Miller
treatise cited above.
Although costs has an everyday meaning synony-
mous with expenses, the concept of taxable costs
. . . is more limited . . . . Taxable costs are limited
to relatively minor, incidental expenses[;]
. . . such items as clerk fees, court reporter fees,
expenses for printing and witnesses, expenses for
exemplification and copies, docket fees, and com-
pensation of court-appointed experts. . . . Taxable
costs are a fraction of the nontaxable expenses
borne by litigants for attorneys, experts, consult-
ants, and investigators.
Id. at 2006 (emphasis added) (citations and quotation
marks omitted). The Court provided this analysis in direct
support of its holding that resolved the breadth of taxable
costs under 28 U.S.C. § 1920. Id. at 2000, 2006. Notably,
neither the dissent nor Nantkwest provide contrary
authority where the Supreme Court has held that the
term “expenses” categorically excludes attorneys’ fees.
Nantkwest argues here that the term “expenses” lacks
the requisite specificity to overcome the presumption of
the American Rule that each party will pay its own attor-
neys’ fees. Although Nantkwest does not deny that this
term supplies sufficient breath to cover the USPTO’s
attorneys’ fees, it contends that the American Rule de-
mands more. In particular, it argues “[o]n its own, the
term ‘expenses’ is ambiguous.” Appellee’s Br. 32. As
support, Nantkwest relies heavily on the fact that other
federal statutes under various titles illustrate that Con-
gress has employed the term “expenses” to authorize
attorneys’ fees either in addition to expenses (e.g., “ex-
penses and attorneys’ fees), or as a component of them
10 NANTKWEST, INC. v. MATAL
(e.g., “expenses including attorneys’ fees). 6 In other
words, the term “expenses,” Nantkwest contends, can
either include or exclude attorneys’ fees depending on the
statute and, thus, the term is “far from clear.” Appellee’s
Br. 33. Reviewing the list of statutes that Nantkwest
provides, however, we conclude that Congress made clear
that it meant to award attorneys’ fees under the broader
term “expenses” within the context of these particular
proceedings.
As noted above, the ordinary meaning as defined in
dictionaries and the Supreme Court’s interpretation of
this term lend significant weight to the conclusion that
when Congress used the phrase “all expenses,” it meant to
include attorneys’ fees. The fact that the dissent and
Nantkwest compiled a list of statutory provisions for
which Congress on occasion employed the term “expenses”
to authorize attorneys’ fees in addition to expenses in
6 Nantkwest cites approximately twenty such stat-
utory provisions covering a wide range of areas of law
including: bankruptcy, administrative procedure, judicial
proceedings, and financial management. Appellee’s
Br. 32–34. Some of these statutes list attorneys’ fees in
addition to expenses while others list attorneys’ fees as
part of expenses. Roughly fifty percent of those statutes
cited do not support the Appellee’s view because they
treat attorneys’ fees as part of expenses. Id. The fact that
the remaining provisions support Nantkwest’s position is
neither reliable nor significant within the context of § 145
proceedings. Similarly, the dissent provides its own list of
federal statutes, more than half of which actually support
the majority’s view as well. Dissenting Op. 7–9. Notably,
neither the dissent nor Nantkwest provide any indication
regarding which—if any—of these cited provisions Con-
gress enacted prior to the Supreme Court’s creation of the
“explicit” and “specific” criteria under the American Rule.
NANTKWEST, INC. v. MATAL 11
other contexts cannot be sufficient to dislodge the reason-
able and ordinary meaning of this term. This is especially
true in the context of this particular statutory provision
where Congress explicitly authorized compensation for
“[a]ll expenses of the proceedings.” 35 U.S.C. § 145. At
best, these examples demonstrate that Congress will not
confine itself to a single word or phrase when referencing
attorneys’ fees. Yet under Nantkwest’s narrow view, a
statute could not meet the American Rule’s heightened
demands without using the precise words “attorneys’ fees”
or some equivalent. For example, when asked during oral
argument to propose other language that Congress could
have employed to satisfy the American Rule, Nantkwest
cited “reasonable compensation of attorneys” as the only
alternative. 7 The dissent shares this view, stating and
restating that the statute cannot award attorneys’ fees
because Congress did not employ these exact words. See,
e.g., Dissenting Op. 1–2 (“Section 145 neither mentions
‘attorneys’ fees’ nor reflects congressional intent to au-
thorize them.”); id. at 3 (“The phrase ‘attorneys’ fees’ is
not mentioned [in § 145] . . . .”).
The Supreme Court, on the other hand, has provided
other suitable alternatives without using any of these
words. In Baker Botts for instance, the Court recognized
the term “litigation costs” as one such example. 135 S. Ct.
at 2164. Clearly, “litigation costs” does not include the
phrase “attorneys’ fees.” Yet the dissent offers little to
justify its conflict with the Supreme Court’s conclusion
that the use of the term “litigation costs” overcomes the
American Rule. While a reference to a “prevailing party”
7 Oral Argument 12:42–13:17, http://oralarguments.
cafc.uscourts.gov/mp3/2016-1794.mp3. We perceive no
practical difference between “attorneys’ fees” and the
“reasonable compensation of attorneys” example
Nantkwest provided.
12 NANTKWEST, INC. v. MATAL
may “usually” appear in fee-shifting statutes, id., the
Supreme Court has never suggested that such a reference
is a requirement for fee shifting, contrary to what the
dissent argues. See Dissenting Op. 9–10 (“Nothing in
[§ 145] confines the award of expenses to a prevailing
party.”).
The law neither confines Congress to the use of any
particular term or phrase to satisfy the American Rule’s
specificity requirement nor requires that Congress employ
the words, “compensation,” “fee,” or “attorney” to meet it.
The term “expenses,” like “litigation costs,” is another
example where Congress authorized fee awards without
including the words “fees” or “compensation” in the stat-
ute. Nantkwest and the dissent simply demand too much.
Our conclusion that this term authorizes the USPTO’s
fee award is particularly important here in the context of
§ 145’s all expenses provision. This unique provision
requires that applicants uniformly name the Director as
defendant to their suits. In representing the USPTO’s
interests, the Director relies on personnel from the Office
of the Solicitor. See 37 C.F.R. § 11.40(b). These attor-
neys—the Solicitor, his deputy, and associates—and
supporting paralegals receive fixed salaries as compensa-
tion for their government work. As salaried employees,
they do not bill individual hours for their work, nor do
they collect fees from those whom they represent. In this
context, we characterize the overhead associated with
their work more precisely as an “expense” to the govern-
ment than a “fee.” Compare Black’s 698 (defining “ex-
pense” as “expenditure[s] of money, time, labor, or
resources to accomplish a result”), with Black’s 154 (defin-
ing “attorney’s fee” as “[t]he charge to a client for services
performed for the client, such as an hourly fee, a flat fee,
or a contingent fee”). Under the dissent and Nantkwest’s
view, Congress must use the word “fee” instead for the
USPTO to receive remuneration. We do not view the
American Rule so narrowly. To conclude otherwise, our
NANTKWEST, INC. v. MATAL 13
interpretation would force Congress into the untenable
position of selecting a word that must be applied in an
unconventional and imprecise manner in the context of
these unique proceedings. 8
Given the Supreme Court’s construction of “expenses,”
the guidance dictionary and treatises provide on this
term, and the context in which Congress applied it, we
conclude that the term “expenses” includes the USPTO’s
attorneys’ fees under § 145.
2
Nantkwest makes an additional argument regarding
whether the USPTO’s attorneys’ fees are “expenses of the
proceedings.” 35 U.S.C. § 145. It contends that this provi-
sion does not provide a basis for attorneys’ fees because
8 Congress’s contrasting use of the term “attorneys’
fees” under 35 U.S.C. § 285 provides further evidence to
this point. There, Congress chose not to award all expens-
es to the prevailing party, but only attorneys’ fees. The
dissent appears to ignore this distinction, instead requir-
ing that Congress recite the phrase “attorneys’ fees” to
cover at least a subset of these “expenses” simply because
other portions of Title 35 employ that phrase. Dissenting
Op. 4–5. Put another way, under the dissent’s view,
Congress must rigidly employ a phrase such as “attor-
neys’ fees and other expenses” in place of the broader
term “expenses,” which already includes these fees. Rely-
ing on a flawed premise, the dissent simply dismisses—
even as a theory—that Congress could have intended a
broader compensation scheme under § 145 than § 285.
Congress indisputably has the authority to employ a
broad word over other narrower alternatives if it so
chooses. And it may do so irrespective of how many times
it amended other portions of Title 35 or employed narrow-
er alternatives for other sections of the Code.
14 NANTKWEST, INC. v. MATAL
the USPTO would have had to pay the portions of these
full-time employees’ salaries regardless of Nantkwest’s
suit.
We disagree. First, we have accorded similar relief in
the past in the context of other salaried attorneys. In
Raney v. Federal Bureau of Prisons, for example, we
awarded salaried union attorneys an apportionment of
their salaries because the litigation required the lawyers
to divert their time away from other pending matters. 222
F.3d 927, 935 (Fed. Cir. 2000). Second, our sister circuits
have recognized the costs associated with these diversions
and awarded fees to salaried employees as well. See, e.g.,
Shammas, 784 F.3d at 223 (recognizing that the USPTO
“incurred expenses when its attorneys were required to
defend the Director in the district court proceedings,
because their engagement diverted the PTO’s resources
from other endeavors”); Wisconsin v. Hotline Indus., Inc.,
236 F.3d 363, 365–66 (7th Cir. 2000) (holding that sala-
ried government employees could recover their fees as
they relate to the government’s opposition to an improper
removal of a state court case).
Section 145 proceedings similarly impact the
USPTO’s resources. These costs are particularly relevant
here, where the USPTO attributes over seventy percent of
its total expenses ($78,592.50 of the $111,696.39) to
attorneys’ fees. Nantkwest filed its appeal in district court
and enjoyed the pro-applicant benefits of that forum. See
Hyatt, 625 F.3d at 1336–37 (obtaining de novo review
with the ability to introduce new evidence). Under
Nantkwest’s view, the government’s recovery would be
limited only to certain ad hoc expenses, e.g., printing,
travel, expert witness costs, Appellee’s Br. 35, while
ignoring the vast majority of the expenses the USPTO
incurred as the proximate cause of Nantkwest’s appeal.
We cannot subscribe to this view.
NANTKWEST, INC. v. MATAL 15
It cannot be credibly disputed that the USPTO dedi-
cated time and resources of its attorneys to the defense of
this litigation when it could have otherwise applied those
resources to other matters. Without acknowledging these
concerns, Nantkwest essentially endorses a rule that
would theoretically permit an award if the USPTO re-
tained outside counsel to defend its interests but not if it
elected to proceed on its own. Logically, the meaning of “of
the proceedings” cannot turn on the type of attorneys
retained to defend the government’s interests. As we
previously observed, we must equally regard salaried
attorneys’ time and “tak[e] into account the opportunity
costs involved in devoting attorney time to one case when
it could be devoted to others.” Raney, 222 F.3d at 934–35. 9
We thus conclude that § 145 entitles the USPTO to com-
pensation for the diversion of its resources in the defense
of § 145 appeals.
Accordingly, we hold that “[a]ll expenses of the pro-
ceedings” under § 145 includes the pro-rata share of the
attorneys’ fees the USPTO incurred to defend applicant’s
appeal. To conclude otherwise would conflict with Hyatt,
where we recognized the “heavy economic burden” that
§ 145 shifts onto applicants for electing this favorable
appellate path. Hyatt, 625 F.3d at 1337.
We have considered Nantkwest’s remaining argu-
ments in this appeal but find them unpersuasive as well.
9 Without shouldering these expenses itself,
Nantkwest seeks a ruling that essentially requires other
applicants to fund its own appeal. See Leahy-Smith
America Invents Act, Pub. L. No. 112-29, § 10, 125 Stat.
284, 316 (2011) (recognizing the USPTO as exclusively an
applicant-funded agency). Although this may be appropri-
ate in the context of other agency proceedings, it does not
accord with our requirement that the applicant itself must
bear the burden of these appeals. Hyatt, 625 F.3d at 1337.
16 NANTKWEST, INC. v. MATAL
CONCLUSION
For the foregoing reasons, we reverse the district
court and remand the case for it to enter an additional
award of $78,592.50 in favor of the Director.
REVERSED AND REMANDED
United States Court of Appeals
for the Federal Circuit
______________________
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
______________________
2016-1794
______________________
Appeal from the United States District Court for the
Eastern District of Virginia in No. 1:13-cv-01566-GBL-
TCB, Judge Gerald Bruce Lee.
______________________
STOLL, Circuit Judge, dissenting.
Under the American Rule, “each party in a lawsuit
ordinarily shall bear its own attorney’s fees unless there
is express statutory authorization to the contrary.”
Hensley v. Eckerhart, 461 U.S. 424, 429 (1983). It erects a
strong presumption against fee-shifting, requiring an
explicit provision permitting a departure from the Ameri-
can Rule or other evidence of congressional intent to make
such an award available. Section 145 neither mentions
“attorneys’ fees” nor reflects a congressional intent to
2 NANTKWEST, INC. v. MATAL
authorize them. Because I believe § 145 fails to provide
the necessary congressional directive to overcome the
American Rule’s bar against shifting attorneys’ fees, I
respectfully dissent.
I.
The majority expresses “substantial doubts” regarding
whether the American Rule applies to § 145. Maj. Op. 5.
But Supreme Court precedent makes clear that the Amer-
ican Rule marks the starting point for any analysis that
shifts fees from one litigant to another. Often referred to
as a “bedrock principle,” the American Rule requires that
“[e]ach litigant pay[] his own attorney’s fees, win or lose,
unless a statute or contract provides otherwise.” Baker
Botts L.L.P. v. ASARCO LLC, 135 S. Ct. 2158, 2164
(2015) (quoting Hardt v. Reliance Standard Life Ins. Co.,
560 U.S. 242, 253 (2010)). This presumption against fee
shifting in American litigation dates back more than 200
years to Arcambel v. Wiseman, 3 U.S. (3 Dall.) 306 (1796).
“[T]he law of the United States, but for a few well-
recognized exceptions not present [here], has always been
that absent explicit congressional authorization, attor-
neys’ fees are not a recoverable cost of litigation.” Runyon
v. McCrary, 427 U.S. 160, 185 (1976) (footnote omitted).
While Congress remains free to draft statutes provid-
ing for the award of attorneys’ fees, any such deviation
from the American Rule must be “specific and explicit,”
for Congress has not “extended any roving authority to
the Judiciary to allow counsel fees as costs or otherwise
whenever the courts might deem them warranted.”
Alyeska Pipeline Serv. Co. v. Wilderness Soc’y, 421 U.S.
240, 260–62 (1975) (citing statutory provisions containing
the phrase “attorney’s fees” as examples of “specific and
explicit provisions for the allowance of attorneys’ fees”).
Several cases have recognized that a statute’s failure to
reference “attorneys’ fees” is not always dispositive, but
the statute must “otherwise evince[] an intent to provide
NANTKWEST, INC. v. MATAL 3
for such fees.” See, e.g., Key Tronic Corp. v. United States,
511 U.S. 809, 815 (1994). This necessitates resort to the
ordinary meaning of the phrase that is alleged to shift
attorneys’ fees and the legislative history of the statutory
provision to see if such an intent exists. Id. at 817–19;
Summit Valley Indus. Inc. v. Local 112, United Bhd. of
Carpenters & Joiners of Am., 456 U.S. 717, 722–23 (1982).
II.
It is against this backdrop that we analyze whether
Congress expressed an intent “to set aside this longstand-
ing American rule of law,” Runyon, 427 U.S. at 185–86,
and award attorneys’ fees under § 145. In order to shift
the PTO’s attorneys’ fees to NantKwest in this case, we
must find in the text of § 145 a “specific and explicit”
authorization from Congress. See Alyeska Pipeline,
421 U.S. at 260. Without express authority, the ordinary
meaning of “expenses” or § 145’s legislative history has to
provide it. A searching review exposes no such authoriza-
tion.
A.
The language of § 145 does not explicitly grant us au-
thority to shift attorneys’ fees. Section 145 requires a
patent applicant electing to challenge the PTO’s unfavor-
able decision in district court to pay “[a]ll the expenses of
the proceedings.” 35 U.S.C. § 145 (emphasis added). The
phrase “attorneys’ fees” is not mentioned, and Congress’s
use of “expenses” is not the type of “specific and explicit”
language that permits the award of attorneys’ fees. See
Summit Valley, 456 U.S. at 722 (noting that statute does
not expressly mention attorneys’ fees); Key Tronic,
511 U.S. at 814–15 (same); F. D. Rich Co. v. U.S. for the
Use of Indus. Lumber Co., 417 U.S. 116, 126 (1974)
(same).
In this case, the omission of “attorneys’ fees” from
§ 145 is particularly telling. When Congress wanted to
4 NANTKWEST, INC. v. MATAL
make attorneys’ fees available in a patent litigation, it
knew how to do so. Section 285 of the America Invents
Act, for example, provides: “The court in exceptional cases
may award reasonable attorney fees to the prevailing
party.” 35 U.S.C. § 285 (emphasis added). Several other
sections of the Patent Act cross-reference § 285, and each
of those sections recognizes the availability of “attorney
fees” under § 285. See, e.g., id. § 271(e)(4); § 273(f).
Similarly, Section 297 of the AIA permits a customer who
has been defrauded by an invention promoter to recover
“reasonable costs and attorneys’ fees,” in addition to other
damages incurred by the customer. Id. § 297(b)(1) (em-
phasis added).
It is a fundamental principle of statutory interpreta-
tion that, “[w]here Congress includes particular language
in one section of a statute but omits it in another section
of the same Act, it is generally presumed that Congress
acts intentionally and purposely in the disparate inclu-
sion or exclusion.” Russello v. United States, 464 U.S. 16,
23 (1983) (quoting United States v. Wong Kim Bo,
472 F.2d 720, 722 (5th Cir. 1972)). Congress decided to
exclude “attorney fees” from § 145 but not § 285—the
exact type of disparate exclusion we ordinarily presume to
be intentional. 1 The omission of attorneys’ fees from
1 Congress has expressly awarded attorneys’ fees in
many other statutory contexts. See, e.g., 7 U.S.C. § 2565(“The court in exceptional cases may award reasonable
attorney fees to the prevailing party.”); 10 U.S.C.
§ 1089(f)(2) (recognizing that statute provides “the au-
thority to provide for reasonable attorney’s fees”);
15 U.S.C. § 1117(a) (permitting award of “reasonable
attorney fees to the prevailing party” for certain trade-
mark violations); 22 U.S.C. § 277d-21 (permitting Com-
missioner to “allow reasonable attorneys’ fees”); 42 U.S.C.
NANTKWEST, INC. v. MATAL 5
§ 145 “strongly suggest[s] a deliberate decision not to
authorize such awards.” Key Tronic, 511 U.S. at 818–19.
It reveals Congress’s intent “to pick and choose among its
statutes and to allow attorneys’ fees under some, but not
others.” Alyeska Pipeline, 421 U.S. at 263.
Congress’s knowledge of the American Rule lends
even more force to this argument. At least as early as
1973, Congress formed subcommittees to study attorneys’
fees and other issues affecting legal services. See F. D.
Rich Co., 417 U.S. at 131 & n.20. And when warranted,
Congress has drafted statutes to overcome the American
Rule. See Hensley, 461 U.S. at 429 (stating that Congress
enacted Civil Rights Attorney’s Fees Awards Act of 1976
in response to American Rule to provide explicit authori-
zation for shifting attorneys’ fees). As it did with the Civil
Rights Attorney’s Fees Awards Act of 1976, Congress
could have revised § 145 to expressly provide for the
award of attorneys’ fees. Congress, however, did not. We
should defer to Congress’s decision. See Gross v. FBL Fin.
Servs., Inc., 557 U.S. 167, 174 (2009) (“When Congress
amends one statutory provision but not another, it is
presumed to have acted intentionally.”).
B.
Because § 145 lacks specific and explicit statutory au-
thority to shift attorneys’ fees, we must be able to glean a
congressional intent to do so from the ordinary meaning of
“expenses” or the legislative history of § 145. The majori-
§ 2000e-16c(e) (stating “attorney’s fees may be allowed by
the court”); 46 U.S.C. § 41305(e) (“[T]he prevailing party
may be awarded reasonable attorney fees.”).
6 NANTKWEST, INC. v. MATAL
ty concludes that the ordinary meaning of “expenses”
necessarily includes attorneys’ fees. 2 I disagree.
It is a fundamental canon of statutory construction
that, “‘[u]nless otherwise defined, words will be interpret-
ed as taking their ordinary, contemporary, common
meaning’ at the time Congress enacted the statute.”
Amoco Prod. Co. v. S. Ute Indian Tribe, 526 U.S. 865,
873–74 (1999) (quoting Perrin v. United States, 444 U.S.
37, 42 (1979)). As the Director points out in her brief,
Congress amended the Patent Act in 1839 to require that
“the whole of the expenses of the proceeding shall be paid
by the applicant, whether the final decision shall be in his
favor or otherwise.” Act of Mar. 3, 1839, ch. 88, § 10,
5 Stat. 353, 354; Appellant Br. 21. In the 1830s, the
definition of “expense” included “cost,” and the definition
of “cost” included “expense.” J.E. Worcester, A Pronounc-
ing and Explanatory Dictionary of the English Language
with Pronouncing Vocabularies of Classical and Scripture
Proper Names 75, 117 (1830); see also Noah Webster et
al., An American Dictionary of the English Language 197,
319 (Joseph Emerson ed., 1830) (listing definition for
“expense” as “cost” and vice versa). Moreover, the words
“expense,” “cost,” and “damage” were considered synony-
mous around the time of the 1839 Amendments. Peter
Mark Roget, Thesaurus of English Words and Phrases 227
(Barnas Sears ed., 1856).
These definitions suggest that, at the time Congress
introduced the word “expenses” into the Patent Act, its
ordinary meaning did not include attorneys’ fees. The
Supreme Court has twice held that the word “damages”—
a synonym for “expenses” at the time of enactment—is
insufficient to override the American Rule. See Summit
2 The majority does not rely on the legislative histo-
ry to support its position.
NANTKWEST, INC. v. MATAL 7
Valley, 456 U.S. at 722–23 (“Ordinarily a statutory right
to ‘damages’ does not include an implicit authorization to
award attorney’s fees. Indeed, the American Rule pre-
sumes that the word ‘damages’ means damages exclusive
of fees.” (emphasis added)); Arcambel, 3 U.S. (3 Dall.) at
306. And even the majority agrees that the word “costs”
cannot displace the American Rule. See Maj. Op. 8–9.
There can be no doubt that the ordinary meaning of
“expenses” at the time of its inclusion in the Patent Act
falls short of overcoming the American Rule. That the
PTO did not rely on this provision to seek attorneys’ fees
for over 170 years supports the understanding that it is
far from clear whether “[a]ll the expenses of the proceed-
ings” includes attorneys’ fees.
Congress’s frequent use of “expenses” and “attorneys’
fees” in other statutory provisions further reinforces that
“[a]ll the expenses of the proceedings” does not necessarily
include attorneys’ fees. The U.S. Code is replete with
examples of Congress awarding “expenses” and then
separately clarifying that attorneys’ fees are also availa-
ble. See, e.g., 11 U.S.C. § 363(n) (authorizing trustee to
recover “any costs, attorneys’ fees, or expenses incurred”
in certain situations); 12 U.S.C. § 1464(d)(1)(B)(vii)
(“[C]ourt . . . may allow to any such party reasonable
expenses and attorneys’ fees.”); 12 U.S.C. § 1786(p) (“Any
court having jurisdiction of any proceedings instituted
under this section . . . may allow to any such party such
reasonable expenses and attorneys’ fees as it deems just
and proper . . . .”); 12 U.S.C. § 5005(b)(2)(B) (providing
that, in absence of breach of warranty, amount of indem-
nity shall be sum of “interest and expenses (including
costs and reasonable attorney’s fees and other expenses of
representation)”); 25 U.S.C. § 1401(a) (discussing “pay-
ment of attorney fees and litigation expenses”); 26 U.S.C.
§ 6673(a)(2)(A) (allowing recovery of “excess costs, ex-
penses, and attorneys’ fees” against attorney who vexa-
tiously multiplied proceedings); 15 U.S.C. § 77z-1(a)(6)
8 NANTKWEST, INC. v. MATAL
(discussing “[t]otal attorneys’ fees and expenses” that can
be awarded by court); 2 U.S.C. § 396 (“The committee may
allow any party reimbursement from the applicable
accounts of the House of Representatives of his reasonable
expenses of the contested election case, including reason-
able attorneys fees . . . .”); 10 U.S.C. § 2409(c)(1)(C) (per-
mitting agency head to require that contractor pay “an
amount equal to the aggregate amount of all costs and
expenses (including attorneys’ fees and expert witnesses’
fees)” in connection with complaint regarding a reprisal);
15 U.S.C. § 2310(d)(2) (permitting recovery of sum “equal
to the aggregate amount of cost and expenses (including
attorneys’ fees based on actual time expended)”);
28 U.S.C. § 1447(c) (“An order remanding the case may
require payment of just costs and any actual expenses,
including attorney fees, incurred as a result of the remov-
al.”); 29 U.S.C. § 1370(e)(1) (“[T]he court in its discretion
may award all or a portion of the costs and expenses
incurred in connection with such action, including rea-
sonable attorney’s fees . . . .”); 30 U.S.C. § 938(c) (allowing
successful miner to recover “a sum equal to the aggregate
amount of all costs and expenses (including the attorney’s
fees)”); 31 U.S.C. § 3730(d)(1) (“Any such person shall also
receive an amount for reasonable expenses which the
court finds to have been necessarily incurred, plus rea-
sonable attorneys’ fees and costs.”); 33 U.S.C. § 1367(c)
(“[A] sum equal to the aggregate amount of all costs and
expenses (including the attorney’s fees) . . . shall be as-
sessed . . . .”); 38 U.S.C. § 4323(h)(2) (“[T]he court may
award any such person who prevails in such action or
proceeding reasonable attorney fees, expert witness fees,
and other litigation expenses.”); 41 U.S.C. § 4705(d)(1)(C)
(noting that head of agency may “[o]rder the contractor to
pay the complainant an amount equal to the aggregate
amount of all costs and expenses (including attorneys’
fees and expert witnesses’ fees) that the complainant
reasonably incurred”); 42 U.S.C. § 247d-6d(e)(9) (permit-
NANTKWEST, INC. v. MATAL 9
ting party to recover “reasonable expenses incurred . . .
including a reasonable attorney’s fee”).
The message is clear: Congress did not view “[a]ll the
expenses of the proceedings” as necessarily including
“attorneys’ fees.” If “expenses” included “attorneys’ fees,”
there would be no reason for Congress to specify the
availability of attorneys’ fees in statutes that already
provide for the award of expenses. Instead, the logical
implication is that “expenses” and “attorneys’ fees” mean
different things and that expenses do not necessarily
include attorneys’ fees. At best, Congress’s reference to
“[a]ll the expenses” is ambiguous. As such, Congress’s
intent is not clear, and the statutory language does not
overcome the American Rule.
Although Congress has enacted statutes that award
the government attorneys’ fees in a district court action,
in each circumstance, Congress explicitly referred to
attorneys’ fees, making its fee-shifting intent abundantly
clear. For example, in the context of an agency enforce-
ment action for assessment of a civil penalty, 42 U.S.C.
§ 7413(a)(5)(B) provides that “[a]ny person who fails to
pay on a timely basis a civil penalty ordered or assessed
under this section shall be required to pay . . . the United
States enforcement expenses, including but not limited to
attorneys fees.” Likewise, 33 U.S.C. § 1319(g)(9)(B)
provides that “[a]ny person who fails to pay on a timely
basis the amount of an assessment of a civil penalty . . .
shall be required to pay [the agency] . . . attorneys fees
and costs for collection proceedings.” Unlike these stat-
utes, Congress’s alleged intent to award attorneys’ fees to
the government in § 145 actions is not so clear.
Finally, if § 145 were a fee-shifting statute, it would
represent a particularly unusual divergence from the
American Rule because it obligates even successful plain-
tiffs to pay the PTO’s attorneys’ fees. “[W]hen Congress
has chosen to depart from the American rule by statute,
10 NANTKWEST, INC. v. MATAL
virtually every one of the more than 150 existing federal
fee-shifting provisions predicates fee awards on some
success by the claimant.” Ruckelshaus v. Sierra Club,
463 U.S. 680, 684 (1983); see also Baker Botts, 135 S. Ct.
at 2164 (recognizing deviations from American Rule “tend
to authorize the award of ‘a reasonable attorney’s fee,’
‘fees,’ or ‘litigation costs,’ and usually refer to a ‘prevailing
party’ in the context of an adversarial ‘action.’”). Nothing
in § 145 confines the award of expenses to a prevailing
party. Instead, it requires the applicant to pay “[a]ll the
expenses of the proceedings,” which according to the
majority means the applicant pays for the PTO’s attor-
neys’ fees in every § 145 proceeding. In these atypical
circumstances, I think Congress’s intent to award the
PTO attorneys’ fees in every case should have been more
clear. I cannot agree that Congress used the word “ex-
penses” to effect such an unusual departure from the
American Rule—a departure that would saddle even
prevailing applicants with the PTO’s attorneys’ fees. 3
C.
The maintenance of a robust American Rule also finds
support in public policy. For example, uncertainty is
inherent in any litigation, and “one should not be penal-
ized for merely defending or prosecuting a lawsuit,” as
3 The majority repeatedly mischaracterizes the dis-
sent as advocating for a rigid requirement that would bar
the award of attorneys’ fees unless Congress invoked
those exact words. See Maj. Op. 11, 12, 13 n.8. This is
incorrect. My opinion only addresses whether the word
“expenses” is a specific and explicit directive from Con-
gress to shift attorneys’ fees or whether § 145 otherwise
signals Congress’s intent to make an award of attorneys’
fees available. I express no opinion as to what other
words carry enough weight to displace the American Rule.
NANTKWEST, INC. v. MATAL 11
this could have a disproportionate effect in discouraging
less wealthy individuals “from instituting actions to
vindicate their rights if the penalty for losing included the
fees of their opponents’ counsel.” Fleischmann Distilling
Corp. v. Maier Brewing Co., 386 U.S. 714, 718 (1967); see
also Summit Valley, 456 U.S. at 725 (“[C]onsiderations
[favoring application of the American Rule] include the
possible deterrent effect that fee shifting would have on
poor litigants with meritorious claims.”). Independent
advocacy could also be threatened, the Supreme Court
warned, “by having the earnings of the attorney flow from
the pen of the judge before whom he argues.” F. D. Rich
Co., 417 U.S. at 129. Finally, if the word “expenses” in
every statute or contract trumped the American Rule,
then “the time, expense, and difficulties of proof inherent
in litigating the question of what constitutes reasonable
attorney’s fees would pose substantial burdens for judicial
administration.” Fleischmann, 386 U.S. at 718.
Here, the majority’s interpretation would compel any
prospective patentee who avails herself of the review
afforded by § 145 to pay the PTO’s attorneys’ fees even if
the applicant prevails and proves error by the PTO. 4
These high and uncertain costs will likely deter appli-
cants, particularly solo inventors and other smaller enti-
ties, from pursuing review under § 145. And every § 145
4 The AIA offers two options for judicial review of a
Board decision rejecting a patent application. The appli-
cant can appeal to the Federal Circuit under § 141 or it
can file a civil action in the Eastern District of Virginia
against the Director of the PTO under § 145. See Kappos
v. Hyatt, 132 S. Ct. 1690, 1694 (2012). Seeking review
under § 145 offers certain benefits to the applicant, in-
cluding the ability to conduct discovery and introduce
additional evidence. See id. at 1700–01.
12 NANTKWEST, INC. v. MATAL
proceeding would involve litigation over whether the
PTO’s attorneys’ fees were reasonable, creating an addi-
tional burden for the district court. I am not convinced
that Congress intended such an outcome.
III.
The majority’s arguments to the contrary do not per-
suade me to conclude otherwise. The majority relies
heavily on our statement in Hyatt v. Kappos, 625 F.3d
1320, 1337 (Fed. Cir. 2010) that plaintiffs who proceed
under § 145 bear “the heavy economic burden of paying
‘[a]ll the expenses of the proceedings’ regardless of out-
come.” Maj. Op. 5, 15. This observation, however, does
not require that expenses include attorneys’ fees. Indeed,
the PTO has traditionally interpreted this statutory
language to include expert fees, court reporter fees, depo-
sition travel expenses, and printing expenses—all of
which can be significant and pose a “heavy economic
burden” in district court litigation.
The majority also claims that its holding is consistent
with opinions from the Second and Fourth Circuits that
have interpreted “expenses” to include attorneys’ fees.
But the rationale adopted by the majority diverges from
that of the Fourth Circuit in Shammas v. Focarino,
784 F.3d 219 (4th Cir. 2015), and the Second Circuit’s
opinion in United States v. 110-118 Riverside Tenants
Corp., 886 F.2d 514 (2d Cir. 1989) is easily distinguished. 5
5 In addition, the majority cites to dicta in Tanigu-
chi v. Kan Pacific Saipan, Ltd., 132 S. Ct. 1997 (2012) as
evidence that the Supreme Court has blessed its interpre-
tation of “expenses.” As described by the Court, the
question presented in Taniguchi was whether the phrase
“compensation of interpreters” includes the cost of trans-
lating written documents. The Court answered this
NANTKWEST, INC. v. MATAL 13
In interpreting a section of the Lanham Act requiring
the party bringing the case to pay “all the expenses of the
proceeding,” 15 U.S.C. § 1071(b)(3), the Shammas majori-
ty 6 found the American Rule did not apply. Shammas,
784 F.3d at 223. Only after dispatching with the strong
presumption against fee shifting embodied in the Ameri-
can Rule—a rule that the majority here assumes is appli-
cable—was the Shammas court able to interpret the
ordinary meaning of “expenses” to cover attorneys’ fees.
Id. at 224. Simply reaching the same result, however,
does not make the majority’s opinion consistent with
Shammas. This is particularly so here because the two
opinions offer conflicting views on the applicability of the
foundational common law principle embodied in the
American Rule.
The Second Circuit’s decision in 110-118 Riverside is
inapposite because it does not address the interpretation
of “expenses” in a contract or statutory provision. In-
question by concluding that “both the ordinary and tech-
nical meanings of ‘interpreter,’ as well as the statutory
context in which the word is found, lead to the conclusion
that § 1920(6) does not apply to translators of written
materials.” Id. at 2005. Only then did the Court explain
that its holding was consistent with the “narrow scope of
taxable costs,” which it characterized as a fraction of the
nontaxable expenses. Id. at 2006. It never interpreted a
statutory provision containing the word “expenses” to
include attorneys’ fees.
6 Judge King dissented. In his view, the American
Rule controls the analysis, and attorneys’ fees should not
be shifted because the statutory provision at issue “makes
no reference to attorney’s fees awards and does not reflect
a Congressional intention to authorize such awards.”
Shammas, 784 F.3d at 227 (King, J., dissenting).
14 NANTKWEST, INC. v. MATAL
stead, 110-118 Riverside dealt with an apartment corpo-
ration that incurred expenses in foreclosing a lien that the
government placed on one of the apartment corporation’s
tenants. The government bore responsibility for foreclos-
ing the tax lien, but the apartment corporation effectuat-
ed the foreclosure and shouldered the expenses associated
with the proceeding. Because it was the government’s
duty to foreclose the tax lien, the court found no reason
why the government should not reimburse the apartment
corporation for the expenses of the foreclosure proceeding,
including attorneys’ fees. 110-118 Riverside, 886 F.2d at
520. As these facts demonstrate, 110-118 Riverside is a
case where a private party performed the legal obligations
of the government and was made whole for its efforts; it
does not involve the interpretation of a statute in the
context of adversarial litigation to determine whether
Congress specifically and explicitly provided for the
recovery of attorneys’ fees by one party against the other
based on its use of the word “expenses.”
Next, the majority relies on dictionary definitions to
illuminate the ordinary meaning of “expenses.” The
majority’s dictionaries, however, are from 1998 and
2014—they are not contemporaneous with Congress’s
introduction of the word “expenses” into the Patent Act in
1839. Therefore, they shed no light on the ordinary
meaning of “expenses” more than 175 years ago. See
Amoco Prod. Co., 526 U.S. at 873–74 (“‘[U]nless otherwise
defined, words will be interpreted as taking their ordi-
nary, contemporary, common meaning’ at the time Con-
gress enacted the statute.” (alteration in original)
(emphasis added) (quoting Perrin, 444 U.S. at 42)). And
unlike the 1998 definition from Wright and Miller, the
contemporaneous definitions do not mention “attorneys’
fees.” See Section II.B, supra.
Finally, the majority posits that the litany of statuto-
ry provisions separately specifying both “expenses” and
“attorneys’ fees” demonstrates Congress’s desire not to be
NANTKWEST, INC. v. MATAL 15
restricted to a single word or phrase when awarding
attorneys’ fees. See Maj. Op. 11. These statutes, in my
view, compel the opposite conclusion, especially when
read in light of the American Rule. As explained above,
there would be no reason for Congress to provide for the
award of “attorneys’ fees” in numerous statutory provi-
sions where it also permits the award of expenses if the
contemporaneous, ordinary, and well-known meaning of
“expenses” necessarily included attorneys’ fees. Rather,
in the context of § 145, the term “expenses” is ambiguous
and shows no clear intent to award attorneys’ fees.
IV.
The American Rule is the starting point for our anal-
ysis, and it imposes a high bar for any litigant seeking to
shift its attorneys’ fees to the opposing party. Despite
assuming the American Rule’s applicability to this case,
the majority believes § 145 provides the requisite authori-
zation. But § 145 lacks the specific and explicit provision
for the allowance of attorneys’ fees, and the ordinary
meaning of “expenses” fails to fill the void. I respectfully
dissent.