Hyatt v. Hirshfeld ( 2021 )

Case: 20-2321 Document: 41 Page: 1 Filed: 10/12/2021
United States Court of Appeals
for the Federal Circuit
______________________
GILBERT P. HYATT,
Plaintiff-Appellee
v.
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Defendant-Appellant
______________________
2020-2321, 2020-2323, 2020-2324, 2020-2325
______________________
Appeals from the United States District Court for the
District of Columbia in Nos. 1:05-cv-02310-RCL, 1:09-cv-
01864-RCL, 1:09-cv-01869-RCL, 1:09-cv-01872-RCL, Sen-
ior Judge Royce C. Lamberth.
______________________
OPINION ISSUED: August 18, 2021
OPINION MODIFIED: October 12, 2021
______________________
ANDREW M. GROSSMAN, Baker & Hostetler LLP, Wash-
ington, DC, argued for plaintiff-appellee. Also represented
by MARK W. DELAQUIL, SEAN SANDOLOSKI.
MOLLY R. SILFEN, Office of the Solicitor, United States
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2 HYATT v. HIRSHFELD
Patent and Trademark Office, Alexandria, VA, argued for
defendant-appellant. Also represented by MICHAEL S.
FORMAN, THOMAS W. KRAUSE, FARHEENA YASMEEN
RASHEED.
______________________
Before MOORE, Chief Judge, REYNA and HUGHES, Circuit
Judges.
HUGHES, Circuit Judge.
After adverse results in proceedings at the Patent and
Trademark Office, Gilbert Hyatt sued under 35 U.S.C.
§ 145 in district court for award of several patents. The dis-
trict court initially ordered the PTO to issue some of these
patents and awarded attorney’s fees to Mr. Hyatt as a pre-
vailing party. The district court also denied the PTO’s re-
quest for expert witness fees under § 145, holding that the
statute’s shifting of “[a]ll the expenses of the proceedings”
to the applicant does not overcome the American Rule pre-
sumption against shifting expert fees. On appeal, the PTO
challenges both the award of attorney’s fees to Mr. Hyatt
and the denial of its expert witness fees. Because we previ-
ously vacated and remanded the district court’s decision or-
dering the issuance of patents, Mr. Hyatt is no longer a
prevailing party, and we vacate the award of attorney’s
fees. We affirm the district court’s denial of expert fees be-
cause § 145 does not specifically and explicitly shift expert
witness fees.
I
Mr. Hyatt is a prolific patent filer and litigant. In 1995
alone, Mr. Hyatt filed “hundreds of extraordinarily lengthy
and complex patent applications,” including the four at is-
sue here. Hyatt v. Iancu, Nos. 1:05-CV-2310-RCL, 1:09-CV-
1864-RCL, 1:09-CV-1869-RCL, 1:09-CV-1872-RCL, 2020
WL 4219844, at *1 (D.D.C. July 23, 2020) (Decision). We
recently chronicled the ensuing conflict between Mr. Hyatt
and the PTO, noting that he “adopted an approach to
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HYATT v. HIRSHFELD 3
prosecution that all but guaranteed indefinite prosecution
delay.” Hyatt v. Hirshfeld (Hyatt I), 998 F.3d 1347, 1368
(Fed. Cir. 2021). The examination of these patents has cost
the PTO millions of dollars. Id. at 1370.
After adverse results at the PTO regarding the patents
at issue here, Mr. Hyatt sued the PTO under 35 U.S.C.
§ 145, which allows a patent applicant to challenge a PTO
decision in district court. Decision, 2020 WL 4219844,
at *1. The PTO moved to dismiss the actions for prosecu-
tion laches, a defense that “render[s] a patent unenforcea-
ble when it has issued only after an unreasonable and
unexplained delay in prosecution that constitutes an egre-
gious misuse of the statutory patent system under a total-
ity of the circumstances.” Hyatt I, 998 F.3d at 1360 (citation
omitted). The district court rejected the PTO’s arguments
and ordered the PTO to issue a patent covering some of the
claims in Mr. Hyatt’s applications. Decision, 2020 WL
4219844, at *1. The PTO appealed to this court. Id. at *2.
While Hyatt I was pending at this court, Mr. Hyatt
sought his attorney’s fees under the Equal Access to Justice
Act (EAJA). Id. at *1. This statute allows a court to grant
fees under certain circumstances, provided that the party
seeking fees is a “prevailing party.” 28 U.S.C. § 2412(b).
The district court granted this motion in part, based on
Mr. Hyatt’s original victory in the district court. We subse-
quently vacated and remanded in Hyatt I, holding that the
PTO had carried its initial burden of demonstrating prose-
cution laches. 998 F.3d at 1372. Accordingly, the PTO con-
tends that Mr. Hyatt is not a prevailing party and therefore
is not entitled to attorney’s fees. Appellant’s Br. 31.
Meanwhile, the PTO sought reimbursement of its ex-
pert witness fees in Hyatt I. Decision, 2020 WL 4219844, at
*1. In an action under 35 U.S.C. § 145, “[a]ll the expenses
of the proceedings shall be paid by the applicant,” and the
PTO cited an unbroken line of district court opinions
awarding expert fees under the statute. Decision, 2020 WL
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4 HYATT v. HIRSHFELD
4219844, at *5. The district court noted that the cited cases
lacked reasoning regarding the American Rule presump-
tion against fee-shifting, and that recent Supreme Court
precedent has emphasized that presumption. The district
court denied expert fees and the PTO now appeals.
II
As an initial matter, we vacate the district court’s hold-
ing that Mr. Hyatt is entitled to attorney’s fees under
28 U.S.C. § 2412(b). After our remand in Hyatt I, Mr. Hyatt
cannot be considered a prevailing party. Our holding on
this point will not come as a surprise to the district court.
See Decision, 2020 WL 4219844, at *4 (“The Court acknowl-
edges that the PTO has appealed its prosecution [laches]
decision. If the PTO prevails on appeal, Mr. Hyatt will not
be entitled to the fees the Court awards here.” (citation
omitted)). We vacate and remand for further proceedings
in light of our decision in Hyatt I.
III
We next proceed to the central issue in this appeal:
whether 35 U.S.C. § 145’s language that “[a]ll the expenses
of the proceedings shall be paid by the applicant” requires
that the applicant pay the expert witness fees of the PTO.
The district court held that the statute was not sufficiently
explicit to overcome the presumption against fee-shifting,
and we review that statutory interpretation de novo.
Broadcast Innovation, L.L.C. v. Charter Commc’ns, Inc.,
420 F.3d 1364, 1366 (Fed. Cir. 2005). Because we hold that
§ 145 is not sufficiently specific to overcome the presump-
tion against fee-shifting, we affirm.
A
After receiving an adverse decision from the Patent
Trial and Appeal Board, a patent applicant has two mutu-
ally exclusive options for judicial review. The typical route
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HYATT v. HIRSHFELD 5
is to appeal directly to this court under 35 U.S.C. § 141. 1
Section 141 review is cabined to the administrative record,
and factual determinations of the Board are set aside “only
if they are unsupported by substantial evidence.” Kappos
v. Hyatt, 566 U.S. 431, 434–35 (2012) (citation omitted). Al-
ternatively, the applicant may file a civil action in federal
district court under 35 U.S.C. § 145, as Mr. Hyatt did here. 2
Review under § 145 is more expansive, allowing the district
court to hear new evidence and make de novo factual de-
terminations. Peter v. NantKwest, Inc., 140 S. Ct. 365, 369
(2019). To pursue this more burdensome and circuitous
route, the applicant must be willing to shoulder “[a]ll the
expenses of the proceedings,” including the PTO’s ex-
penses. 35 U.S.C. § 145.
Congress enacted § 145’s predecessor in 1839, requir-
ing an applicant to pay “the whole of the expenses of the
proceeding . . . whether the final decision shall be in his fa-
vor or otherwise.” Act of Mar. 3, 1839, ch. 88, § 10, 5 Stat.
353, 354. The wording remains the same in all meaningful
respects today. In 1870, Congress considered changing the
word “expenses” to “costs,” but the proposal failed. See
NantKwest, Inc. v. Iancu, 898 F.3d 1177, 1194 (Fed. Cir.
2018). Since the 1980s, the PTO has relied on the language
1 “An applicant who is dissatisfied with the final de-
cision in an appeal to the Patent Trial and Appeal Board
under section 134(a) may appeal the Board’s decision to the
United States Court of Appeals for the Federal Circuit. By
filing such an appeal, the applicant waives his or her right
to proceed under section 145.” 35 U.S.C. § 141(a).
2 “An applicant dissatisfied with the decision of the
Patent Trial and Appeal Board . . . may, unless appeal has
been taken to the United States Court of Appeals for the
Federal Circuit, have remedy by civil action against the Di-
rector in . . . United States District Court . . . .” 35 U.S.C.
§ 145.
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6 HYATT v. HIRSHFELD
in § 145 shifting “expenses” to recover expert fees from ap-
plicants. We are tasked with determining whether this re-
liance was warranted.
B
We start with the American Rule presumption. See
NantKwest, 140 S. Ct. at 370–71 (emphasizing the central-
ity of the American Rule in analysis of fee-shifting stat-
utes). This presumption requires that litigants pay their
own fees “unless a statute or contract provides otherwise.”
Id. at 370 (citation omitted). “Congress must provide a suf-
ficiently ‘specific and explicit’ indication of its intent to
overcome the American Rule’s presumption against fee
shifting.” Id. at 372 (quoting Alyeska Pipeline Serv. Co. v.
Wilderness Soc’y, 421 U.S. 240, 260 (1975)).
In NantKwest, the Supreme Court applied the Ameri-
can Rule to § 145. Id. “[T]he presumption against fee shift-
ing applies to all statutes—even those like § 145 that do
not explicitly award attorney’s fees to ‘prevailing parties.’”
Id. at 371. And while the focus of the Supreme Court’s in-
quiry in NantKwest was attorney’s fees, the American Rule
similarly applies to expert witness fees. See Kansas v. Col-
orado, 556 U.S. 98, 102–03 (2009) (“[T]he American Rule
applies not only to attorney’s fees but also other costs of
litigation, including expert witness fees.” (citing Alyeska
Pipeline, 421 U.S. 240)).
No magic words are needed to override the American
Rule, but the requirement that Congressional intent be
specific and explicit is a high bar. See Key Tronic Corp. v.
United States, 511 U.S. 809, 815–21 (1994) (noting that
“[t]he absence of [a] specific reference to attorney’s fees is
not dispositive [as to attorney’s fees shifting] if the statute
otherwise evinces an intent to provide for such fees,” but
holding that the words “any . . . necessary costs of re-
sponse,” including “enforcement activities,” were not ex-
plicit enough to invoke fees related to private actions);
NantKwest, 898 F.3d at 1182. For example, the Supreme
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HYATT v. HIRSHFELD 7
Court held that where a statute shifted a “reasonable at-
torney’s fee,” it was clear that Congress intended to over-
ride the American Rule with regard to attorney’s fees, but
the language was not specific enough to also shift expert
witness fees. See W. Va. Univ. Hosps., Inc. v. Casey, 499
U.S. 83, 102 (1991). Vague terms like “costs” are also not
enough. See, e.g., Summit Valley Indus. Inc. v. Loc. 112,
United Brotherhood of Carpenters & Joiners of Am.,
456 U.S. 717, 727 (1982) (declining to award attorney’s fees
under a statute shifting “the damages . . . sustained and
the cost of the suit”); F. D. Rich Co. v. U.S. for Use of Indus.
Lumber Co., 417 U.S. 116, 128–31 (1974) (declining to
award attorneys’ fees under a statute authorizing recovery
of “sums justly due”); Fleischmann Distilling Corp. v.
Maier Brewing Co., 386 U.S. 714, 720–21 (1967) (declining
to award attorney’s fees under a statute authorizing shift-
ing the “costs of the action”). The Supreme Court has listed
EAJA as “a good example of the clarity . . . required to de-
viate from the American Rule.” Baker Botts L.L.P. v.
ASARCO LLC, 576 U.S. 121, 126 (2015) (citing 28 U.S.C.
§ 2412(d)(1)(A)). There, the statute shifts “fees and other
expenses,” § 2412(d)(1)(A), but also clarifies that “‘fees and
other expenses’ includes the reasonable expenses of expert
witnesses . . . and reasonable attorney fees,”
§ 2412(d)(2)(A).
C
The Supreme Court’s NantKwest decision guides our
analysis here. There, in interpreting the same § 145 lan-
guage at issue here, the Court held that the reference to
“expenses” does not invoke attorney’s fees with enough
clarity to overcome the American Rule. See NantKwest, 140
S. Ct. at 372–73. Although the Court’s holding that attor-
ney’s fees are not shifted does not inherently dictate that
expert fees cannot be shifted, see Casey, 499 U.S. at 88–92
(analyzing attorney’s fees and expert fees separately),
much of the Court’s reasoning in NantKwest applies
equally with respect to expert fees.
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8 HYATT v. HIRSHFELD
The Court began by noting that dictionary “[d]efini-
tions of ‘expenses’ provide scant guidance.” NantKwest,
140 S. Ct. at 372. Both modern and historical definitions of
the term tend to be broad. See, e.g., Expense, BLACK’S LAW
DICTIONARY 698 (10th ed. 2014) (defining expense as “an
expenditure of money, time, labor, or resources to accom-
plish a result”); N. WEBSTER, AN AMERICAN DICTIONARY OF
THE ENGLISH LANGUAGE 319 (3d ed. 1830) (defining ex-
penses to include “the employment and consumption, as of
time or labor,” or the “disbursing of money”). “Though these
definitions are capacious enough to include attorney’s fees,
the mere failure to foreclose a fee award neither specifically
nor explicitly authorizes courts to shift fees.” NantKwest,
140 S. Ct. at 372 (citation omitted). These definitions pro-
vide no more guidance regarding whether “expenses” in-
clude expert fees than they do for attorney’s fees.
Next, the Supreme Court considered the full phrase,
“expenses of the proceeding,” noting that the phrase “is
similar to the Latin expensæ litis, or ‘expenses of the litiga-
tion.’” Id. In the 1830s, when the relevant language in § 145
was introduced, a contemporary dictionary defined ex-
pensæ litis as “expenses of the suit, the costs which are gen-
erally allowed to the successful party.” 1 J. BOUVIER, LAW
DICTIONARY 392 (1839). That dictionary also excluded from
the meaning of “costs” “those expenses which [a party] may
have incurred for himself [and] the extraordinary fees he
may have paid counsel.” Id. at 244. The Court held that
“[t]hese definitions suggest that the use of ‘expenses’ in
§ 145 would not have been commonly understood to include
attorney’s fees at its enactment.” NantKwest, 140 S. Ct.
at 372. The same logic applies to expert witness fees,
which, like attorney’s fees, are not “costs . . . generally al-
lowed to the successful party.” 1 J. BOUVIER, LAW
DICTIONARY 392 (1839); see, e.g., Arlington Cent. Sch. Dist.
Bd. of Educ. v. Murphy, 548 U.S. 291, 301 (2006) (“[N]o
statute will be construed as authorizing the taxation of
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HYATT v. HIRSHFELD 9
witness fees as costs unless the statute refers explicitly to
witness fees.” (citation omitted)).
The Court in NantKwest also emphasized that when
Congress has intended to include attorney’s fee-shifting in
a statute, it has referred to them explicitly. NantKwest,
140 S. Ct. at 373 (“That ‘expenses’ and ‘attorney’s fees’ ap-
pear in tandem across various statutes shifting litigation
costs indicates that Congress understands the two terms to
be distinct and not inclusive of each other.”). The same is
true of expert witness fees. See, e.g., 5 U.S.C. § 504(b)(1)(A)
(“reasonable expenses of expert witnesses . . . and reasona-
ble attorney or agent fees”); 6 U.S.C. § 1142(c)(3)(C) (“costs
and expenses (including attorney and expert witness
fees)”); 10 U.S.C. § 2409(c)(1)(C) (“costs and expenses (in-
cluding attorneys’ fees and expert witnesses’ fees)”);
12 U.S.C. § 5567(c)(4)(B)(ii) (“costs and expenses (including
attorney fees and expert witness fees)”); 15 U.S.C.
§ 2087(b)(3)(B)(iii) (“costs and expenses (including attor-
neys’ and expert witness fees)”); 21 U.S.C. § 399d(b)(3)(C)
(“costs and expenses (including attorneys’ and expert wit-
ness fees)”); 26 U.S.C. § 7430(c)(1) (“reasonable expenses of
expert witnesses . . . and reasonable fees paid . . . for the
services of attorneys”); 38 U.S.C. § 4323(h)(2) (“reasonable
attorney fees, expert witness fees, and other litigation ex-
penses”); 41 U.S.C. §§ 4705(d)(1)(C) (“costs and expenses
(including attorneys’ fees and expert witnesses’
fees)”), 4712(c)(1)(C) (“costs and expenses (including attor-
neys’ fees and expert witnesses’ fees)”); 42 U.S.C.
§§ 7622(b)(2)(B) (“costs and expenses (including attorneys’
and expert witness fees)”), 5851(b)(2)(B) (“costs and ex-
penses (including attorneys’ and expert witness fees)”);
45 U.S.C. § 726(f)(9) (shifting “costs and expenses (includ-
ing reasonable fees of accountants, experts, and attor-
neys)”); 49 U.S.C. §§ 30171(b)(3)(C) (“costs and expenses
(including attorneys’ and expert witness fees)”), 60129 (“ex-
penses (including attorney’s and expert witness fees)”),
42121(b)(3)(B)(iii) (“costs and expenses (including
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10 HYATT v. HIRSHFELD
attorneys’ and expert witness fees)”). These statutes each
list expert fees as a subset of the term “expenses,” but that
does not mean that the broad term always includes expert
fees. Instead, it shows that “expenses” includes expert fees
“when so defined.” NantKwest, 140 S. Ct. at 373.
The central logic of NantKwest is applicable to our de-
cision here, indicating that § 145 does not shift expert wit-
ness fees. The American Rule sets a high bar that vague
definitions cannot overcome, particularly considering the
many instances in which Congress has explicitly shifted ex-
pert fees. We therefore affirm the district court’s holding
that the PTO is not entitled to reimbursement of its expert
witness fees.
D
We understand that this is a close case. There are
many arguments that the phrase “[a]ll the expenses of the
proceedings” should be understood to include expert fees.
Indeed, many of these arguments apply to expert fees in a
way that they do not apply to attorney’s fees, making this
case a closer one than NantKwest. But the American Rule
sets a high bar, and we find none of these arguments suffi-
ciently specific and explicit to override the presumption
against fee shifting.
1
On a couple of occasions, in dicta, the Supreme Court
has “suggest[ed] that an explicit reference to . . . ‘litigation
expenses’ could shift expert fees.” See NantKwest,
140 S. Ct. at 373–74 (citing Casey, 499 U.S. at 99 (“Con-
gress could easily have shifted ‘attorney’s fees and expert
witness fees,’ or ‘reasonable litigation expenses,’ as it did in
contemporaneous statutes; it chose instead to enact more
restrictive language, and we are bound by that re-
striction.”)); see also Arlington Cent. Sch. Dist. Bd. of Educ.,
548 U.S. at 297 (“‘The use of [the term ‘costs’], rather than
a term such as ‘expenses,’ strongly suggests that
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HYATT v. HIRSHFELD 11
§ 1415(i)(3)(B) was not meant to be an open-ended provi-
sion [shifting] all expenses incurred by prevailing parents
in connection with an IDEA case—for example, travel and
lodging expenses or lost wages . . . .”). The PTO argues that,
because the American Rule does not require magic words,
these lines indicate that “expenses” is among the terms
that are sufficient to overcome the American Rule with re-
spect to expert fees. However, while these individual sen-
tences may cut in that direction, their persuasive value is
outweighed by the direct and recent precedent in
NantKwest. In Casey and Arlington School Board, the
Court mentioned, without deciding, that other terms, like
“expenses,” might overcome the American Rule, but when
analyzing the specific statute at issue here, the Court held
that “expenses” was not sufficiently clear to overcome the
presumption. NantKwest, 140 S. Ct. at 372–74. Therefore,
we think the best interpretation of Supreme Court prece-
dent is that the phrase “expenses of the proceedings” does
not shift expert witness fees “with the kind of clarity [the
Supreme Court has] required to deviate from the American
Rule.” Id. at 372 (citation omitted).
2
The PTO also emphasizes that district courts have
been awarding expert witness fees under this statute ever
since the PTO began using experts. See NantKwest,
898 F.3d at 1180–81; e.g., Sandvik Aktiebolag v. Samuels,
Civ. A. No. 89-3127-LFO, 1991 WL 25774 (D.D.C. Feb. 7,
1991); Halozyme, Inc. v. Iancu, No. 1:16-CV-1580-CMH,
2018 WL 5270329, at *1 (E.D. Va. Oct. 23, 2018) (“Ex-
penses are commonly understood to encompass printing,
travel, and expert witness costs.” (citation omitted)); Tay-
lor v. Matal, No. 1:15-cv-1607-LMB, 2017 WL 5147147,
at *5 (E.D. Va. Nov. 6, 2017) (“It is well settled that the
term ‘expenses’ as used in § 145 encompasses the costs as-
sociated with court reporters, transcription, printing,
travel expenses, and expert witnesses.”); Realvirt, LLC v.
Lee, 220 F. Supp. 3d 704, 706 (E.D. Va. 2016). Unlike in
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12 HYATT v. HIRSHFELD
NantKwest, where the PTO requested attorney’s fees “for
the first time in the 170-year history of § 145,” NantKwest,
140 S. Ct. at 370, here the PTO has a long history of receiv-
ing expert witness fees under the statute. But longstanding
practice is not enough to overcome the American Rule pre-
sumption.
The PTO argues that this difference in historical prac-
tice distinguishes this case from NantKwest, but historical
practice did not drive the Supreme Court’s reasoning in
that case. Rather, the Court focused on the language of the
statute and the centrality of the American Rule in analyz-
ing fee-shifting provisions. Id. at 370–74.
Congress has reenacted the language at issue here
multiple times since district courts began awarding fees,
but these reenactments were not an explicit endorsement
of that interpretation. See id. at 372 (requiring a “specific
and explicit” indication from Congress to overcome the
American Rule (quoting Alyeska Pipeline, 421 U.S. at 260)).
To be sure, reenactment of a statute can be relevant in in-
terpreting that statute. See Pierce v. Underwood, 487 U.S.
552, 567 (1988) (“[R]eenactment, of course, generally in-
cludes the settled judicial interpretation.” (citing Lorillard
v. Pons, 434 U.S. 575, 580–81 (1978))); Georgia v. Pub-
lic.Resource.Org, Inc., 140 S. Ct. 1498, 1510 (2020) (“[W]e
are particularly reluctant to disrupt precedents interpret-
ing language that Congress has since reenacted.”); but see
Merck & Co. v. Reynolds, 559 U.S. 633, 659 (2010) (Scalia,
J., concurring) (stating that this rule only applies “if all (or
nearly all) of the Circuits” have interpreted statutory lan-
guage the same way). But this canon regarding Congress’s
implicit acceptance of judicial interpretations loses much
of its force in the context of fee-shifting statutes, which re-
quire an explicit indication of Congress’s intent. Moreover,
while the practice of district courts awarding expert fees
under § 145 is longstanding, the PTO does not cite any dis-
trict court opinion that has reasoned why “expenses” is a
clear enough invocation of expert fees to overcome the
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HYATT v. HIRSHFELD 13
American Rule. And there is no Federal Circuit precedent
clearly endorsing this practice. The premise that Congress
is aware of a particular judicial interpretation is less com-
pelling when the issue has been primarily uncontested. For
these reasons, the historical practice of awarding expert
fees is not enough to create the specific and explicit indica-
tion needed under the American Rule to shift fees.
3
The PTO points to other statutes where the term “ex-
penses” has been interpreted to include expert witness fees
as evidence that the term consistently includes expert fees.
See, e.g., Lovell v. Chandler, 303 F.3d 1039, 1058 (9th Cir.
2002) (“[T]he term ‘litigation expenses’ normally encom-
passes expert witness fees. . . .”). But while these cases cut
in that direction, the Supreme Court’s opinion in
NantKwest countered much of the logic behind these cases.
For example, an almost identical provision regarding
eminent domain proceedings has been understood to shift
expert witness fees. See 33 U.S.C. § 593 (“[A]ll expenses of
said proceedings and any award that may be made there-
under shall be paid by such State, or . . . public agency as
aforesaid . . . .” (emphasis added)); United States v. 254.35
Acres of Land in Caddo Par., La., 46 F. Supp. 913, 915–16
(W.D. La. 1942). The Western District of Louisiana inter-
preted 33 U.S.C. § 593, stating that:
‘All expenses of said proceedings’ is the language;
we note the ‘all’, and we also note the ‘said proceed-
ings’. This is ordinary English, and from the lay-
man’s lexicon ‘all expenses’ would certainly be
inclusive of the ordinary court costs, the ordinary
witness fees, and also the fees of expert witnesses
of both parties to the expropriation proceedings.
The legal meaning of the words ‘all expenses’ is cer-
tainly more inclusive than court costs, which gen-
erally include witness fees, ordinary and expert.
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14 HYATT v. HIRSHFELD
Id. (citation omitted). But the logic of this district court
opinion mirrors reasoning rejected by the Supreme Court
in NantKwest. See 140 S. Ct. at 372–73 (“Although the
word [‘all’] conveys breadth, it cannot transform ‘expenses’
to reach an outlay it would not otherwise include.”); id.
at 372 (citing a dictionary from the era of § 145’s enactment
which indicated that “expenses of the litigation” was syn-
onymous with “costs . . . generally allowed to the successful
party,” which does not include expert fees).
The Ninth Circuit addressed the American Rule in an
opinion awarding expert witness fees under a phrase shift-
ing “litigation expenses” in the Americans with Disabilities
Act. Lovell, 303 F.3d at 1058–59 (noting that “express stat-
utory authority” is required “for shifting expert witness
fees,” and holding that “litigation expenses” refers to such
fees (citation omitted)). But there, the court found suffi-
ciently clear indicators in the legislative history that Con-
gress intended to shift expert witness fees. Id.; see H.R.
Rep. No. 101–485(III), at 73 (1990), reprinted in 1990
U.S.C.C.A.N. 445, 496 (Report of the Committee on the Ju-
diciary) (“Litigation expenses include the costs of expert
witnesses. This provision explicitly incorporates the phrase
‘including litigation expenses’ to respond to rulings of the
Supreme Court that items such as expert witness fees,
travel expenses, etc., be explicitly included if intended to be
covered under an attorney’s fee provision.”); H.R. Rep.
No. 101–485(II), at 140 (1990), reprinted in 1990
U.S.C.C.A.N. 303, 423 (Report of the Committee on Educa-
tion and Labor) (“Litigation expenses include the costs of
experts and the preparation of exhibits.”). Thus, while the
Ninth Circuit’s opinion may indicate that Congress some-
times uses phrases like “litigation expenses” to shift expert
fees, the ADA is a statute where Congressional intent is far
clearer than here. Even assuming that legislative history
could be enough to overcome the explicitness requirement
of the American Rule, in § 145 there is no similar history.
Indeed, at the time of enactment, the PTO did not use
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HYATT v. HIRSHFELD 15
experts in litigation. Because the Patent Act lacks the clear
indications of legislative intent present in the ADA, the
reasoning of the Ninth Circuit is largely inapplicable to the
case at hand.
Several other state and district courts have understood
statutes awarding “expenses” to shift expert fees. See, e.g.,
N. Wyo. Surgical Ctr., LLC v. ASC Mgmt., LLC, No. 05-CV-
230-D, 2007 WL 9700885 (D. Wyo. Mar. 29, 2007) (award-
ing expert witness fees despite deeming the word “ex-
penses” not to include attorney’s fees (citing WYO. STAT.
§ 17-15-104(a)(xi) (2007) (“expenses actually and reasona-
bly incurred”))); Crawford v. Crump, 476 S.E.2d 855, 857–
58 (Ga. Ct. App. 1996) (enumerating expert witness fees as
claimed § 13-6-11 expenses (citing Ga. Code Ann. § 13-6-11(“The expenses of litigation”))); Cox Enters., Inc. v. News-J.
Corp., No. 6:04-CV0-698-ORL-28KRS, 2009 WL 10669714(M.D. Fla. Aug. 11, 2009) (discussing the award of expert
witness fees under 28 U.S.C. § 1927 (“costs, expenses, and
attorneys’ fees reasonably incurred”)). However, these in-
terpretations have the same deficiencies as the past opin-
ions interpreting § 145: none consider the relevance of the
American Rule. Cases like these indicate that the impact
of NantKwest may be wide-reaching, but that does not alter
our responsibility to faithfully apply NantKwest and the
American Rule here.
4
The PTO argues that the term “expenses” must be
broader than “costs,” and that it therefore must encompass
expert witness fees. This is a variation of an argument we
encountered and rejected in NantKwest. 898 F.3d
at 1194–95.
The PTO argues that the legislative history of § 145
shows that Congress intended to distinguish expenses and
costs. During amendments to the act in 1870, the House
proposed changing the word “expenses” to “costs” and
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16 HYATT v. HIRSHFELD
limiting the costs to $25. But the Senate rejected that
change. NantKwest, 898 F.3d at 1194–95.
A potential difference between “costs” and “expenses”
is also demonstrated by numerous statutes independently
listing costs and expenses. See, e.g., 10 U.S.C.
§ 2409(c)(1)(C) (“an amount equal to the aggregate amount
of all costs and expenses (including attorneys’ fees and ex-
pert witnesses’ fees)”); 15 U.S.C. § 2310(d)(2) (permitting
recovery of “a 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 . . . .”); 29 U.S.C. § 1370(e)(1) (“[T]he court in its
discretion may award all or a portion of the costs and ex-
penses incurred in connection with such action . . . .”);
30 U.S.C. § 938(c) (“a sum equal to the aggregate amount
of all costs and expenses (including the attorney’s fees)”);
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 assessed . . . .”); 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 reasona-
bly incurred”).
The PTO argues that if “expenses” are broader than
“costs,” but “expenses” do not, as the Supreme Court held,
include attorney’s fees, then it is difficult to imagine an in-
terpretation of “expenses” that would not cover expert wit-
ness fees. But we need not determine the precise contours
of the term “expenses” here. See NantKwest, 898 F.3d
at 1194–95. Instead, we must determine whether the term
is a specific and explicit invocation of expert witness fees.
As we have explained above, the statutory text is not suffi-
ciently specific and explicit to overcome the presumption
against shifting fees. What Congress intended to include in
“expenses” beyond “costs” will have to be determined in
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HYATT v. HIRSHFELD 17
subsequent cases; we conclude that it does not include ex-
pert fees.
5
Finally, the PTO argues that a decision denying expert
witness fees would have negative ramifications. In addition
to overturning decades of district court practice, denying
expert fees here might increase the cost of patent applica-
tions. Appellant’s Br. at 9. (“Congress has mandated that
the USPTO be self-funded, where patent application fees
are set to cover the agency’s costs. With millions of dollars
of projected additional out-of-pocket payments to expert
witnesses in § 145 actions, the money will have to come
from other users of the patent system.”).
While it is true that the overall structure of the patent
system is designed for applicants to bear the costs of their
patent applications, this general principle does not supply
the specific and explicit indication of fee-shifting required
by the American Rule. And regardless, we question the ex-
tent to which expert fees in § 145 cases would have a sig-
nificant impact on the PTO’s budget. See Brief of Amicus
Curiae IEEE-USA in Support of Respondent at 1a–4a, Pe-
ter v. NantKwest, 140 S. Ct. 365 (2019) (No. 18-801),
2019 WL 3523689 (noting that from 2009 to 2019, only 21
cases under § 145 reached adjudication where a PTO wit-
ness report might be submitted).
We do not lightly overturn decades of practice in fed-
eral district courts. But the phrase “[a]ll the expenses of
the proceedings” in § 145 does not specifically and explic-
itly invoke expert witness fees. Accordingly, we affirm.
IV
Because Mr. Hyatt was not a prevailing party in Hy-
att I, we vacate the award of attorney’s fees and remand for
further proceedings consistent with our opinion in that
case. And because the phrase “[a]ll the expenses of the pro-
ceedings” in § 145 does not invoke expert witness fees with
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18 HYATT v. HIRSHFELD
the clarity required to overcome the American Rule pre-
sumption against fee-shifting, we affirm the district court’s
denial of the PTO’s request for expert witness fees.
AFFIRMED IN PART AND VACATED AND
REMANDED IN PART
COSTS
No costs.