This morning the Federal Circuit released a precedential opinion in a case addressing 35 U.S.C. § 145, which governs the shifting of fees in successful appeals from the U.S. Patent and Trademark Office to federal district court to challenge the rejection of patent applications. The court also released two nonprecedential opinions in a patent case and a government contract case. Here are the introductions to the opinions.

Hyatt v. Hirshfeld (Precedential)

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 district court initially ordered the PTO to issue some of these patents and awarded attorney’s fees to Mr. Hyatt as a prevailing party. The district court also denied the PTO’s request 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 presumption 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 previously vacated and remanded the district court’s decision ordering 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 because § 145 does not specifically and explicitly shift expert witness fees.

Nuvasive, Inc. v. Hirshfeld (Nonprecedential)

This inter partes reexamination of NuVasive, Inc.’s (NuVasive’s) U.S. Patent No. 7,691,057 (’057 patent) appears before us a second time. The patentability of claims 17–22 and 24–27 under 35 U.S.C. § 103(a) remains at issue. In the first appeal to our court, NuVasive, Inc v. Iancu, 752 F. App’x 985 (Fed. Cir. 2018) (NuVasive I), we vacated the Patent Trial and Appeal Board’s (Board’s) obviousness determination, overturning the Board’s finding that NuVasive’s “eXtreme Lateral Interbody Fusion” (XLIF) surgical technique lacked a nexus to the claimed method. We remanded for the Board to (1) conduct a new analysis of the objective indicia of nonobviousness consistent with our nexus finding, and (2) make sufficient factual findings to support its conclusion about the existence of a motivation to combine two prior art references.

After reconsidering the prior art references and NuVasive’s objective evidence of nonobviousness, the Board again found that claims 17–22 and 24–27 would have been obvious. NuVasive challenges this holding. Because the Board’s fact findings are supported by substantial evidence and its conclusion of obviousness is correct, we affirm.

Costal Park LLC v. United States (Nonprecedential)

Appellants Coastal Park LLC and Meyer Landau (collectively, “Coastal Park”) filed this suit in the Court of Federal Claims seeking return of a $310,000 deposit paid under Coastal Park’s agreement to purchase a former U.S. Coast Guard housing complex in Elizabeth City, North Carolina. The complex included various housing units as well as “several basketball goals, a tennis court, a children’s playground, [and] a large gazebo.” J.A. 30. The government kept Coastal Park’s deposit upon concluding that Coastal Park had defaulted on the transaction. The Court of Federal Claims ruled that Coastal Park was not entitled to return of the deposit. Coastal Park LLC v. United States, 147 Fed. Cl. 179, 185 (2020). We affirm.