Peter v. NantKwest, Inc., No. 18-801 (Supreme Court 2019)
I believe there are many situations where it makes sense to award reasonable costs and attorney fees to the prevailing party. It goes further to ensure that the injured party is ‘made whole’ and it also discourages folks to push forward with weak arguments.
That said, I don’t like 35 U.S.C. 145. That provision awards the USPTO “all the expenses of the proceedings” regardless of whether the agency wins or loses. The provision works to discourage the filing of Civil Actions to obtain a patent. In NantKwest, the USPTO is asking that “all the expenses” be interpreted to include its personnel expenses, including attorney fees, win-or-lose. The Federal Circuit ruled against the PTO and denied such fees, but the Supreme Court has agreed to hear the case:
Whether the phrase “[a]ll the expenses of the proceedings” in 35 U.S.C. 145 encompasses the personnel expenses the USPTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation.
USPTO’s opening merits brief is due later this week, with amicus filings shortly thereafter.
Until recently, the case was known as Iancu v. NantKwest. However, in a recent letter to the Supreme Court, Solicitor Noel Francisco indicated that Iancu “is recused in this matter.” Solicitor Francisco suggested that Laura Peter be substituted as petitioner in her official capacity as the Deputy Director of the United States
Patent and Trademark Office. Thus, the case has become Peter v. NantKwest.
The letter does not indicate the reason for Iancu’s recusal. However, NantKwest is represented by top advocate Morgan Chu from Irell & Manella. Iancu was managing partner at Irell when the representation began.