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Laura Peter, Deputy Director, Patent and Trademark Office v. NantKwest, Inc.

Paid petition · United States Court of Appeals for the Federal Circuit, No. 2016-1794 · judgment July 27, 2018

Decided · December 11, 2019
Pre-decision estimate: 29% cert probability (95% interval 19%–41%)

Before the decision, about 7× the 4.1% base rate. The model weighted this up for a federal-government petitioner, counsel who has won certiorari before, and a dissent in the court below (flagged in the petition), and down for a business respondent.

Question presented

When the United States Patent and Trademark Office (USPTO) denies a patent application, the Patent Act gives the unsuccessful applicant two avenues for seeking judicial review of the agency's decision. The applicant may appeal directly to the Federal Circuit, 35 U.S.C. 141, which "shall review the decision from which an appeal is taken on the record before the [USPTO],” 35 U.S.C. 144. Alternatively, the applicant may bring a civil action against the Director of the USPTO in district court, where the applicant may present additional evidence. 35 U.S.C. 145. If the applicant elects to bring such an action, "[a]ll the expenses of the proceedings shall be paid by the applicant." Ibid. The question presented is as follows: 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.

Counsel of record

For petitioner
Noel John Francisco
Jones Day

For respondent
Morgan Chu
Irell & Manella LLP

Case

Conference history
Distributed for 2 conferences

Amicus briefs
11 merits
(3 supporting pet./neither, 8 respondent)

Argument & decision

Argued October 7, 2019 — Malcolm L. Stewart · Mr. Morgan Chu. Audio and transcript

Decided December 11, 2019. Opinion by Sotomayor.

Proceedings

  1. Jan 13 2020
    JUDGMENT ISSUED.
  2. Dec 11 2019
    Adjudged to be AFFIRMED. Sotomayor, J., delivered the opinion for a unanimous Court.
  3. Oct 07 2019
    Argued. For petitioner: Malcolm L. Stewart, Deputy Solicitor General, Department of Justice, Washington, D. C. For respondent: Mr. Morgan Chu, Los Angeles, Cal.
  4. Aug 27 2019
    Complete record located on PACER (U.S.C.A. Federal Circuit and U.S.D.C. Eastern Dist, VA).
  5. Aug 16 2019
    Record requested from the U.S.C.A. Federal Circuit.
  6. Aug 14 2019
    Reply of petitioner Laura Peter, Deputy Director, Patent and Trademark Office filed. (Distributed)
  7. Aug 01 2019
    CIRCULATED
  8. Jul 22 2019
    Brief amicus curiae of The American Bar Association filed.
  9. Jul 22 2019
    Brief amicus curiae of Intellectual Property Owners Association filed.
  10. Jul 22 2019
    Brief amicus curiae of The Intellectual Property Law Association of Chicago filed.
  11. Jul 22 2019
    Brief amici curiae of The Association of Amicus Counsel, et al. filed.
  12. Jul 22 2019
    Brief amicus curiae of The International Trademark Association filed.
  13. Jul 22 2019
    Brief amicus curiae of American Intellectual Property Law Association filed.
  14. Jul 22 2019
    Brief amicus curiae of Association of the Bar of the City of New York filed.
  15. Jul 22 2019
    Brief amicus curiae of IEEE-USA filed.
  16. Jul 15 2019
    Brief of respondent NantKwest, Inc. filed.
  17. Jul 01 2019
    SET FOR ARGUMENT on Monday, October 7, 2019.
  18. Jun 25 2019
    Brief amicus curiae of New York Intellectual Property Law Association filed.
  19. May 24 2019
    Brief amicus curiae of Federal Circuit Bar Association in support of neither party filed.
  20. May 23 2019
    Brief amicus curiae of R Street Institute filed.
  21. May 17 2019
    Brief of petitioner Laura Peter, Deputy Director, Patent and Trademark Office, filed.
  22. May 17 2019
    Joint appendix filed.
  23. May 08 2019
    Letter of substitution of petitioner received.
  24. Apr 03 2019
    Motion to extend the time to file the briefs on the merits is granted. The time to file joint appendix and petitioner's brief on the merits is extended to and including May 17, 2019. The time to file respondent's brief on the merits is extended to and including July 15, 2019.
  25. Mar 26 2019
    Motion for an extension of time to file the briefs on the merits filed.
  26. Mar 04 2019
    Petition GRANTED.
  27. Feb 25 2019
    DISTRIBUTED for Conference of 3/1/2019.
  28. Feb 06 2019
    DISTRIBUTED for Conference of 2/22/2019.
  29. Feb 04 2019
    Reply of petitioner Andrei Iancu filed.
  30. Jan 22 2019
    Brief of respondent NantKwest, Inc. in opposition filed.
  31. Dec 21 2018
    Petition for a writ of certiorari filed. (Response due January 22, 2019)
  32. Nov 14 2018
    Application (18A369) granted by The Chief Justice extending the time to file until December 21, 2018.
  33. Nov 13 2018
    Application (18A369) to extend further the time from November 23, 2018 to December 21, 2018, submitted to The Chief Justice.
    Proof of ServiceWritten Request
  34. Oct 05 2018
    Application (18A369) granted by The Chief Justice extending the time to file until November 23, 2018.
  35. Oct 04 2018
    Application (18A369) to extend the time to file a petition for a writ of certiorari from October 25, 2018 to November 23, 2018, submitted to The Chief Justice.
    Main DocumentProof of Service