Amicus Curiae Brief — Laura Peter, Deputy Director, Patent and Trademark Office, Petitioner v. NantKwest, Inc.

No. 18-801

In the

Supreme Court of the United States

LAURA PETER, DEPUTY DIRECTOR, UNITED

STATES PATENT AND TRADEMARK OFFICE,

Petitioner,

v.

NANTKWEST, INC.,

Respondent.

On Writ of Certiorari to the United States

Court of A ppeals for the Federal Circuit

BRIEF OF AMICUS CURIAE FEDERAL

CIRCUIT BAR ASSOCIATION IN

SUPPORT OF NEITHER PARTY

William P. Atkins

Counsel of Record

Pillsbury Winthrop Shaw Pittman LLP

1650 Tysons Boulevard, 14th Floor

McLean, VA 22102

(703) 770-7900

william.atkins@pillsburylaw.com

Counsel for Amicus Curiae

Federal Circuit Bar Association

May 24, 2019

288817

A

(800) 274-3321 • (800) 359-6859

i

TABLE OF CONTENTS

Page

TABLE OF CONTENTS . . . . . . . . . . . . . . . . . . . . . . . . . . i

TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . . iv

STATEMENT OF INTEREST OF

AMICUS CURIAE . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1

SUMMARY OF THE ARGUMENT . . . . . . . . . . . . . . . 2

ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2

1.

“Expenses” Is Ambiguous, at Best . . . . . . . . . . . 2

(a) 1839: Congress First Adds “Expenses”

to the Patent Act . . . . . . . . . . . . . . . . . . . . . . 2

(b) 1870: Cong ress Requi res Lega l

Qualifications within the USPTO

and the USPTO Appears in Court . . . . . . . . 3

(c) 1946: Congress Added Attorneys’

Fees in the Predecessor of 35 U.S.C.

§ 285, but Not for USPTO Attorneys . . . . . 4

(d) 1952: Patent Act Includes 35 U.S.C.

§§ 145 and 285 . . . . . . . . . . . . . . . . . . . . . . . . . 5

(e) 19 8 4: Patent Act Adds A nother

Attorneys’ Fees Provision . . . . . . . . . . . . . . . 6

ii

Table of Contents

Page

(f) 1999: Congress Adds More Attorneys’

Fees Provisions, Not in § 145 . . . . . . . . . . . . 7

(g) 2 015: USP TO S eeks Att or neys’

Fees Under § 145 . . . . . . . . . . . . . . . . . . . . . . 7

2.

The American Rule . . . . . . . . . . . . . . . . . . . . . . . . 8

3.

“Expenses” Does Not Include Attorneys’

Fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

(a) Congress Does Not Include Attorneys’

Fees in the Statute . . . . . . . . . . . . . . . . . . . . . 9

(i) Section 145 does not say attorneys’

fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

(ii) Section 285 does say attorneys’ fees . . 10

(iii) Section 145 lacks the “clea r

support” required to overcome

the American Rule presumption . . . . 13

(b) Arguments over Various Historical

Definitions of the Word “Expenses”

Are Inapposite . . . . . . . . . . . . . . . . . . . . . . . 13

(c) The Longstanding Practice of the

USPTO Has Been to Not Ask for

Attorney’s Fees . . . . . . . . . . . . . . . . . . . . . . 14

iii

Table of Contents

Page

(d) Awarding Attorneys’ Fees to the USPTO

Conflicts with the Provisions and Purpose

of the Equal Access to Justice Act . . . . . . . 14

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15

iv

TABLE OF CITED AUTHORITIES

Page

Cases

Alyeska Pipeline Service Co. v.

Wilderness Society,

421 U.S. 240 (1975) . . . . . . . . . . . . . . . . . . . . . . . . . . 8-9

Arcambel v. Wiseman,

3 U.S. 306 (1796) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

Baker Botts v. ASARCO,

135 S. Ct. 2158 (2015) . . . . . . . . . . . . . . . . . . . . . . . . 8, 9

Bates v. United States,

522 U.S. 23 (1977) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12

Booking.com B.V. v. Matal,

No. 1:16-cv-425 (LMB/IDD), 2017 WL 4853755

(E.D. Va. 2017) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8

Dodd v. United States,

545 U.S. 353 (2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

Hardt v. Reliance Standard Life Ins. Co.,

560 U.S. 242 (2010) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8

Hartford Underwriters Ins. Co. v.

Union Planters Bank, N.A.,

530 U.S. 1 (2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

Keene Corp. v. United States,

508 U.S. 200 (1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

v

Cited Authorities

Page

NantKwest, Inc. v. Matal,

860 F.3d 1352 (Fed. Cir. 2017) . . . . . . . . . . . . . . . . . . . 2

Perrin v. United States,

444 U.S. 37 (1979) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

Realvirt, LLC v. Lee,

220 F. Supp. 3d 695 (E.D. Va. 2016) . . . . . . . . . . . . . . 8

Robertson v. Cooper,

46 F.2d 766 (4th Cir. 1931) . . . . . . . . . . . . . . . . . . . . . . 5

Russello v. United States,

464 U.S. 16 (1983) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

Sandifer v. U.S. Steel Corp.,

134 S. Ct. 870 (2014) . . . . . . . . . . . . . . . . . . . . . . . . . . 13

Shammas v. Focarin,

784 F.3d 219 (4th Cir. 2015) . . . . . . . . . . . . . . . . 8, 9, 13

Summit Valley Indus. Inc. v. Local 112,

456 U.S. 717 (1982) . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

United States v. Hohri,

482 U.S. 64 (1987) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

United States v. Wong Kim Bo,

472 F.2d 720 (5th Cir. 1972) . . . . . . . . . . . . . . . . . . . . 10

vi

Cited Authorities

Page

Zenith Radio Corp. v. United States,

437 U.S. 443 (1978) . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

Statutes and Codes

Patent Act of 1839,

5 Stat. 353-355 § 10 (1839) . . . . . . . . . . . . . . . . . . . . 2, 3

Patent Act of 1870,

16 Stat. 198-217, Section 10 (1870) . . . . . . . . . . . . . . . . 3

16 Stat., Section 52 (1870) . . . . . . . . . . . . . . . . . . . . . . . 3

Patent Act of 1946

Pub. L. No. 587, Ch. 726, 60 Stat. 778 . . . . . . . . . 5, 10

Patent Act of 1952,

66 Stat. 792, Section 145 (1952) . . . . . . . . . . . . . . . . . . 5

Patent Act of 1984,

Pub. L. No. 98-417, 98 Stat. 1603,

Section 202 (1984) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6

Patent Act of 1999,

Pub. L. No. 106-113, 113 Stat. 1536,

1501A-555 (1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

United States Code,

Title 12, Section 1786(p) . . . . . . . . . . . . . . . . . . . . . . . 12

Title 28, Section 2412 . . . . . . . . . . . . . . . . . . . . . . . . . 14

Title 35, Section 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

Title 35, Section 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

Title 35, Section 24 . . . . . . . . . . . . . . . . . . . . . . . . . . . 11

vii

Cited Authorities

Page

Title 35, Section 63 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5

Title 35, Section 70 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

Title 35, Section 145 . . . . . . . . . . . . . . . . . . . . . . passim

Title 35, Section 146 . . . . . . . . . . . . . . . . . . . . . 8, 10, 11

Title 35, Section 271(e)(4) . . . . . . . . . . . . . . . . . . . . . 6, 7

Title 35, Section 273 . . . . . . . . . . . . . . . . . . . . . . . . . . . 7

Title 35, Section 273(f) . . . . . . . . . . . . . . . . . . . . . . . . . 7

Title 35, Section 285 . . . . . . . . . . . . . . . . . . . . . . passim

Title 35, Section 297 . . . . . . . . . . . . . . . . . . . . . . . . . . 12

Title 35, Section 297(b) . . . . . . . . . . . . . . . . . . . . . . . . 12

Title 35, Section 297(b)(1) . . . . . . . . . . . . . . . . . . . . . . . 7

Title 42, Section 4654(a) . . . . . . . . . . . . . . . . . . . . . . . 12

Other Authorities

Changes in Personnel in the Patent Office,

18 J. Pat. Off. Soc’y 79 (1936) . . . . . . . . . . . . . . . . . . . . 4

Daniel G. Cullen, Recover y of Prof its

Under R.S. 4921, as Amended, 29 J. Pat.

Off. Soc’y 148, 150 (Feb. 1947) . . . . . . . . . . . . . . . . . . . 5

New Editor/Retirement of Mr. Hostetler, 17 J.

Pat. Off. Soc’y 607 (1935) . . . . . . . . . . . . . . . . . . . . . . . 4

Of General and Personal Interest, 4 J. Pat.

Off. Soc’y 507, [ii] (1922) . . . . . . . . . . . . . . . . . . . . . . . . 4

P.J. Federico, Commentary on the New Patent

Act, 75 J. Pat. & Trademark Off. Soc’y 161

(Nov. 1975) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6, 10

1

STATEMENT OF INTEREST OF AMICUS CURIAE1

Amicus Curiae Federal Circuit Bar Association

(“FCBA”) is a national bar organization with over 2,600

members from across the country, all of whom practice or

have an interest in the decisions of the Court of Appeals

for the Federal Circuit (“Federal Circuit”). The FCBA

provides a forum for common concerns and dialogue

between the bar and judges of the federal courts. One

of the FCBA’s purposes is to offer assistance and advice

to the federal courts, including briefs amicus curiae, on

matters affecting practice before this Supreme Court,

the Federal Circuit and other tribunals that address

comparable subject matter.

The FCBA has a substantial interest in this case due

to the need to reflect the important views of the Federal

Circuit bar, the patent bar, intellectual property holders,

and industry. This submission seeks to assist the Court in

interpreting 35 U.S.C. § 145 in the manner most consistent

with the language of the statute itself, the legislative

history, and the longstanding practice of the United States

Patent and Trademark Office.

1. No person other than the amicus curiae or their

counsel has made any monetary contribution to the preparation

or submission of this brief. Further, no counsel for any party

authored this brief in whole or in part, nor did any government

member of the FCBA participate in the drafting, consideration,

or authorization of this brief. In accordance with Rule 37(3)(a), the

parties have consented to the filing of this amicus curiae brief in

support of neither party.

2

SUMMARY OF THE ARGUMENT

The term “expenses” under 35 U.S.C. § 145 does

not include, and has never been interpreted to include

attorneys’ fees. According to our research, the United

States Patent and Trademark Office (“USPTO”) did

not seek attorneys’ fees under 35 U.S.C. § 145 and its

predecessor statutes before 2015, a span of well over a

century. For these many years, Congress knew that the

USPTO was not claiming awards of attorney fees under

these statutes, and did nothing to change § 145 to clarify

that the statute’s “expenses” should include attorneys’

fees. In light of this history, arguments over various

definitions of the word “expenses” are inapposite.

ARGUMENT

1. “Expenses” Is Ambiguous, at Best

From the dawn of patent law in the United States

until 2015, the USPTO never sought attorneys’ fees from a

dissatisfied patent applicant who appealed an unfavorable

decision. In 2015, the USPTO changed course, moving to

recover the prorated salaries of two attorneys and one

paralegal for defending a suit against the Commissioner

of Patents under § 145. NantKwest, Inc. v. Matal, 860 F.3d

1352, 1353 (Fed. Cir. 2017). The history of 35 U.S.C. § 145

suggests that “expenses” was never meant to, nor was it

ever previously understood to, include attorneys’ fees.

(a) 1839: Congress First Adds “Expenses” to the

Patent Act

In 1839, Congress amended former § 16 of the 1836

Act, adding that:

3

upon appea ls f rom the decision of [the

Commissioner of Patents], … and in all cases

where there is no opposing party, a copy of the

bill shall be served upon the Commissioner

of Patents, when 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.

Patent Act of 1839, 5 Stat. 353-355 § 10 (1839) (emphasis

added).

(b) 1870: Congress Requires Legal Qualifications

within the USPTO and the USPTO Appears in

Court

In 1870, the Patent Act specified the USPTO officers’

qualifications for the first time; “the examiners-in-chief

shall be persons of competent legal knowledge and

scientific ability . . . .” Patent Act of 1870, 16 Stat. 198-217

§ 10 (1870). Thus examiners-in-chief, at least, were

required to have legal knowledge.

The 1870 Act, as then amended, read “in all cases

where there is no opposing party a copy of the bill shall

be served on the commissioner, and all the expenses of the

proceeding shall be paid by the applicant, whether the final

decision is in his favor or not.” Id. at § 52 (1870) (emphasis

added). Thus, although attorney examiners-in-chief were

specifically provided for in the Act, Congress said nothing

about including fees for them within “all the expenses.” 2

2. The Brief for the Petitioner mentions outside counsel fees

incurred by the Commissioner of the USPTO in 1845 in connection

4

The activities of the Patent Office then extended into

courts. For example, Webster S. Ruckman joined the

Patent Office in 1893 and during his eight years as a Law

Examiner, he “represented the Patent Office in some

seventy cases before the courts.” Changes in Personnel in

the Patent Office, 18 J. Pat. Off. Soc’y 79, 81 (1936) (article

on Judge Ruckman’s retirement). In 1922, Theodore A.

Hostetler became the first Solicitor of the USPTO, when

the Office of Solicitor was created. New Editor/Retirement

of Mr. Hostetler, 17 J. Pat. Off. Soc’y 607, 608 (1935); see

also Of General and Personal Interest, 4 J. Pat. Off. Soc’y

507, [ii] (1922). He “had been a Law Examiner” before

becoming Solicitor and “[t]he nature of Mr. Hostetler’s

duties [was] the same, but the official designation of his

position [as Solicitor was] made to correspond with his

duties.” Id. “As solicitor he handled all the court work

for the Patent Office – mostly appeals from the Patent

Office decisions and bills of equity under R.S. 4915, in the

Supreme Court of the District of Columbia, the Court of

Appeals of the District of Columbia, the Court of Customs

and Patent Appeals and the Federal Courts of the Fourth

Circuit.” Id.

(c) 1946: Congress Added Attorneys’ Fees in the

Predecessor of 35 U.S.C. § 285, but Not for

USPTO Attorneys

In 1946, Congress amended 35 U.S.C. § 70, the

predecessor of § 285, giving courts the “discretion [to]

with two suits in equity by patent applicants and referenced as

“[t]he expenses of the office” in 1846. Report of the Commissioner

of Patents for the Year 1846, H. Doc. No. 29-52 at 1 (2d Sess. 1847)

(cited at Petitioner’s Br. at pg. 23, footnote 5). Those attorneys’

fees do not appear to have been asserted against or billed to the

patent applicants involved in the two suits in equity in 1845.

5

award reasonable attorney’s fees to the prevailing party

upon the entry of judgment on any patent case.” Pub. L.

No. 587, Ch. 726, 60 Stat. 778 (1946). The accompanying

Senate Report 1503 provides little guidance, but states

that “[i]t is not contemplated that the recovery of

attorney’s fees will become an ordinary thing in patent

suits, but the discretion given the court in this respect …

will discourage an infringer of the patent thinking all he

would be required to pay if he loses the suit would be a

royalty.” See Daniel G. Cullen, Recovery of Profits Under

R.S. 4921, as Amended, 29 J. Pat. Off. Soc’y 148, 150 (Feb.

1947). Thus, even where Congress explicitly authorized

attorneys’ fees in the Patent Act, Congress limited the

availability of those fees.

(d) 1952: Patent Act Includes 35 U.S.C. §§ 145 and

285

35 U.S.C. § 145 established recourse for an “applicant

dissatisfied with the decision of the Board of Appeals,”

allowing the applicant a “remedy by civil action against

the Commissioner in the United States District Court

for the District of Columbia.” 35 U.S.C. § 145. Here,

Congress continued to provide that “[a]ll the expenses of

the proceedings shall be paid by the applicant,” but again

expressly omitted any reference to attorneys’ fees. Patent

Act of 1952, 66 Stat. 792 § 145 (1952).

There is no indication that the USPTO had ever

previously sought attorneys’ fees, or requested that they

be covered by the statute. See, e.g., Robertson v. Cooper,

46 F.2d 766, 769 (4th Cir. 1931) (noting Congress intended

“expenses” to include more than what is ordinarily

included in “costs” under 35 U.S.C. § 63, and identifying

the issue as only whether the applicant was liable for

6

“the traveling expenses incurred by counsel for the

Commissioner in attending to the taking of depositions on

behalf of the plaintiff in California.” No mention is made

of attorneys’ fees) (Emphasis added).

In contrast to the “expenses” language of § 145,

Congress provided in § 285 that “[t]he court in exceptional

cases may award reasonable attorney fees to the

prevailing party.” 35 U.S.C. § 285 (emphasis added). And,

“[f]rom 1874 to 1952 over sixty Acts of Congress relating

to patents have been passed.” P.J. Federico, Commentary

on the New Patent Act, 75 J. Pat. & Trademark Off. Soc’y

161, 166 (Nov. 1975). Given the comprehensive scope of the

1952 Act, Congress could have amended “expenses” in

§ 145, as it did in § 285, to specify the inclusion of attorneys’

fees if that is what Congress intended, but Congress did

not do so.

(e) 1984: Patent Act Adds Another Attorneys’ Fees

Provision

In 1952, § 285 contained the only provision for

attorneys’ fees within the Patent Act. In 1984, the Act was

amended again, adding § 271(e)(4), which provides “[t]he

remedies prescribed by subparagraphs (A), (B), (C), and

(D) are the only remedies which may be granted by a court

for an act of infringement described in paragraph (2),

except that a court may award attorney fees under section

285.” Pub. L. No. 98-417, 98 Stat. 1603 § 202 (1984). Again,

no reference was made to § 145 or to including attorneys’

fees under that section.

7

(f) 1999: Congress Adds More Attorneys’ Fees

Provisions, Not in § 145

In 1999, Congress added two more provisions

referring to attorneys’ fees. Section 273(f), like § 271(e)

(4), now provided for attorneys’ fees by reference to

§ 285. Pub. L. No. 106-113, 113 Stat. 1536, 1501A-555 (1999)

(“If the defense under this section is pleaded by a person

who is found to infringe the patent and who subsequently

fails to demonstrate a reasonable basis for asserting the

defense, the court shall find the case exceptional for the

purpose of awarding attorney fees under section 285.”).

The second attorneys’ fees provision added to the

Act in 1999 appears in 35 U.S.C. § 297(b)(1), Pub. L. No.

106-113, 113 Stat. 1536, 1501A-552 (1999). Section 297(b)

(1) establishes a civil remedy for an injured customer

who enters into a contract with an invention promoter.

In addition to actual or statutory damages, the injured

party may also recover “reasonable costs and attorneys’

fees.” 35 U.S.C. § 297(b)(1). In contrast to §§ 271(e)(4)

and 273, § 297(b)(1) provides for attorneys’ fees without

reference to § 285. Again, Congress demonstrated its

ability to specify an intent to include attorneys’ fees, and

chose not to specify such an intent for the “all expenses”

language in § 145.

(g) 2015: USPTO Seeks Attorneys’ Fees Under

§ 145

According to legal research by various members of

the amicus, the USPTO did not seek attorneys’ fees under

§ 145 or its predecessor statutes from 1870 until 2015, a

8

span of 145 years. 3 That is when the USPTO first moved

for expenses, including attorneys’ fees, against NantKwest

in this case. Since adopting this new practice, the USPTO

has sought attorneys’ fees under § 145 at least two more

times. See, e.g., Booking.com B.V. v. Matal, No. 1:16-cv-425

(LMB/IDD), 2017 WL 4853755 (E.D. Va. 2017); Realvirt,

LLC v. Lee, 220 F. Supp. 3d 695 (E.D. Va. 2016). This

new practice contrasts with the absence of such efforts

in the preceding 145 years, where the USPTO must have

historically understood “expenses” within § 145 (and its

predecessor statutes) to not include “attorneys’ fees.”

2. The American Rule

The “basic point of reference when considering the

award of attorney’s fees is the bedrock principle known as

the American Rule: Each litigant pays his own attorney’s

fees, win or lose, unless a statute or contract provides

otherwise.” Baker Botts v. ASARCO, 135 S. Ct. 2158, 2164

(2015) (quoting Hardt v. Reliance Standard Life Ins. Co.,

560 U.S. 242, 252-53 (2010)). “The American Rule has

roots in our common law reaching back to at least the 18th

century.” Baker Botts, 135 S. Ct. at 2163.

The American Rule applies here. In Shammas v.

Focarino, the Fourth Circuit relied upon an erroneously

restrictive description of the American Rule: “the

prevailing party may not recover attorneys’ fees from the

losing party.” 784 F.3d 219, 223 (4th Cir. 2015) (quoting

Alyeska Pipeline Service Co. v. Wilderness Society, 421

3. The members of the amicus reviewed citing references of

§§ 145 and 146 and found no prior cases at the appellate or trial

courts that mention the USPTO seeking attorneys’ fees. See also

footnote 2 on page 3 of this brief.

9

U.S. 240, 245 (1975) (emphasis added)). This reading is

unnecessarily narrow, particularly because this Court, in

its more recent Baker Botts decision, defined the American

Rule as an affirmative obligation of “each party,” rather

than as a limitation on a prevailing party. Baker Botts,

135 S. Ct. at 2164 (citing Arcambel v. Wiseman, 3 U.S.

306 (1796)).

There is a strong presumption favoring the American

Rule. “[W]here the American Rule applies, Congress may

displace it only by expressing its intent to do so ‘clearly

and directly.’” Shammas, 784 F.3d at 223. This Court

has only recognized departures from the American Rule

in “specific and explicit provisions for the allowance of

attorneys’ fees under selected statutes.” Baker Botts, 135

S. Ct. at 2164 (quoting Alyeska Pipeline, 421 U.S. at 260).

Because the legislative history strongly suggests that

“expenses” in § 145 is exclusive of attorneys’ fees, § 145 is

insufficient to overcome the American Rule’s presumption

that each party pays its own attorneys’ fees.

3. “Expenses” Does Not Include Attorneys’ Fees

(a) Congress Does Not Include Attorneys’ Fees in

the Statute

(i) Section 145 does not say attorneys’ fees

Congress had many opportunities to include attorneys’

fees language between 1836, when Congress first added

the remedy bill in equity to the Patent Act, and 2015, when

the USPTO first sought attorneys’ fees from a dissatisfied

patent applicant. And yet, § 145 does not state that it

includes attorneys’ fees. Other statutes within 35 U.S.C.

certainly and clearly do include attorneys’ fees.

10

(ii) Section 285 does say attorneys’ fees

In contrast to § 145, Congress explicitly added

“attorney fees” in § 285. The § 285 statute was created

in 1946, and at that time Congress did not modify § 145’s

predecessor to include the same attorneys’ fees language.

Pub. L. No. 587, 60 Stat. 778 (1946).

The Patent Act was amended again in 1952, and at

that time Congress split the predecessor of § 145 into two

sections, §§ 145 and 146. P.J. Federico, Commentary on

the New Patent Act, 75 J. Pat. & Trademark Off. Soc’y

161, 200 (Nov. 1975). Congress chose to retain the express

reference to “attorney fees” in § 285, but chose not to

easily write “attorney fees” into § 145.

“Where 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 inclusion

or exclusion.” Russello v. United States, 464 U.S. 16, 23

(1983); United States v. Wong Kim Bo, 472 F.2d 720, 722

(5th Cir. 1972); see also Keene Corp. v. United States,

508 U.S. 200, 208 (1993) (noting the “duty to refrain from

reading a phrase into the statute when Congress has left

it out.”). Again, Congress had multiple opportunities to

amend the Patent Act. Although Congress added and

amended § 285 and others to include specific attorneys’

fees language, the exclusion of that language from § 145

must be presumed to be intentional.

“The starting point in every case involving construction

of a statute is the language itself.” United States v. Hohri,

482 U.S. 64, 68 (1987). “[W]hen the statute’s language is

11

plain, the sole function of the courts–at least where the

disposition required by the text is not absurd–is to enforce

it according to its terms.” Dodd v. United States, 545 U.S.

353, 359-60 (2005) (quoting Hartford Underwriters Ins.

Co. v. Union Planters Bank, N.A., 530 U.S. 1, 6 (2000)).

A comparison of the various sections of the Patent

Act is illustrative. Congress specified that “the court . . .

may award reasonable attorney fees” in § 285. 35 U.S.C.

§ 285 (emphasis added). However, like § 145, § 2 of the

Patent Act uses “expenses” in the context of subsistence

and travel expenses. 35 U.S.C. § 2 (“Office is authorized

to expend funds to cover the subsistence expenses and

travel-related expenses, including per diem, lodging

costs, and transportation costs, of persons attending such

programs who are not Federal employees.”) (emphasis

added). There, Congress understood that rather than

attorneys’ fees, “expenses” refers to expenditures

collateral to legal services, not the legal services

themselves. See also 35 U.S.C. § 5 (“While away from

such member’s home or regular place of business such

member shall be allowed travel expenses, including per

diem in lieu of subsistence….”); 35 U.S.C. § 24 (“Every

witness subpoenaed and in attendance shall be allowed

the fees and traveling expenses allowed to witnesses

attending the United States district courts.”). Similarly,

§ 146 provides that in derivation proceedings, “the record

in the Patent and Trademark Office shall be admitted on

motion of either party upon the terms and conditions as

to costs, expenses, and the further cross-examination of

the witnesses as the court imposes.” 35 U.S.C. § 146. In

none of these examples does the Patent Act provide for

attorneys’ fees – just like in § 145. Finally, Congress again

demonstrated its ability to provide for attorneys’ fees in

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§ 297, allowing for recovery of damages “in addition to

reasonable costs and attorneys’ fees.” 35 U.S.C. § 297(b).

Congress has repeatedly distinguished between

“expenses” and “attorneys’ fees” by clarifying within

statutes whether attorneys’ fees are available separate

from expenses. See, e.g., 12 U.S.C. § 1786(p) (“Any court

having jurisdiction … may allow to any such party such

reasonable expenses and attorneys’ fees…”); 42 U.S.C.

§ 4654(a) (providing for reimbursement of “reasonable

costs, disbursements, and expenses, including reasonable

attorney, appraisal, and engineering fees, actually

incurred because of the condemnation proceedings.”).

Here, Congress’ decision to specify “expenses” without

any suggestion of “attorneys’ fees” in § 145 is a clear

indication of Congress’ intent to exclude attorneys’

fees, especially over the immense amount of time that

the statute has been in force. Further, courts should

“ordinarily resist reading words or elements into a statute

that do not appear on its face.” Bates v. United States, 522

U.S. 23, 29 (1977). Again, Congress did not provide for

attorneys’ fees in § 145. Congress knew how to distinguish

between expenses and attorneys’ fees, and did not do so

here. This Court need not read “attorneys’ fees” into § 145

where Congress chose not to include such fees and the

USPTO has not asserted the inclusion of such in 145 years.

The possibility that various terms may or may not

include attorneys’ fees supports the ambiguity in § 145.

This is particularly true where, as discussed above,

Congress has repeatedly clarified the word “expenses”

with the addition of the phrase “attorneys’ fees,” but

purposely omitted “attorneys’ fees” in § 145.

13

(iii) Section 145 lacks the “clear support”

required to overcome the American Rule

presumption

There is a strong presumption in favor of applying

the American Rule. See Shammas, 784 F.3d at 223.

When determining whether a statute overcomes that

presumption, courts will look for “clear support” for such

a construction on the statute’s face or in the legislative

history. Summit Valley Indus. Inc. v. Local 112, 456 U.S.

717, 724 (1982). Absent such clear support, the statute will

not overcome the presumption. See id.

For the reasons discussed above, the meaning of

“expenses” in § 145 is ambiguous at best, has no support

in Congress’ many amendments of the patent Acts, and

thus cannot overcome the American Rule presumption.

Congress could have simply said “including attorney fees,”

and Congress’ choice to be indirect and allusive—rather

than direct and specific—fails the test of explicitness

required to overcome the presumption that the American

Rule applies.

(b) Arguments over Various Historical Definitions

of the Word “Expenses” Are Inapposite

“It is a ‘fundamental canon of statutory construction’

that, ‘unless otherwise defined, words will be interpreted

as taking their ordinary, contemporary, common

meaning.’” Sandifer v. U.S. Steel Corp., 134 S.Ct. 870,

876 (2014) (quoting Perrin v. United States, 444 U.S.

37, 42 (1979)). Attempting to apply that canon to the

question at bar, the majority and the dissent cite various

meanings at different points of the 181-year history of the

14

statute. Unfortunately, these many definitions supply only

conflicting evidence that merely serves to obscure, we

submit, the true answer—the answer given by Congress’

long history of declining to insert “attorneys’ fees” into

the statue in question—and also the USPTO’s long history

of administrative interpretation.

(c) The Longstanding Practice of the USPTO Has

Been to Not Ask for Attorney’s Fees

A “longstanding and consistent administrative

interpretation is entitled to considerable weight.” Zenith

Radio Corp. v. United States, 437 U.S. 443, 450 (1978). For

145 years until 2015, the USPTO appears to have never

sought attorneys’ fees under the “expenses” provision of

§ 145. It is difficult to imagine a more “longstanding and

consistent administrative interpretation,” and under that

interpretation, “expenses” must not include attorneys’

fees.

(d) Awarding Attorneys’ Fees to the USPTO

Conflicts with the Provisions and Purpose of

the Equal Access to Justice Act

The Equal Access to Justice Act (“EAJA”) is a

statutory exception to the American Rule. It allows

private litigants to recover attorneys’ fees in successful

actions brought by or against federal agencies. The EAJA

also serves to prevent unsuccessful litigants from being

further burdened by having to pay the government’s

attorneys’ fees. See 28 U.S.C. § 2412. Whereas the purpose

of the EAJA is to avoid penalizing parties for prosecuting

lawsuits, including attorneys’ fees is contrary to that

purpose. This is particularly applicable where a central

15

reason for pursuing an appeal under § 145 is to admit

additional evidence into the record. A dissatisfied patent

applicant should not have to pay the USPTO’s attorneys’

fees merely for trying to complete the record.

CONCLUSION

For the reasons provided above, the Court should hold

that the “expenses” provision in 35 U.S.C. § 145 does not

authorize an award of attorneys’ fees of the USPTO to

the USPTO.

Respectfully submitted,

William P. Atkins

Counsel of Record

Pillsbury Winthrop Shaw Pittman LLP

1650 Tysons Boulevard, 14th Floor

McLean, VA 22102

(703) 770-7900

william.atkins@pillsburylaw.com

Counsel for Amicus Curiae

Federal Circuit Bar Association

May 24, 2019