Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. I've been on a non-IP assignment today, but I've still got some news and commentary to share:

• Five takeaways from Monday's Supreme Court arguments in Peter v. NantKwest.

• A few notable cert denials from the Supreme Court's long conference.

• New additions at McDonnell, Boehnen, Hurlbert & Berghoff, as well as Noroozi PC.

As always, you can email me your feedback and follow me on Twitter.

Irell & Manella's Morgan Chu.

 

Five Takeaways from the NantKwest Arguments

The Supreme Court heard arguments Monday on whether the USPTO can recover its in-house attorneys fees in Section 145 proceedings—the district court suits some dissatisfied patent applicants choose instead of direct appeal to the Federal Circuit. Section 145 of the Patent Act and its predecessor statutes going back to the 19th century state that "all the expenses of the proceedings shall be paid by the applicant." The PTO began arguing in 2013 that the language covers its attorneys fees. NantKwest, the biotech company founded by billionaire Patrick Soon-Shiong, disagrees and has gone to the Supreme Court to get back about $65,000 billed by the PTO.

Here are five takeaways from Monday's argument in Peter v. NantKwest:

➤ Introducing Morgan Chu (maybe you've heard of him). The Irell & Manella IP legend has tried cases all over the country and appeared frequently at the Federal Circuit. But Monday was his first argument at One First Street. "You probably, I'm just looking at your resume here, have experience in this patent area. Is that true?" Justice Stephen Breyer asked at one point. I'm not sure from the cold transcript if it was deadpan humor or a serious query. Either way, I liked Chu's response: "Yes." Chu wisely did more listening than talking. He kept his introductory marks under the court's new two-minute limit, then simply said, "And I would invite questions from the Court."

➤ It wasn't a good day for the PTO. Justices Breyer, Ruth Bader Ginsburg, Sonia Sotomayor, Neil Gorsuch and Brett Kavanaugh all had hostile questions for Deputy Solicitor General Malcolm Stewart, who was defending the PTO. Stewart repeatedly acknowledged that the PTO's failure to interpret the statutory provision as including attorneys fees for some 160 years cut against it. "There's no question this is an atmospherically unhelpful point for us," he said at one point.

➤ On the other hand, it was a fine day for Federal Circuit Judge Kara Stoll. The Fourth Circuit and, originally, a Federal Circuit panel majority both endorsed the PTO's position. That might have carried the day had the Federal Circuit's junior justice not penned a dissent that led to en banc rehearing. Stoll ended up crafting a 7-4 decision that caused a split with the Fourth Circuit and which the Supreme Court now sounds poised to adopt.

➤ The justices are down with Chevron deference, so long as they're deferring to agency officials from 100 years ago. You may have heard that the Supreme Court's conservative majority is growing increasingly hostile to Chevron deference. On the contrary! On Monday several suggested that the PTO's interpretation of Section 145—from 1850 to 2012—ought to carry some weight. If an agency such as the PTO "for some period of time do[es] not advance an interpretation of the statute that would benefit them, and a period of time passes, should we adopt a rule that that's strong evidence of what the statute means?" Justice Samuel Alito asked. As for what the PTO thinks today? Fuhgeddabout it.

➤ At least this one won't be blamed on Andrei Iancu. The PTO director has joked in the past that he had barely assumed office before the Supreme Court came down with SAS v. Iancu, hanging his name on a loss for a policy he inherited from his predecessors. He presumably felt the same way when court handed down Iancu v. Brunetti last summer. But Irell is Iancu's former law firm, so he's recused from NantKwest v. Peter. PTO Deputy Director Laura Peter would be on the hook for the L in this one, even though she was in private practice in Silicon Valley when the PTO put its fee policy in place.

Wilmer Hale's Bill Lee and McAndrews' Sharon Hwang

 

Big-Dollar Patent Cases Reach Closure

It was the best of Supreme Court times for Morgan Chu, it was the worst of times.

The court put out a lengthy list of orders Monday from its "long conference" of Oct. 1. Among the many denials of certiorari was the Wisconsin Alumni Research Foundation's attempt to reinstate a $506 million patent infringement judgment over semiconductor technology against Apple.

An Irell team led by Chu won the judgment in a Wisconsin federal court trial in 2015, but Apple and Wilmer Cutler Pickering Hale and Dorr's Bill Lee persuaded the Federal Circuit last year there was insufficient evidence of infringement. It's a tough blow for WARF and Irell, but they can still take solace in the $110 million they recovered for the same patents in a separate case against Intel.

Other notable denials:

➤ WilmerHale didn't escape some pain of its own. The Supreme Court turned away its bid to get a $254 million judgment against client Zimmer Inc. thrown out. Medical device competitor Stryker Corp., led by Sharon Hwang of McAndrews, Held & Malloy, had already been to the Supreme Court once, helping make new law on enhanced damages for willful infringement.

➤ I thought Acorda v. Roxane, the Federal Circuit decision holding that a blocking patent could counter secondary indicia of non-obviousness, might be a patent blockbuster for Term 2019. Gibson Dunn & Crutcher brought Acorda's cert petition, with amicus support from Allergan, PhRMA, BIO, IPO and the Boston Patent Law Association. A Perkins Coie team including counsel of record Dan Bagatell successfully defended on behalf of Mylan, which launched a competitor to Acorda's Ampyra drug for multiple sclerosis symptoms last year.

➤ Lakshmi Arunachalam, a pro se inventor from Menlo Park who has trained her fire on both accused infringers and on jurists, saw four petitions denied. Among those named in her suits were Apple, Samsung and Facebook; U.S. District Judges Edward Davila, Elizabeth Laporte and Sue Robinson; and all of the Supreme Court justices in the Oil States v. Greene's Energy majority.

Consequently, Oil States author Clarence Thomas and concurring members Ruth Bader Ginsburg, Stephen Breyer, Sonia Sotomayor and Elena Kagan recused themselves from the case in which they were named. "Because the Court lacks a quorum, 28 U. S. C. Section 1, and since the qualified Justices are of the opinion that the case cannot be heard and determined at the next Term of the Court, the judgment is affirmed under 28 U. S. C. Section 2109, which provides that under these circumstances 'the court shall enter its order affirming the judgment of the court from which the case was brought for review with the same effect as upon affirmance by an equally divided court,'" the court's order stated.

IP Laterals: McDonnell Boehnen

Chicago IP boutique McDonnell Boehnen Hulbert & Berghoff has planted its flag in the red hot Western District of Texas. The firm opened with six lawyers from Toler Law Group, headlined by firm founder Jeffrey Toler, my ALM colleague Brenda Sapino Jeffreys reports.

Toler, who's also practiced at Wilson Sonsini Goodrich & Rosati, is now chairman of McDonnell Boehnen's new transactions and high-tech litigation strategy practice group. Also joining the McDonnell firm as counsel are Benjamin Johnson, Kenton Mullins, Melissa Vanessah Pace and Christopher Scurry.

"We've always had a very strong litigation practice in both life sciences and high-tech areas, but Jeff has been focused especially on the high-tech area," McDonnell managing partner Grantland Drutchas said.

Toler told Texas Lawyer that several lawyers from his former firm will continue to practice under the leadership of Toler partner Jason Moore.

IP Lateral: Noroozi PC

Noroozi PC has gone bi-coastal.

The six-lawyer Los Angeles-based boutique has plucked Andrew Gish from Skadden, Arps, Slate, Meagher & Flom to put the firm on the map in New York. Over nine years at Skadden, Gish represented the likes of Google and JPMorgan Chase in district courts, the PTAB and the Federal Circuit.

"Andrew's technical knowledge and deep patent litigation experience furthers the firm's goal of attracting standout lawyers who can generate immediate client value," firm leader Kayvan Noroozi said in an emailed announcement.

Gish's presence also "exposes us to a valuable talent pool and provides a base for growing our existing client relationships."

That's all from Skilled in the Art today. I'll see you all again on Friday.