Welcome to the first day of the new term! Up for argument on the first day is an attorney fee fight in which the U.S. Patent & Trademark Office asserts a right to collect those fees from disappointed patent applicants. We give a brief rundown of the arguments. After winning three criminal cases last term, the Northwestern Supreme Court Practicum is back, and we caught up with its director, Sarah Schrup, who is making her first high court argument. Plus: Michael Dreeben offers a quick take on the news advocates will "generally" get two minutes of uninterrupted time at the start of an argument. Thanks for reading, and your feedback is welcome and appreciated. Contact us at [email protected] and [email protected], and follow us on Twitter at @Tonymauro and @MarciaCoyle.

 

 

 

Do 'All the Expenses' Include Attorney Fees?

If you're an unsuccessful patent applicant, you can seek review in a direct appeal to the U.S. Court of Appeals for the Federal Circuit or in a civil action against the director of the U.S. Patent and Trademark Office in federal district court under Section 145 of the Patent Act.

NantKwest, a clinical-stage immunotherapy company, took the Section 145 route and lost. At the heart of the fight between the company and the USPTO is Section 145′s provision saying, "all the expenses of the proceedings shall be paid by the applicant."

The agency moved for reimbursement of $111,696.39 in expenses. Those expenses included $78,592.50 in personnel costs for the time two USPTO attorneys and a paralegal had spent on the proceeding, and $33,103.89 in expert-witness expenses.

The question in Peter v. NantKwest, set for argument today in the Supreme Court: Does the phrase "[a]ll the expenses of the proceedings" include the personnel expenses the USPTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation?

The en banc U.S. Court of Appeals for the Federal Circuit, voting 7-4, ruled the term "all the expenses" does not include the agency's attorneys' fees because Section 145 "lacks the 'specific and explicit' congressional authorization required to displace the American Rule," which says that parties to litigation must pay their own attorney's fees.

>> Arguing for the patent office: U.S. Solicitor General Noel Francisco contends the American Rule doesn't apply. Section 145 is "an unconditional expense-reimbursement requirement," and it applies regardless of the outcome of the suit. Section 145 litigation can subject the USPTO to greater financial burdens than a direct appeal to the Federal Circuit. Also in civil litigation, the term "expenses" is commonly used to include payments to attorneys.

>> Advocating for NantKwest: Irell & Manella partner Morgan Chu counters that the Supreme Court and Congress historically have treated "attorney fees" and "expenses" as distinct. Patent Act amendments over time have used "attorneys' fees" or similar explicit language, not "expenses." The American Rule presumption is strongest " where a party contends that it would be entitled to attorneys' fees even when it lost, as the PTO asserts here."

>> Nearly a dozen amicus briefs have been filed by intellectual property and bar organizations represented by major law firms, including Jones Day, McDermott, Will & Emery, Ballard Spahr, Norton Rose Fulbright, and Kilpatrick Townsend & Stockton. —Marcia Coyle

 

 

 

Dreeben's Quick Take on Two-Minute Respite for SCOTUS Advocates

Among many other achievements, former deputy U.S. solicitor general Michael Dreeben was known for making highly effective opening remarks at Supreme Court oral arguments—so effective that the justices would often let him speak for several minutes before they fired off their barrage of questions. He argued before the high court 105 times.

With that in mind, we contacted Dreeben, a distinguished lecturer at Georgetown University Law Center since August, to get his reaction to the court's announcement that beginning today, the first day of the new term, advocates will "generally" be given two minutes of uninterrupted time at the beginning of arguments.

Several advocates have already proclaimed that the two-minute lacuna is "huge," and will alter the dynamics of oral argument. But Dreeben is not so certain. He said in an interview on Sunday that "the real action in the oral argument is the justices asking questions."

Dreeben added that the policy "requires you to think about what is the purpose of oral argument. From the court's point of view, it is to elucidate things that the justices don't understand in the record, to clarify the positions you are submitting, and to explore potential weaknesses. From the advocate's point of view, it is to leave the court with one or two takeaways that are critical to your case so that an hour or a day later, the justices will say, 'yes, but the government said x.' But none of those things really depend on having uninterrupted time."

But Dreeben offered this advice: "The new rule will place a premium on delivering a clear and coherent set of points that go to the heart of the case. The court will be paying close attention, so the uninterrupted time is a gift. But advocates have to be careful not to read a speech or present an unbalanced argument that will cost them credibility."

 

 

Northwestern Law Clinic's Sarah Schrup Will Make Debut on Term's Opening Day

During her 14 years heading Northwestern University law school's Supreme Court Practicum, Sarah O'Rourke Schrup never took a turn at the high court lectern despite the clinic's winning participation there and her own experience arguing in Illinois appellate courts and the U.S. Court of Appeals for the Seventh Circuit. But that gap in her career ends this morning when she becomes the first lawyer to stand before the justices in the first case of the new term—Kahler v. Kansas.

The clinic last term had an enviable record of three victories in criminal cases. It operates in partnership with Sidley Austin, and Sidley partners Carter Phillips and Jeffrey Green serve as directors with Schrup. Over the years, she said the clinic and Sidley have established deep relationships with defender organizations—a source of cases and attorneys.

"We never make it a requirement of our participation [in a case] that one of us argues it," Schrup said. "Jeff and Carter and I felt it was time for me to do an argument. I think it was time for me to do one just as part of the legitimacy of running a U.S. Supreme Court clinic. There is not a ton of women arguing these days. I think that was another consideration."

The case that Schrup is arguing asks whether the Eighth and Fourteenth Amendments allow a state—here, Kansas—to abolish the insanity defense. The answer, she argues, is no.

"We had worked with the Kansas Capital Defender Office on cases in the past," she said. "When they get an issue they think is potentially cert worthy, a lot of times they will call us. That is how we how we ended up working on Kahler."

Prior to the high court granting review, Schrup was awarded a Fulbright Fellowship to teach at the JSW School of Law in Thimphu, Bhutan. "They granted cert in March and I thought, 'Oh, boy!'" she recalled. But the program gave her time off to work on the case.

"There has been quite a bit of student involvement in the cert stage, and they were thrilled when we got the grant," she said. "We started immediately working on the merits brief. Students who graduated in May continued to work on the case. It was tremendous. For the reply brief, they were off clerking so we lost them on it."

Schrup was in Bhutan until the end of August. Since then, she said, she has been doing "typical" preparation for the arguments—deep dives into the record, issues and questions that may arise, and lots of moot courts. She makes the 50-hour trip back to Bhutan three days after her argument. —Marcia Coyle

 

 

 

Supreme Court Headlines: What We're Reading

• Paul Weiss Pokes Gibson Dunn in New SCOTUS Brief in Consumer Bureau Case. In a filing with the high court, Paul, Weiss, Rifkind, Wharton & Garrison partner Kannon Shanmugam appeared to take issue with the suggestion from a rival team at Gibson, Dunn & Crutcher that his case would not raise an important question for the justices: What relief should be given to financial companies if the CFPB is ultimately found unconstitutional? [NLJ]

• At the Supreme Court, Where Are the Women Advocates? Only six of the 26 lawyers arguing before the justices in the October session are women. [NLJ]

• 'Harry. Stay Awake.' Supreme Court Justices Caught Passing Notes. "Such writings form a small, if illuminating, subset of some 15,000 handwritten documents that Timothy Johnson, a political-science professor at the University of Minnesota, has copied over two decades from archives housing the papers of former justices."[Wall Street Journal]

• One of the Most Politically Volatile Terms in Years Tests John Roberts and the Supreme Court. "The Supreme Court has a powerfully controversial docket for its term beginning Monday that will test Chief Justice John G. Roberts Jr.'s efforts to portray the institution as above the noisy and partisan battles of the moment. Two unknowns—the health of the court's oldest member, Justice Ruth Bader Ginsburg, and whether the court will be drawn into legal controversies arising from the House Democrats' impeachment inquiry into President Trump—add to the uncertainty." [The Washington Post]

• Ruth Bader Ginsburg: This Time in History Will be Seen as 'Aberration.' "The pendulum goes too far to the right, it's going to swing back. The same thing too far to the left," she said. "So I'm hoping to see it swing back in my, in my lifetime." She called the current affairs of the U.S. an "aberration." [CNN]

• U.S. Top Court to Weigh Prohibition on Encouraging Illegal Immigration. "The U.S. Supreme Court on Friday agreed to hear a bid by President Donald Trump's administration to resurrect a federal law that makes it a felony to encourage illegal immigrants to come or stay in the United States after it was struck down by a lower court as a violation free speech rights." [Reuters]

• Breyer Gives a Bryan Series Audience a Peek Inside the Supreme Court. Breyer, speaking at the Guilford College Bryan Series, opened about about the justices' private conference. No eye-rolling or snark behind closed doors, he said. "What good would that do, I tell the law students," Breyer said. "If you get angry, then the person thinks you're emotional about this, and you think that helps your argument? This is a professional organization, people do their jobs, and they've been at it for quite a while." [News & Record]

• A Lawyer's Guide to Upcoming Supreme Court Term. "There are also a number of'"sleeper cases' on the docket this term that could be deeply significant for the way lawyers practice—from pleading standards to preclusion rules to the availability of statutory resources." [Bloomberg Law]