Morgan Chu Logs First Career Appearance Before U.S. Supreme Court in Pivotal NantKwest Case

10.2019

Several publications covered Morgan Chu's October 7, 2019 arguments before the U.S. Supreme Court in the high-profile NantKwest case, which will determine the legality of the U.S. Patent and Trademark Office's policy that applicants who appeal to a district court must foot the USPTO's legal bills – no matter who wins or loses.

In his first career appearance before the nation’s highest court, Morgan, arguing for NantKwest, attempted to convince the justices to reject the USPTO’s position. Prominent news outlets including Law.com, Bloomberg Law and Law360 noted that the justices asked questions indicating their skepticism of the rule.  

For instance, Justice Ruth Bader Ginsburg asked the USPTO’s attorney, Deputy Solicitor General Malcolm Stewart, "Is there any other federal statute that provides for attorneys' fees on the basis of the word 'expenses' alone?" Stewart's answer was no.

In July 2018, Morgan helped NantKwest secure a 7-4 en banc ruling from the Federal Circuit that rejected the USPTO's position, which holds that Congress intended to include attorneys' fees when it included language in the Patent Act and Lanham Act that mandates appealing applicants pay “all expenses of the proceeding" regardless of the outcome. Both acts had previously required that applicants who file a de novo appeal to a district court — versus an appeal directly to the Federal Circuit — pay "all expenses," but the USPTO had previously interpreted that provision only includes things like expert fees. However, in 2013, the agency began asking for attorney fees even if it lost.  

Morgan argued the case before the en banc Federal Circuit panel on March 8, 2018, and the decision was handed down on July 27, 2018. The ruling created a circuit split with the Fourth Circuit, which had decided in favor of the USPTO, making the case ripe for a U.S. Supreme Court decision. The USPTO petitioned the Supreme Court for review in December 2018. A high court win for NantKwest would preserve the ability of small inventors to choose a Section 145 appeal without having to pay the USPTO's attorneys' fees if they lose. The case is Peter v. NantKwest Inc., 18-801.

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