Peter v. Nantkwest Inc.
U.S. Supreme Court · decided December 11, 2019 · Supreme Court Database (Spaeth)
- Decided
- December 11, 2019
- Term
- October Term 2019
- Vote
- 9–0
- Majority author
- Justice Sotomayor
- Issue area
- Attorneys
- Disposition
- Affirmed
- Outcome
- Petitioning party lost
- Ideological direction
- Conservative
Opinion excerpt
Justice SOTOMAYOR delivered the opinion of the Court. Section 145 of the Patent Act affords applicants "dissatisfied with the decision of the Patent Trial and Appeal Board" an opportunity to file a civil action in the United States District Court for the Eastern District of Virginia. 35 U.S.C. § 145. The statute specifies that "[a]ll the expenses of the proceedings shall be paid by the applicant." Ibid. The question presented in this case is whether such "expenses" include the salaries of attorney and paralegal employees of the United States Patent and Trademark Office (PTO). We hold that they do not. I A The Patent Act creates two mutually exclusive pathways to challenge an adverse decision by the PTO. The first permits judicial review by direct appeal to the United States Court of Appeals for the Federal Circuit. § 141. There is "no opportunity for the applicant to offer new evidence" in a § 141 proceeding, and the Federal Circuit "must review the PTO's decision on the same administrative record that was before the [agency]." Kappos v. Hyatt , 566 U.S. 431, 434, 132 S.Ct. 1690, 182 L.Ed.2d 704 (2012) ; 35 U.S.C. § 144. The second pathway allows applicants to file a new civil action against the Director of the PTO in federal district court. § 145. Unlike § 141, § 145 "permits the applicant to present new evidence ... not presented to the PTO." Kappos , 566 U.S. at 435, 132…
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