Patent Office Takes Fight for Attorney Fees to High Court

People wait to enter the Supreme Court on Feb. 25, 2019, in Washington. (AP Photo/Jacquelyn Martin)

WASHINGTON (CN) – The Supreme Court took up a case Monday that asks whether patent and trademark challengers who appear in U.S. District Court must pay attorneys’ fees as well as other agency expenses.

NantKwest initiated the dispute here over a patent application sought in 2001 by Hans Kingemann for a method to treat cancer using natural killer cells.

After a patent examiner rejected the application as obvious in 2010, the Patent Trial and Appeal Board affirmed, and NantKwest exerted its right to sue in U.S. District Court.

The company was unsuccessful there, too, however, and the Federal Circuit affirmed as well, at which point the U.S. Patent and Trademark Office moved for reimbursement to the tune of $111,696. 

This amount included more than $78,000 in attorneys’ fees, and amount that a divided panel of the Federal Circuit initially determined the agency was entitled to recover.

Ultimately the appeals court reconsidered this issue before an en banc 11-judge panel, however, and found that the agency was not entitled to fees.

As is its custom, the Supreme Court did not issue any comment Monday in agreeing to take up the case. Nantkwest, which is represented by the Los Angeles firm Irell & Manella, brought today’s only successful petition for certiorari.

One of the cases denied today hails from New Jersey, where the state Supreme Court ruled last year that is that New Jersey law prohibits Morris County from awarding grants to preserve religious buildings such as synagogues, temples, churches and mosques.

Morris County and a Morristown Presbyterian church had both petitioned to have the ruling reviewed, but Justice Brett Kavanaugh explained in a brief opinion Monday why the case cannot move forward.

“At some point, this court will need to decide whether governments that distribute historic preservation funds may deny funds to religious organizations simply because the organizations are religious,” the opinion states. “But at this point and in this case, it is appropriate to deny certiorari, for two main reasons. First, the factual details of the Morris County program are not entirely clear. In particular, it is not evident precisely what kinds of buildings can be funded under the Morris County program. That factual uncertainty about the scope of the program could hamper our analysis of petitioners’ religious discrimination claim. Second, this court decided Trinity Lutheran only recently, and there is not yet a robust post-Trinity Lutheran body of case law in the lower courts on the question whether governments may exclude religious organizations from general historic preservation grants programs.”

Joined by Justices Samuel Alito and Neil Gorsuch, Kavanaugh indicated that the court would take a closer look at future cases.

“In my view, prohibiting historic preservation grants to religious organizations simply because the organizations are religious would raise serious questions under this court’s precedents and the Constitution’s fundamental guarantee of equality,” Kavanaugh wrote. 

When the Supreme Court ruled on Trinity Lutheran Church of Columbia, Inc. v. Comer, the earlier case Kavanaugh mentioned, in 2017, it struck down a law that barred a religious school in Missouri from obtaining a state funding grant for the school’s playground. 

Missouri by contrast allowed secular private schools to obtain state funding grants for their schools’ playgrounds, and the court called it constitutionally “odious” to discriminate against religious schools for being religious.

Kavanaugh said Morris County’s case “should not be as difficult” as ones involving, for example, a government-sponsored prayer or religious exemptions.

“Barring religious organizations because they are religious from a general historic preservation grants program is pure discrimination against religion,” he wrote.

Attorneys for the challengers in the Morris County case include The Becket Fund for Religious Liberty and Drinker Biddle of Florham Park, New Jersey.

“Justice Kavanaugh’s statement shows this issue is not going away,” Becket senior counsel Eric Baxter said in a statement Monday. “Excluding religious organizations from historic preservation programs is religious discrimination of the first order. The court stated it is hesitant to take another case on this issue so soon after its Trinity Lutheran decision in 2017, but it has sent a strong signal that religious discrimination has no place in our society.” 

Drinker Biddle wrote meanwhile on behalf of the churches that “this issue is not going away.”

“Hopefully, the guidance provided by the [Kavanaugh] will lead other courts to reject the approach currently taken by the Supreme Court of New Jersey,” the firm said in a statement. “Excluding religious structures from grant programs for which they qualify on the basis of secular criteria is not only wrong, but risks distorting history by excluding from preservation efforts an important part of the nation’s heritage. Here, ironically, the people of Morris County do not want to engage in discrimination, but for now are compelled to do so by the state Supreme Court’s decision.”

Erwin Chemerinsky, a professor at Berkeley Law School who represents the Freedom From Religion Foundation, has not returned an email seeking comment.

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