Morgan Chu

Chu’s high-profile work last year included his persuasive arguments before the en banc U.S. Court of Appeals for the Federal Circuit, which ruled 7-4 to reverse the U.S. Patent and Trademark Office’s position that applicants who appeal an adverse decision to a district court — even when successful — must foot the agency’s legal fees. NantKwest Inc. v. Iancu, 16-1794 (Fed. Cir., filed Aug. 31, 2017).

Now that fee fight is headed for the U.S. Supreme Court, which on March 4 agreed to review it, Chu will argue in his first appearance before the justices. “I’ll do my best with the full weight of the U.S. government against us,” he said. Iancu v. NantKwest Inc., 18-801, (S.Ct., cert petition filed Dec. 21, 2018).

The fee issue arose in a dispute over a patent application for a method of treating cancer by administering killer cells developed by San Diego-based immunotherapy company NantKwest Inc. After years of examination, the PTO rejected the application on obviousness grounds. The PTAB affirmed. NantKwest appealed to Eastern District of Virginia.

There, the PTO prevailed and moved to recover its expert witness and attorney fees from NantKwest. The district court allowed the witness fees but rejected the attorney fee request, holding that the American Rule requires litigants to bear their own attorney fees.

The PTO appealed to the Federal Circuit, where a panel awarded the PTO the fees, holding that the statutory language requires that applicants bear “all expenses” regardless of the outcome, overriding the American Rule. The circuit voted on its own to rehear he question en banc.

Noting that Andrei Iancu, the director of the PTO and Chu’s named opponent in the showdown, is a former Irell & Manella managing partner, Chu said, “So I’m representing a client against a former partner. There are a bunch of folks in the patent and trademark community who are interested in this, particularly those not well-heeled. I look forward to the challenge.”

In a new major case, Chu represents VLSI Technology LLC in an infringement suit asserting eight patents against chip giant Intel Corp. The matter involves hundreds of billions of dollars in Intel sales, including most of the microprocessors Intel has made in recent years. VLSI Technology LLC v. Intel Corp., 19-CV00426 (D. Del., filed March 1, 2019).

“It’s hard to overstate how important this case is to both sides,” Chu said.

— John Roemer