[00:00:01] Speaker 03:
The United States court of appeals for the federal circuit is now open and in session.

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God save the United States and this honorable court.

[00:00:09] Speaker 01:
Our first case today is 20 dash 23, 21 Hyatt versus Hirshfield.

[00:00:15] Speaker 01:
Ms.

[00:00:15] Speaker 01:
Silfin, please, please proceed.

[00:00:17] Speaker 02:
Thank you, your honor.

[00:00:19] Speaker 02:
And may it please the court.

[00:00:21] Speaker 02:
Um, in this case, the USPTO participated in four week long trials, participated in discovery,

[00:00:29] Speaker 02:
and spent over half a million dollars out of the public's pocket on expert witness fees.

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That was all for Mr. Hyatt to be able to put on evidence that he could have and chose not to present to the agency for free.

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This court has addressed en banc the possibility of applicants sandbagging the agency in section 145 actions.

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It says that the trade-off for being able to present new evidence is that the applicant has to bear the heavy economic burden of all the expenses of the proceedings.

[00:00:58] Speaker 01:
Yes, but that case with which I have a modest amount of familiarity, unfortunately for you, preceded Nanquest by Supreme Court.

[00:01:09] Speaker 01:
So rather than focusing on sort of the policy or sort of sympathetic reasons for why we ought to find for you, I'd ask you to focus your argument on NANQUEST and how expert fees differ from attorney's fees as articulated in the NANQUEST Supreme Court decision.

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Yes, and I'm happy to.

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So in NANDQUEST, the Supreme Court was addressing whether the term expenses includes attorney fees.

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And the court was focused particularly on the background principle that attorney fees are special, a principle that goes back to really the founding, where courts and dictionary definitions and lots of things

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defined the American rule as based on the availability of attorney fees.

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So the American rule... Ms.

[00:02:11] Speaker 05:
Filfin, sorry, Ms.

[00:02:12] Speaker 05:
Filfin, this is Judge Hughes.

[00:02:13] Speaker 05:
Let me interrupt you.

[00:02:15] Speaker 05:
I'm not sure that you have the American rule quite right.

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Isn't the American rule

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a broader rule that parties bear all of their own expenses unless otherwise stated by Congress.

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The American rule doesn't just speak to attorney fees, does it?

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I think it is focused on attorney fees.

[00:02:34] Speaker 05:
Let's just assume I disagree with you about that, because I really don't think you have that right.

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And I don't think the Supreme Court's ever said that the American rule only applies to attorney fees.

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But it may be that it's the main focus in most of these cases, because that's where all the dollars are.

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But why don't you explain why the predecessor to 145, when it was enacted back in the mid-19th century, showed Congress's intent to capture expert witness fees in that provision?

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Sure.

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I'm happy to do that.

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So it's clear that

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Expenses have tended to broaden costs.

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And Congress made that clear.

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It's clear through lots and lots of cases.

[00:03:28] Speaker 05:
And the... Can I just interrupt?

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I'm sorry.

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I'm not letting you get an answer.

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But I think it's a little too packed to say that expenses is broader than cost in the context of this specific provision.

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Because didn't the Supreme Court, when it wrote about this provision, reference

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legal dictionaries from the 1800s that define this phrase as cost, essentially.

[00:03:57] Speaker 02:
Well, so going back to those in the 1850s, when the expenses provision was written in the 1830s and 1839.

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Then in 1853, Congress said, OK, there's not a lot of uniformity in what is being shifted here.

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We're going to define costs, which is what we will by default shift.

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And Congress set out a specific definition for costs, which does not include attorney fees and does not include expert witness fees.

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And then in 1870, Congress looked at the predecessor to Section 145 again.

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and considered changing the term to the defined term costs, what was then defined term costs, and chose not to, and specifically looked at converting the statute to a cost shifting statute, and kept it as expenses.

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And I think it's important to note that expenses is broader than costs, because under Mr. Hyatt's definition, it is not

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Right?

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Under Mr. Hyatt's definition, expenses is the same thing as cost.

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They're just completely coextensive.

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And it's clear that Congress didn't intend them to be coextensive.

[00:05:21] Speaker 01:
And much of the Supreme Court cases, everything except for NANQA.

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So why is it clear that Congress didn't intend them to be coextensive if, as Justice Sotomayor wrote,

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Expensia eilatae means generally allowed costs.

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So why is it evident from maybe Congress declined to adopt the word costs because it would be redundant of what they already had and it didn't actually amount to a change in the statute?

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How, I am not certain I understand in light of the NANQEST analysis how you're convincing us

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that we should reject Justice Sotomayor's assessment of what expenses meant at the time.

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So there are several things in the NANDQuest opinion itself that indicate that expenses was intended to be broader than costs and that the court was addressing only attorney fees.

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So I'd point to one thing is the NANDQuest opinion discussion of the Casey case.

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There, Justice O'Neill explained that Casey said an explicit reference to litigation expenses could shift expert fees in addition to attorney fees, not that the term legation expenses alone shift attorney fees.

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So that indicates that an explicit reference to litigation expenses can shift expert fees.

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the way that the court was addressing Casey, which had a statement about litigation expenses shifting both expert and attorney seats.

[00:07:12] Speaker 05:
So that's- Sure, but the problem for you, the problem for you, Ms.

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Siltin, is that this isn't, the phrase here isn't litigation expenses, and it's not a modern day usage.

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It's an archaic usage that had certain meanings at the time it was enacted.

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And so even if

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the phrase litigation expenses might shift expert fees, particularly as in I think it's the ADA case where there was explicit legislative history showing Congress intended that phrase to shift expert fees.

[00:07:44] Speaker 05:
We don't have any of that here.

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There's no legislative history, is there, that shows Congress specifically intended to shift expert witness fees.

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So even if expenses might be broader than cost, is there still not

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something out there that might be expenses in addition to cost, but not expert fees or attorney fees?

[00:08:08] Speaker 02:
Nothing out there that, well, I should say there's a little bit of a dispute on this.

[00:08:15] Speaker 02:
Mr. Hyatt is arguing that the USPTO attorney's travel expenses should not

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count as expenses either.

[00:08:28] Speaker 02:
He's not arguing that on appeal, but he stated that in his brief.

[00:08:34] Speaker 05:
Sure, but if he's wrong and those are expenses, but not the kind of costs that are contemplated by, for instance, 1920, then it does seem that there's some content to expenses beyond costs, but not reaching attorney fees and expert witness fees.

[00:08:53] Speaker 05:
Isn't that correct?

[00:08:55] Speaker 02:
No, I don't think so.

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And this case is actually kind of an anomaly, I'd say.

[00:09:00] Speaker 02:
Well, why isn't it correct?

[00:09:02] Speaker 02:
So a couple things.

[00:09:04] Speaker 02:
One is that it's a complicated question that's not on appeal right now, whether the PTO attorney's travel fees should count or not.

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But regardless, typically these 145 cases

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happen in Virginia, and there isn't really any PTO travel to speak of.

[00:09:27] Speaker 02:
This case is an anomaly because the district court judge traveled to Texas, and all of the parties traveled to Texas for the case.

[00:09:35] Speaker 00:
Counselor, this is Judge Rand.

[00:09:39] Speaker 00:
What difference does it make to your argument that the PAN statute deals separately with attorney's fees?

[00:09:48] Speaker 02:
The point there is that in an inquest, the Supreme Court relied on the fact that there is a reference separately to attorney's fees.

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So for the statute to sort of cohere and make sense as a whole, attorney's fees would have been also called out in section 145.

[00:10:05] Speaker 02:
And that's not the case for expert witness fees.

[00:10:08] Speaker 02:
So there is no other reference to expert witness fees in the Patent Act that would state that

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Congress should separately call out expert witness fees like it separately called out attorneys.

[00:10:23] Speaker 05:
Can I just ask one more question, please?

[00:10:26] Speaker 05:
I don't know what that really means though, because if Congress didn't specifically call out expert witness fees, then doesn't that mean under Nanquist's reading of the American rule that it hasn't explicitly decided to ship?

[00:10:44] Speaker 05:
Because there's a whole bunch of cases where the Supreme Court has decided that Congress has shifted attorney fees and costs, but not expert fees.

[00:10:52] Speaker 05:
I'm overstating a whole bunch, but there are at least a couple.

[00:10:55] Speaker 05:
And so the failure to specifically call them out, it seems your argument is, well, expenses has to mean something.

[00:11:02] Speaker 05:
And we know it's not just costs.

[00:11:05] Speaker 05:
And we know it's not attorney fees.

[00:11:06] Speaker 05:
So our best guess is,

[00:11:08] Speaker 05:
that it has to be expert witness fees.

[00:11:10] Speaker 05:
But at least under NANQUS reading of the explicitness requirement in the American rule, how is that kind of rough?

[00:11:17] Speaker 05:
Well, this is all we can come up with good enough to shift.

[00:11:21] Speaker 02:
Well, so, Your Honor, on the explicit references to expert witness fees, the cases that talk about that are all in the context of a statute that says costs including attorney's fees.

[00:11:35] Speaker 02:
And so the court was dealing with a statute that is working with the definition of the word costs, which is defined by a separate statute in sections 1920 and 1821.

[00:11:47] Speaker 02:
And so the court was saying that in order to overcome the separate statutory definition of the word costs in the present statute, Congress would have to very specifically say what else

[00:12:05] Speaker 05:
So, can you cite me one case from the Supreme Court or a regional circuit where the general term expenses has been explicitly intended to include expert witness fees apart from that ADA provision where it uses litigation expenses and specifically says in the reference in the legislative history that includes experts?

[00:12:34] Speaker 02:
Well, certainly all of the cases up until now, from the 1980s until now, addressing Section 145's expenses language have interpreted it to include expert witness fees, and nobody has decided that.

[00:12:50] Speaker 05:
None of those.

[00:12:51] Speaker 05:
I asked for a Supreme Court case or a regional circuit case, not our cases approving the expert witnesses fees in 145.

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In any other case, has expenses been

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interpreted to mean expert witness fees without something more.

[00:13:08] Speaker 02:
So the cases I can point to on that are Casey and Nantquest and Arlington Central, which all sort of contain the same proposition, which is a statement that Congress could have used the word expenses to shift expert witness fees.

[00:13:29] Speaker 02:
And I'd like to reserve the rest of my time for rebuttal.

[00:13:32] Speaker 01:
Ms.

[00:13:32] Speaker 01:
Delphin, can you please repeat your response to Judge Hughes' question, which I missed, which is he was asking you for any Supreme Court or regional circuit cases which have interpreted the word expenses to include expert fees?

[00:13:48] Speaker 02:
Right.

[00:13:48] Speaker 02:
And so I'm happy to answer it again.

[00:13:51] Speaker 02:
And the three case, the three Supreme Court cases I would point to are Nanquest,

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and Casey and Arlington Central, all of which discuss a statute that either a hypothetical or a real statute that uses the word expenses, and that would be enough to shift expert witness fees.

[00:14:12] Speaker 02:
And on top of that, there's the history of all of the cases addressing Section 145 from the 1980s until now, where everybody, all of the courts and all of the parties

[00:14:25] Speaker 02:
have agreed that the word expenses include expert witnesses.

[00:14:32] Speaker 01:
When you say all of the courts have agreed, isn't it true that none of those cases contested it such that no court was asked to decide that question?

[00:14:42] Speaker 02:
It's true that none of the parties contested it as a sort of universally accepted definition.

[00:14:49] Speaker 02:
Parties certainly contested lots of things about

[00:14:53] Speaker 02:
not wanting to pay the expenses, right?

[00:14:55] Speaker 02:
So they routinely contested the amount of expense that was incurred.

[00:15:00] Speaker 02:
That's not what I asked.

[00:15:01] Speaker 01:
You said every court has held that the word expenses includes expert fees.

[00:15:08] Speaker 01:
And I don't believe that's accurate.

[00:15:11] Speaker 01:
I don't believe any court has held that.

[00:15:13] Speaker 01:
I don't believe any court was ever asked to even analyze that issue.

[00:15:17] Speaker 01:
And that's what I want a clear answer to.

[00:15:19] Speaker 01:
Did you overstate your case a minute ago?

[00:15:21] Speaker 01:
Or can you point to me court cases which have actually held that section 145 includes the award of expert fees?

[00:15:31] Speaker 02:
I call it something to overstate the case they have

[00:15:34] Speaker 01:
implicitly agreed with the parties.

[00:15:38] Speaker 01:
You mean no one contested it so they didn't address it?

[00:15:44] Speaker 02:
No one contested it.

[00:15:44] Speaker 02:
I wouldn't say they didn't address it.

[00:15:46] Speaker 02:
There are definitely cases where the court has explained that it includes expert witness fees.

[00:15:52] Speaker 02:
Cases like the Taylor case, like the old, the 1980s Sandvik active bullet case where the court has

[00:16:00] Speaker 02:
specifically explain that it includes expert witness fees?

[00:16:05] Speaker 02:
That is not in face of any party arguing that it does not include expert witness fees.

[00:16:13] Speaker 01:
Council, one other question.

[00:16:15] Speaker 01:
What Justice Sotomayor focused on in NANQEST was dictionary definitions from the 1800s, which were the relevant time period, to assess

[00:16:27] Speaker 01:
The PTO presented us with no such evidence in their brief.

[00:16:33] Speaker 01:
Is that correct?

[00:16:37] Speaker 02:
The only thing I would point to is the definition actually that the Supreme Court relied on specifically referring to counsel fees, to attorney fees.

[00:16:50] Speaker 01:
I didn't ask you if you could come up with any now.

[00:16:52] Speaker 01:
I asked you in your brief.

[00:16:54] Speaker 01:
Did you point to any dictionary definitions from the relevant time period that you thought supported your argument?

[00:17:02] Speaker 02:
I believe we pointed to that one.

[00:17:04] Speaker 01:
Yeah.

[00:17:05] Speaker 01:
Okay.

[00:17:05] Speaker 01:
And last question is, did you give us any historical evidence at the time of enactment of the statute regarding whether or not experts were ever used in these cases?

[00:17:19] Speaker 01:
This statute was enacted in the 1830s and I will tell you,

[00:17:23] Speaker 01:
I had a hard time finding any cases in which experts had ever been prevalent or used in patent cases at that time.

[00:17:33] Speaker 01:
Are you aware of any cases where experts were in fact used during that time?

[00:17:38] Speaker 02:
I am not aware of any cases where a party hired an expert witness during that time.

[00:17:45] Speaker 02:
Especially in the 1980s when courts started saying the PTO was at a disadvantage because it was not using expert witnesses.

[00:17:53] Speaker 02:
that the PTO began using expert witnesses to rebut the expert witness testimony of an applicant.

[00:18:01] Speaker 01:
Yes, but aren't we supposed to be assessing what Congress intended in 1830 that this language would include?

[00:18:10] Speaker 02:
Yes, and it's not clear that Congress would have expected expert witnesses to or not to appear.

[00:18:19] Speaker 02:
It was only after the statute came into being that

[00:18:22] Speaker 02:
there would have been any assessment of whether to include expert witnesses or not.

[00:18:27] Speaker 01:
I don't understand that language at all about why the statute had some impact on whether there would be expert witnesses.

[00:18:34] Speaker 01:
Are you saying the statute precluded expert witnesses prior to its enactment?

[00:18:40] Speaker 02:
I'm just saying there was no statute allowing for this kind of proceeding prior to this.

[00:18:46] Speaker 01:
the enactment of the statute.

[00:18:48] Speaker 01:
Okay, so the statute was enacted and I guess what I'm wondering is I'm trying to assess Congress's meaning in the 1830s for this word or these words in the statute and I just don't see any historical practice of the utilization of experts in

[00:19:07] Speaker 01:
any sort of analogous proceedings?

[00:19:10] Speaker 01:
And so I'm just trying to assess, is it really reasonable to believe Congress intended expert witnesses to be recouped if that were not even a practice at the time?

[00:19:24] Speaker 02:
I mean, like I said, there was no practice before the statute was enacted.

[00:19:28] Speaker 02:
So there really isn't Congress was enacting it against the backdrop of no expert witnesses.

[00:19:34] Speaker 02:
expert witnesses being used in this type of case.

[00:19:37] Speaker 02:
There just was none of this type of case.

[00:19:39] Speaker 02:
And then once the statute was enacted, that's when there's this history of Congress then enacting a statute defining the specific word cost.

[00:19:51] Speaker 02:
And I guess one other thing I wanted to mention is in Nantquest, the court addressed the idea that the

[00:20:03] Speaker 02:
Sorry, I'm losing my train of thought here.

[00:20:07] Speaker 02:
Well, that's okay.

[00:20:08] Speaker 01:
I've got one other question for you.

[00:20:09] Speaker 01:
Oh, sure.

[00:20:10] Speaker 01:
Go ahead.

[00:20:10] Speaker 01:
So you're focused on this particular proceeding, which was adopted in the 1830s.

[00:20:17] Speaker 01:
And I guess what I was trying to get you to focus on unsuccessfully, in part maybe because of the way my question was worded, is were you aware of analogous types of cases where experts were routinely

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utilized.

[00:20:31] Speaker 01:
I'm trying to figure out what Congress intended in 1830 and I'm wondering whether on their radar at all, not just for this proceeding, which didn't exist prior to that, but for other types of analogous proceedings, they would have understand expert witnesses would likely be employed.

[00:20:52] Speaker 02:
Your Honor, there really is no analogous type of proceeding and this is actually

[00:20:56] Speaker 02:
quite a unique type of proceeding in administrative law broadly because generally the agency's decision making is reviewed, not de novo.

[00:21:07] Speaker 02:
So there really isn't any sort of analogous scheme, certainly not back.

[00:21:14] Speaker 01:
So you're saying there was no analogous cases.

[00:21:17] Speaker 01:
I understand that's responsive to my question.

[00:21:19] Speaker 01:
Are you aware of any case, any case in 1830 where an expert witness was used?

[00:21:26] Speaker 01:
Any case?

[00:21:29] Speaker 01:
Any field?

[00:21:30] Speaker 02:
Yes.

[00:21:31] Speaker 02:
There were cases where expert witnesses were used in the 1830s.

[00:21:34] Speaker 02:
Often at that time, the courts appointed experts.

[00:21:40] Speaker 02:
So I'm aware of other cases that involved parties hiring expert witnesses.

[00:21:47] Speaker 02:
Most of the time, it was the courts hiring the expert witnesses.

[00:21:53] Speaker 02:
Uh, the Baltimore is a case where I believe there were, uh, expert witnesses that were hired by the court.

[00:22:02] Speaker 01:
Okay.

[00:22:03] Speaker 01:
So you're aware of cases where the court hired expert witnesses.

[00:22:07] Speaker 01:
Did the costs get shifted in those cases?

[00:22:11] Speaker 02:
Typically, yes.

[00:22:12] Speaker 02:
Those, but that, yes, that was typically the case that the cost for the

[00:22:18] Speaker 01:
So the cost of the expert that was hired by the court was then born by one or both of the parties?

[00:22:26] Speaker 01:
Typically the losing party.

[00:22:27] Speaker 01:
Okay.

[00:22:28] Speaker 01:
Do you have any case that you can name for me that falls into that situation?

[00:22:33] Speaker 02:
The Baltimore is the one that we've cited that I believe falls into that situation.

[00:22:39] Speaker 05:
But can I just ask you, isn't that covered by what is now 1920?

[00:22:45] Speaker 05:
I seem to recall that there's a provision in 1920 that shifts expert witness fees for court-hired experts to the losing party.

[00:22:57] Speaker 05:
Am I missing that?

[00:22:59] Speaker 02:
No, I think that's right.

[00:23:01] Speaker 02:
I think that the later annexes... Well, that's different.

[00:23:04] Speaker 05:
You know, then assuming that that... Because 1920 has a long historical pedigree, assuming that's the source for it,

[00:23:12] Speaker 05:
then that's different when it's court-appointed experts rather than party-hired experts.

[00:23:17] Speaker 05:
And it seems to fall, the party-hired experts seem to fall more in line with the historical American rule that parties bear the extraordinary cost of their own attorneys and other things that they hire rather than a court-appointed expert which is covered by 1920 and, you know, potentially its predecessors.

[00:23:41] Speaker 02:
So there are examples, they are not cited in our briefs, but I'm happy to cite them to the court, of expert witnesses being hired by parties in that timeframe.

[00:23:52] Speaker 05:
And I believe... It's not very helpful at this late stage when we... I mean, it's hard to do this historical research back to the mid-1900s, and you should have cited them in the first place.

[00:24:08] Speaker 02:
Okay.

[00:24:08] Speaker 02:
Well, I'm also happy to not cite them.

[00:24:11] Speaker 01:
I wanted to offer.

[00:24:13] Speaker 01:
Well, you must be happy to not cite them because you didn't do it.

[00:24:15] Speaker 01:
So, okay, let's move on and hear from opposing counsel, Mr. Grossman.

[00:24:21] Speaker 04:
Good morning, and may it please the court?

[00:24:23] Speaker 04:
Section 145 does not authorize the PTO to recover its expert witness fees.

[00:24:28] Speaker 04:
Two principles of governing law compel that conclusion.

[00:24:32] Speaker 04:
The first is that no statute will be construed as authorizing the taxation of witness fees

[00:24:37] Speaker 04:
unless the statute refers explicitly to witness fees.

[00:24:40] Speaker 04:
The Supreme Court has held that on four separate occasions beginning with Crawford fitting and indeed that is the precise language that was used in Arlington Central and again just two years ago in Rimini Street.

[00:24:51] Speaker 05:
This is Judge Hughes.

[00:24:54] Speaker 05:
Can I just interrupt you?

[00:24:57] Speaker 05:
You say that it has to explicitly refer to expert witness fees.

[00:25:01] Speaker 05:
But do you mean it actually has to use the word expert witness fees or that it just has to explicitly show Congress's intent to ship those fees?

[00:25:12] Speaker 04:
I think it has to show Congress's intent beyond any serious doubt to the point that it is apparent that Congress is overcoming the presumption, the long historical rooted presumption that parties will bear their own expenses.

[00:25:26] Speaker 04:
Right.

[00:25:27] Speaker 04:
So what do we do with...

[00:25:31] Speaker 05:
The phone lag means we talk over each other.

[00:25:34] Speaker 05:
I apologize.

[00:25:35] Speaker 05:
But what do we do with all these cases?

[00:25:37] Speaker 05:
And there's not a ton of them, but there's at least several where the Supreme Court has acknowledged that the phrase litigation expenses or something either is insufficient to shift the

[00:25:52] Speaker 04:
Well, I think this court is in a very fortunate place in terms of interpreting this particular statutory language in terms of the proceeding, because the Supreme Court has already done that.

[00:26:03] Speaker 04:
Can you answer my question?

[00:26:05] Speaker 01:
I'm sorry to interrupt, but somebody is breathing heavily in the phone.

[00:26:11] Speaker 01:
Could everybody try to take a little step back?

[00:26:13] Speaker 01:
Because I'm having trouble hearing the questions and answers.

[00:26:16] Speaker 01:
So I'm sorry to disrupt you.

[00:26:19] Speaker 01:
Judge Hughes, please continue.

[00:26:20] Speaker 05:
No, I'm hearing it too.

[00:26:23] Speaker 05:
So perhaps if you're not talking, you could mute yourself as well.

[00:26:27] Speaker 05:
But I'm not saying you to do that, Chief, but it's sometimes helpful.

[00:26:32] Speaker 05:
So can I just re-ask my question, which is not talking about this case and not talking about Manquist, particularly it is the Supreme Court has used the phrase litigation expenses or something like that and suggested either in DICTA or at least in the ADA case, it was held that it did include expert witness views.

[00:26:52] Speaker 05:
So why shouldn't we use that same kind of reasoning to show that litigation expenses or something of the like is enough to indicate Congress's intent?

[00:27:03] Speaker 04:
Well, so I can answer your question in a general sense, which is the explicit reference rule is what the Supreme Court has said specifically is the rule that governs in this area.

[00:27:15] Speaker 04:
And so if you had a phrase like litigation expenses, it might be apparent from the statutory context that that would be sufficient to shift witness fees.

[00:27:24] Speaker 04:
But here you have expenses of proceeding, and the Supreme Court has stated that that refers to the class of expenses traditionally recovered in litigation.

[00:27:34] Speaker 04:
And so we know that that is a different phrase that certainly could not reach something like expert witness fees for the same reason that it can't reach attorney's fees.

[00:27:43] Speaker 04:
That's what I mean when I say the court is fortunate that it has the benefit of the Supreme Court's interpretation of this precise language here.

[00:27:51] Speaker 04:
And I would note,

[00:27:53] Speaker 04:
As to the governing rule, it is, as Judge Hughes suggested, the American rule.

[00:28:00] Speaker 04:
The Supreme Court made clear, as stated expressly in Kansas versus Colorado, that it's the same American rule that applies to attorney's fees and to expert witness fees.

[00:28:12] Speaker 04:
The second principle that I wanted to mention is simply that Section 145 does not expressly authorize courts to ship expert witness fees.

[00:28:19] Speaker 04:
And again, it's the same standard that applies to attorney's fees

[00:28:22] Speaker 04:
And in ManQuest, the Supreme Court held that expenses of proceeding was not an explicit authorization to shift attorney's fees.

[00:28:31] Speaker 04:
Since the language says nothing more about expert witness fees than it does about attorney's fees, the result has to be the same here.

[00:28:38] Speaker 04:
Those two principles disposed of the PTO's claim that Section 145 authorizes shifting expert witness fees to applicants, and the court need go no further than that.

[00:28:49] Speaker 00:
Counselor, this is Durena.

[00:28:51] Speaker 00:
Is it your position that Justice Sotomayor's opinion in Anquist is dispositive here in this case?

[00:29:00] Speaker 04:
Yes, Your Honor.

[00:29:01] Speaker 04:
It's the same American rule that applies to both categories.

[00:29:05] Speaker 04:
And so for that reason, the court's analysis, particularly in Section 3A, it's textual analysis, is governing on this court and in this case.

[00:29:18] Speaker 00:
Okay.

[00:29:21] Speaker 04:
The only other point I would raise is my friend mentioned attorney travel expenses.

[00:29:31] Speaker 04:
We paid those just due to the circumstances of the case.

[00:29:35] Speaker 04:
So that's not something that is at issue on appeal in this case.

[00:29:39] Speaker 01:
I understand you paid them.

[00:29:40] Speaker 01:
Can I just ask a logistical question?

[00:29:43] Speaker 01:
Judge Lamberth is in DDC.

[00:29:47] Speaker 01:
Why were you all in Texas?

[00:29:48] Speaker 01:
I'm just confused.

[00:29:49] Speaker 04:
Oh.

[00:29:51] Speaker 04:
So what happened was during the second merits trial, Judge Lamberth fell ill and had to postpone the trial midway through and also postpone the third trial.

[00:30:03] Speaker 04:
And he was already scheduled to sit that summer in San Antonio.

[00:30:09] Speaker 04:
Mr. Hyatt wanted to conclude the trials as expeditiously as possible.

[00:30:14] Speaker 04:
And so we requested jointly, I believe, with the PTO that if it were possible, that Judge Lambert conduct the trials in San Antonio so that they could be concluded more quickly rather than having to wait for him to return to the District of Columbia in the fall.

[00:30:30] Speaker 01:
Okay.

[00:30:30] Speaker 01:
Thank you.

[00:30:31] Speaker 01:
If there's nothing further, we'll turn back to Ms.

[00:30:33] Speaker 01:
Silfin for her rebuttal.

[00:30:36] Speaker 03:
Thank you, Your Honor.

[00:30:38] Speaker 03:
Apologies, Your Honor, but Ms.

[00:30:39] Speaker 03:
Silfin exceeded her rebuttal time.

[00:30:41] Speaker 03:
How much time should I allot for her?

[00:30:42] Speaker 01:
Give her two minutes, please.

[00:30:44] Speaker 03:
Thank you.

[00:30:49] Speaker 02:
Thank you, Your Honor.

[00:30:51] Speaker 02:
Just a couple of things on rebuttal.

[00:30:53] Speaker 02:
One is that Mr. Griffin was talking about the apparent from the statutory context.

[00:31:00] Speaker 02:
Here, the context includes the entire phrase, all the expenses of the proceedings shall be paid by the applicant.

[00:31:09] Speaker 02:
In NANQES, the Supreme Court focused also on the words of the proceedings and explained that attorney time is an expense that would be incurred regardless of whether there's a 145 action happening.

[00:31:23] Speaker 02:
The attorneys are hired by the agency and will continue to work and be paid.

[00:31:28] Speaker 02:
And they are focused on that as part of the statutory interpretation here.

[00:31:35] Speaker 02:
And here, the proceedings

[00:31:39] Speaker 02:
The expert witness would not be incurred but for these proceedings.

[00:31:44] Speaker 02:
So the statutory context requires all of that, all of the expenses of the proceedings.

[00:31:50] Speaker 02:
And then in terms of expenses having a broader scope than costs, I just wanted to mention that there are several statutes that include both expenses and costs, and that would clearly be surplusage if expenses meant the same thing as costs.

[00:32:09] Speaker 01:
Okay.

[00:32:10] Speaker 01:
Okay, thank you, Ms.

[00:32:14] Speaker 01:
Silfin.

[00:32:15] Speaker 01:
I think both counsel in this case is taken under submission.