good morning jamie really for the united states patent and trademark office your honour's panel correctly concluded that man quest must pay all expenses of the one forty five proceeding that elected that it elected including the p t o its personnel expenses congress in adopting the language in the statute embraced the broad turned expenses that note that there is no meaningful dispute includes attorneys fees or personnel expenses and clarified which of those to include the new expenses the p t o that would include salaried expenses related to one forty five x one forty five actually your honor in the one forty five actions there would be no reason to claim titan examiner expenses when we're talking about proceedings and in the district court if it's so clear why you didn't take him into you know until the based fully no longer funded by taxpayer dollars we needed to finally support ourselves we decided to comply with the mandate in the statute that we seek attorney's fees no your honor that we decided not to know your honor there was no there was no so the agency sensibly examined all of its user fees and its costs and in doing so and in light of this court's decision in high it anticipated more complexity more humanity was greed since it wasn't to your interpretation of this particular statute we don't know you and several of the firms we're not arguing for difference over over this interpretation of the statute and if we've been very clear your honor that after the a and hyatt we have taken a closer look at the statute and they the agency is now clearly seeking the expenses that it's entitle to under this section and plaintiffs argument that the matter of giving you deference for your interpretation it's more a matter of in those proceedings and this provision is no different as the supreme court said and gandy versus marble these one forty five proceedings are an extension of the patent application so like the application fee that a user pays in the initial instance for these like the supreme court said in gandy versus marbled these proceedings are very analogous to the patent examination product progs process and indeed an extension of that process and like the fee you pay win or lose four or a titan application at the requested the pro rata portion of the salary expenses and so p t o submitted the annual salaries of the two attorneys and one paralegal who worked on this on this one forty five proceeding and recorded the number of hours that they expended time working on this proceeding on their own to counsel or receive bonus during the school year if they did your honor i don't believe that they were counted in the in the pro rata share of the salary expenses here answering counsel do i can get a bump isn't that right possibly so your honor some government attorneys do i don't know whether these particular attorneys  devoted to this matter and that those attorneys were diverted from pursuing the other work of the p t other than shooting the record before that yes your honor and what was the only rate do you recall it that's in the record it is in the record in you suggestion that even if you could not get one forty five reimbursement of out of pocket payments to private attorney hired to conduct your litigation on the defense side of a one forty five action that even if you couldn't do that you can get what you're seeking here maybe because we wouldn't consider those tourney's fees at all but just  attorneys would have been an odd use would have been an odd phrase to use in the context of an expense recruitment provision that applies only to salaried government attorneys and that was our only point your honor is that  that win lose or draw so the plaintiffs who has a veiled itself of the opportunity to come into court with all of the advantages that the one forty five proceeding conveys hazel all of the expens case i wanted to clarify there that the record that in this case we have not the p t o sensibly sought to establish the principle that it could claim all the expenses of its proceeding all the expenses of the proceeding by pursuing  your argument fails to require interpretation of the proceeding i mean earlier you said the proceeding doesn't include examination that occurs before the district court action but now you're saying it would include any appeal that occurred after including at the federal brought proceedings challenging the agency's decisions i'm not aware your honor that's one of the very unique features of the statute that the fourth circuit relied on in concluding that congress when it provided expenses when lose or draw to be to be recouped by the agencies that congress was was clear that it meant all of the proceedings to take the unusual step of requiring a plaintiff to pay all of the expenses case a private attorneys would claim benefits and even a profit margin in those cases when it's when a p t o applicant proceeds before the p t o those expenses include a pro rata share of the things that you're talking about never see that salaried union attorneys could charge under attorney fees provision and noted that proper house accounting might include those types of overhead that are normally baked into a private attorneys attorney section one forty five i'm sorry i didn't hear the question of what is the purpose of the expense provision in section one forty five what do you understand that congress was concerned about what was the purpose of the stack right so let me address my understanding of the eight hundred thirty nine statute what's included in expenses and what's not included in expenses so at that time according to certain i'm think i'm a little bit different question what is the why the congress adopt this unusual provision which even under your view when wooed payment of had the expenses of the patent what was the objective what was the purpose we don't know we didn't see anything in the legislative history that explained it we do know that at that time at approximately that time there were legal dictionary definitions that dealt with expenses or costs and let me give you an example this wasn't briefed by the government and it wasn't ref inanced quest so now you have no you as to what the purpose of the statue was well it was to shift expenses to the patent applicant who pursued one forty five actions that's clear on its face on the underlying question of why did congress intend to do that i don't know the answer to that question if i can return to the dictionary definition and want to give credit to the amicus brief by the intellectual property owners association expenses lititz l i t i s the literal translation in latin due to english is litigation expenses so highly relevant and the definition in essence is costs that are allowed in a suit to a plaintiff's or a defendant who is recovering in that litigation so that if it's limited to cost that would include expert fees even if i step a modern definition of cost as applied today that's correct but what about attorney should have told you define that today i spent thirty or thirty years in the private sectors and attorney fees always had a profit built built into it rick correct is that your experience private law firms would like to think there is a profit built into it but i can tell you that many private law firms don't have a profit and and some matters by themselves are not profitable and other matters are profitable so i want to go to this other dictionary doesn't so the charges or the expenses for staff lawyers that don't have income the don't have a profit attached to something different than what constitutes a truly feels right i can address the government i address it from the private sector there are sometimes we employ people who are law school graduates and members of the bar and depending on the arrangement with the client they are sometimes simply a pass through cos profit whatever we pay them is what we're reimbursed by the men and they're treated as a operating cost we build the client for their time and they are usually paid for their time but it's just a pastoral so going back to the key question which is what did congress in ten thousand eight hundred thirty nine there is another dictionary definition again a shout out to the i p o brief the two cases i mentioned first one this one i think if h twelve and thirteen of their brief there is the first edition of black's law dictionary it's eight hundred ninety one it's the first edition however and it also defines that same term a latin term expenses let x and it says in essence costs or expenses of suit usually awarded to the successful part so between eight hundred twenty nine and the eight hundred ninety one black's law dictionary there's great consistency the second dictionary definitions that stand for the proposition expenses are included in cost and costs are included in expenses two of the definitions were from eight hundred thirty and one was from eight fifty six in sharp contrast to the government's argument based on writing miller from the last decade or two or the last edition of black's law dictionary again what we will asking is what the congress intent and what the supreme court has taught us in baker botts in alyeska and in other opinions if there is a departure from the american rule it must be compensation for let me ask you if you're sitting there in congress and you're trying to clock craft an unexpected and an ambiguous provision that would allow when the personnel expenses would it be sufficient in this provision to say all the expenses of the proceeding including personnel expenses would that be sufficient no no not at all in congress had that opportunity congress was engaged in an overhaul of the entire pa  act leading up to two thousand and eleven enact meant leaving america's invention so they were shifting more than they had in the past the responsibility for being completely user funded at that point time either interested groups including the patent office or anyone else or members of congress could have said we've got to help them out let's watch them i wouldn't be sufficient i explicitly including personal expenses because the general rule from supreme court is against the background of the american rule which has been in place since seven hundred ninety six and congress i think would have the wisdom to say that it shifts our tourney speeds including inside attorneys up the patent office and then maybe i thought we read that you don't have to use the including without limitation the time spent by lawyers working on the particular matter from the solicitor's office since i'm getting to draft this statute i would also say and outside counsel allowing for situations in the future that would be specific and explicit under supreme court precedent not what the idea is that they have to draft with that level  yes yes because because they are just a way of saying it receives in other words and you're saying yes expensive well but you're not accepting the chief judge hypothetical that you want to use magic words changing the words attorney what else would be sufficient well there are two points there are lots of other ways to describe the compensation of someone doing legal work other than the ones we've already mentioned that was my answer to the chief judge's question whether it w there's a supreme court decision that looks at a similar work so you call this a catch all word but if you think about it it really doesn't change if someone says i'm going to pay you all the expenses that's not different from saying on their pay all the expenses in floor of verses u s supreme court nineteen sixty i believe there is a catch all phrase that was any and then a string of words and the supreme court says well that's a catch all phrase but it doesn't tell us what it catches so two in the difference between expenses and all expenses but i'm having a problem because of the thirty nine there was most of us no i'm sorry sir in eighteen thirty nine there was no slessor in the patent office there weren't any lawyers in the patent office that handle litigation so how sitting there in eight thirty nine would you draft this statute to include outside counsel fees with out mentioning attorney fees so i have two points first of all scarring all of the attorney lawyers services who are hired internally or externally by the patent office and there was something very close three years earlier in the eight hundred thirty six statute it refers to the compensation for the doesn't refer to reimbursement by a private party for expenses of personnel for in the patent office that juxtaposition is strong support the congress was not intending  without regard to shifting attorneys fees so if you just have a bunch of very smart people who've going mad to shands arguing about whether expenses does or doesn't code it i would say it's ambiguous earlier question you don't have to do this you did you difference here you did say that the words attorney fees do not have to be included in the word expenses in order for them to be included correct that's how i answered that exact question ok but what i'm trying to explain is that other words could be used i think i made that clear but it's got to tell us quickly rational and can't on an extent on a specific and explicit which like expenses or costs without apparent thetic and saying including attorneys fees that has been interpreted to cover time for moyers the principle that there are no magic words doesn't go further than to say there are many different words you can use to refer specifically to time from lawyer services it doesn't mean that generic concepts without something more specific using some words referring to lawyers time are unnecessary yes exactly and that every statute that ships or tourney's fees every statutes that's been interpreted to shift attorneys we say the litigation recently started by the patent office has  a statute that specifically says attorneys fees or uses words very very close to that so there is it no ambiguity is it right that nobody has identified statutory language that has been construed to cover payment example yes we scoured the case law to the beginning of the united states to see if there was any such case we could find on the patent office and the department of justice i assume they said just did the same gap and it's a general so in administrative expense they have a profit margin the beautiful income well that's a pretty free actually i was in tending to communicate something slightly different and sometimes though the example i gave earlier where we have an agreement with the client where employer tourney's and let's say it's a bankruptcy matter and we're entitled to continue let's let's say that it didn't that none of your attorney fees includ profit margin would you be would you be profitable he needed to be a nonprofit organization and governmental agency at that point actually not just spend too much time on the economics of a law firm but a certain group in a law firm a certain practice area may not be profitable at all or work on a certain client may not be profitable at all well money my experience in the in the private sector and i i did spend quite a bit of time as a and managing a law firm is that you build attorney fees in order to capture all your costs plus a profit margin yes yes you know it varies from client to client sometimes the lawyers really want to do some work because it's very interesting as a legal matter and we say ok as a firm because we're professionals we do more than just try to make a profit off and we do like to make a profit pro bono cases we take on pro bono cases we may get paid nothing but if and my understanding is that all of the various remedios regimes changed over time particularly in the nineteenth century that from the beginning of this provision the suit in equity was individual judge review of the chief judge and chief justice of the district of columbia but does that make this distinctive context namely that the suit in equity here was always not the only reverse that a disappointed applicant could seek there was always something else including least i think since eight hundred thirty nine i may be wrong about this from a judge the answer to leave that question is i do not know i do believe that in other federal statute a disappointed litigant might have different ways to seek remind i'm sure the court everyone on this court knows there's not only the two eighty five which specifically refers to attorneys to be shifting for exceptional cases there are three other sections of the a i a that specifically refer to attorney's fees two of them incorporate or refer back to eighty five and there's another one when basically a less than honest person is trying to sell certain inventor ship services but in each of those four instances in after eight hundred thirty nine then uses broad words like expenses or cost to mean attorney's fees no court has ever interpreted any federal statute that way if the exception of some decisions patent office has been seeking and the last few years indeed the patent office has taken a contrary position in prior litigation so one case is robertson versus cooper the exact question was whether the patent office could get reimbursement for trial expenses because a lawyer had to attend an out of state deposition the district court said no it's up on appeal and the patent applicant who's trying to support the might do is begin to charge patent applications for the fees of their solicitors and what does the government say in response oh no that is so remote that it should not be taken seriously at all so that's been the practice office not only policy by its interactions despite the mandatory not predatory language w uses shall in the statute but this is also contrary to what they've argued in prior cases this did you not not get into your firm's practices but just in general your know  lawyer you are the first junior lawyer five years out of school or a partner we value a lot of other things to creativity and talent in writing skills and i'm trying to do both but if you're if everything else is equal we like people to work harder than less hard you could apply the same question to members not of this fence but other benches and no one would say that a judge on some other bench who doesn't work very hard  somehow much more valuable thank you very much your honour's thank you rebuttal judge while i've been informed that in fact p t o attorneys cannot record overtime so the notion that that the numbers would be distorted in the way that you described it as it would be adjusted for the hourly rate would reflect i think into a leave or or any other sense in which an attorney was not was not performing work but again those are mechanical questions that shouldn't  cause this court any cause in affirming the general principle under the government determines that this provision included attorney's fees when did the government you you use that for hundred seventy years we didn't seek them yes your hon but what that doesn't tell me is did you during that hundred seventy years believe that you were entitled to seek them but you chose not to when did the government there was there has to been to pay for me because i set up the parade of horribles otherwise you're not collect the money the taxpayers are decision that we would do so i really can't speak to what members of the of the p t o so you can tell me as you stand here that for one hundred seventy years the agency did in fact or did not in fact