The Federal Circuit decides appeals addressing patent law, government contracts, trade disputes, tax appeals, suits against the federal government, veterans’ benefits, and federal employment cases. Federal Circuitry takes a data-driven look at the Federal Circuit. Our <a href="/statistics" target="_self">Federal Circuit Statistics</a> empirically analyze appeal timing, outcomes, and other quantifiable aspects of the Court.  Our <a href="/trackers/en-banc-tracker" target="_self">En Banc Tracker</a> shows pending and past petitions where the Court has called for a response. Our <a href="/trackers/substantive-orders-tracker" target="_self">Substantive Order Tracker</a> allows you to search for less-discussed and hard-to-find orders that affect practice before the Court. Check back weekly for <a href="/topics/last-week-in-the-federal-circuit" target="_self">Last Week in the Federal Circuit</a> and monthly for our <a href="/topics/oral-argument-recap" target="_self">Oral Argument Recap</a>.<h2>About Morrison Foerster's Appellate + Supreme Court Practice</h2>Morrison Foerster’s market-leading <a href="https://www.mofo.com/capabilities/appellate-supreme-court.html">Appellate and Supreme Court practice</a> wins appeals with deep strategic thinking, clear writing, and forceful oral advocacy. Our work spans the Supreme Court of the United States, every federal court of appeals, and state appellate courts in California, New York, and elsewhere. And we handle appeals in every area of law—from intellectual property to class actions, arbitration to antitrust, environmental law to ERISA. We are consistently ranked as one of the top appellate and Supreme Court practices in the country by Chambers USA and Legal 500 USA, and our practice has been named to the National Law Journal’s Appellate Hot List multiple times.<h2>About Morrison Foerster's Patent Litigation Practice</h2>We are a global <a href="https://www.mofo.com/capabilities/patent-litigation.html">IP litigation</a> powerhouse, dedicated to fiercely protecting innovation in high-stakes and complex patent litigation matters. While we are skilled at resolving disputes short of trial, some cases do see the inside of a courtroom. When they do, our trial lawyers stand out for their superb knowledge of patent law, experience with judges in high-volume patent venues, facility with explaining cutting-edge technologies to juries, and history defending against patent assertion entities and other habitual plaintiffs. From cross-border matters and multiparty disputes to global litigation management and NPE litigations, we develop novel solutions to protecting and enforcing some of the most prized patents in the world.<h2>About Morrison Foerster</h2>Morrison Foerster is a leading global law firm that transforms complexity into advantage for its clients. Our clients include some of the largest financial institutions, banks, consulting and accounting firms, and Fortune 100, technology, and life sciences companies. Highlighting the firm’s commitment to client service, leadership in market-changing deals and impact litigation, and values-based culture, Morrison Foerster has been repeatedly recognized as one of the top 10 firms on The American Lawyer’s A-List. Year after year, the firm receives significant recognition from Chambers and The Legal 500 across their various guides, including Global, USA, Asia‑Pacific, Europe, UK, Latin America, and FinTech Legal. Our lawyers passionately care about delivering legal excellence while living our values. Morrison Foerster has a long-standing commitment to creating a culture that respects and celebrates differences, while providing an inclusive environment. The firm has achieved Mansfield Certification Plus since 2018 as a result of successfully reaching at least 30 percent women, communities of color, and LGBTQ+ lawyer representation in a notable number of current leadership roles and committees. The firm also has a long history of commitment to the community and society through providing pro bono legal services, including litigating for civil rights and civil liberties, improving public education and fostering the wellbeing of children, advocating for veterans, promoting international human rights, enforcing the right to asylum, and safeguarding the environment.

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Brian Matsui co-chairs Morrison Foerster’s Appellate and Supreme Court practice. Brian is a go-to appellate advocate for sophisticated clients in complex appeals. Brian has a nationwide appellate practice. He has argued many cases in federal and state appellate courts throughout the country, winning appeals involving federal preemption, securities litigation and enforcement, consumer class actions, and intellectual property. He has led appeals in the D.C., Second, Fourth, Fifth, Ninth, Eleventh, and Federal Circuits. His arguments include significant victories in class action appeals and in appeals for leading financial services companies, with multiple victories in the Ninth Circuit, where he clerked. Brian recently has gone five for six when representing appellants, including a precedential victory in the Ninth Circuit in a licensing dispute concerning alleged patent misuse. He also argued and won a D.C. Circuit appeal against the Securities and Exchange Commission (SEC) about the retroactivity of part of the Dodd-Frank Act. As a result of Brian’s win, the SEC had to change its enforcement practices against certain securities industry professionals.Clients frequently turn to Brian for his substantial experience with appeals in the Federal Circuit, praising him as “an invaluable advocate in patent matters” (Chambers USA). Brian has won 13 of his last 15 appeals in that Court. His arguments before the Federal Circuit include winning appeals from district courts, the Patent Trial and Appeal Board, and the International Trade Commission. He has handled appeals in a myriad of industries, including mobile devices, pharmaceuticals, medical devices, semiconductors, and software.Brian also plays a key role on trial teams, advising clients on both critical legal issues and appellate preservation. He recently argued and prevailed against a summary judgment invalidity motion in a case involving Chugai Pharmaceutical Co. Ltd.’s revolutionary antibody recycling technology, which ultimately led to a $775 million settlement on the eve of trial for Chugai.A former law clerk for the United States Supreme Court, Brian has authored many briefs in that Court, including on important constitutional and statutory interpretation issues. He often represents clients’ interests in amicus briefs in significant Supreme Court cases affecting the business community.Leading publications have recognized Brian for his appellate skills. The Legal 500 US recommends him for appellate litigation, and the National Law Journal named Brian a “Minority 40 Under 40.”Brian also dedicates significant time to pro bono matters. He argued and won two significant appeals—in the Second and Ninth Circuits—obtaining reversals of judgments that had denied private rights of action under the Child Welfare Act in precedential decisions. Brian also led the Morrison Foerster team who co-counseled a successful Eighth Amendment challenge to Florida’s imposition of a “life without the possibility of parole” sentence to a juvenile offender convicted of a non-homicide crime.For years, Brian chaired the ABA’s seven-person Standing Committee for Amicus Curiae Briefs. He served on the American Intellectual Property Law Association’s amicus committee and co-chaired the National Asian Pacific American Bar Association’s amicus committee. Brian served as an appellate lawyer representative for the Ninth Circuit. Brian also serves on the board of directors for the Lawyers’ Committee for Civil Rights Under Law.Before entering private practice, Brian clerked on the United States Supreme Court for Justice Anthony M. Kennedy. He also clerked for Judge Pamela Ann Rymer in the Ninth Circuit and Judge David F. Levi in the Eastern District of California.While in law school, Brian served as managing editor of Volume 51 of the Stanford Law Review and was elected to the Order of the Coif.<h4>Representative Oral Arguments</h4><ul><li><a href="https://oralarguments.cafc.uscourts.gov/default.aspx?fl=22-1260_02102023.mp3" target="_blank">SNIPR Technologies Ltd. v. Rockefeller University </a>(Fed. Cir.) Prevailed in a precedential decision reversing the Patent Office’s interpretation of the America Invents Act (AIA) that subjected patents post-dating the Act to pre-AIA interference proceedings. The decision revived five of SNIPR’s patents related to CRISPR technology.</li><li><a href="/resources/video-audio/220114-broadcom-corporation-v-renesas-matsui" target="_blank">Renesas Electronics Corporation v. Broadcom Corporation</a> (12:40) (Fed. Cir.) Successfully argued and briefed multiple appeals from an International Trade Commission (ITC) decision and several Patent Trial and Appeal Board decisions related to an ITC investigation initiated by Broadcom involving systems-on-chip powering automobile infotainment systems.</li><li><a href="/resources/video-audio/210706-cr-bard-v-medline-industries" target="_self">C.R. Bard Inc. v. Medline Industries, Inc.</a> (0:45) (Fed. Cir.) Won vacatur of three Patent Trial and Appeal Board decisions on obviousness.</li><li><a href="https://oralarguments.cafc.uscourts.gov/default.aspx?fl=21-1745_03102022.mp3" target="_blank">Advanced Voice Recognition Systems, Inc. v. Apple Inc.</a> (14:30) (Fed. Cir.) Secured a complete victory in appeal from Patent Trial and Appeal Board that all challenged patent claims were unpatentable.</li><li><a href="/resources/video-audio/200515-william-paulus-v-ocera-therapeutics-inc.html" target="_self">William Paulus v. Ocera Therapeutics, Inc.</a> (13:25) (9th Cir.) Successfully argued and briefed appeal in a putative shareholder class action involving a tender offer.</li><li><a href="/resources/video-audio/200410-kurtz-v-costco.html" target="_blank">Kurtz v. Costco Wholesale Corporation </a>(9:23) (2d Cir.) Successfully petitioned for review of a class certification decision, then argued and obtained a remand for the district court to reconsider its certification decision and an eventual reversal on an injunctive class certification decision.</li><li><a href="/resources/video-audio/161117-gregory-bartko-v-sec.html" target="_self">Gregory Bartko v. SEC</a> (0:53) (D.C. Cir.) Successfully argued and obtained precedential ruling that the Securities and Exchange Commission could not retroactively apply Dodd-Frank’s industry-wide sanctions on securities professionals for certain securities violations.</li></ul>

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Partner

Brian Matsui is a partner in Morrison Foerster’s Appellate and Supreme Court practice. For nearly 20 years, Brian has been a go-to appellate advocate for sophisticated clients in complex appeals nationwide. Clients turn to Brian for his substantial experience in patent appeals in the Federal Circuit. He has argued more than 10 times in that Court, winning appeals from both district courts and the Patent Trial and Appeal Board. Brian excels at applying significant legal principles to complex technologies in a way that distills them for the Court. He has done so for companies in a myriad of industries, including mobile device manufacturers, pharmaceutical companies, medical device companies, memory manufacturers, movie studios, and software companies.

Brian Matsui

Seth Lloyd, a member of Morrison Foerster’s Appellate and Supreme Court practice, has been counsel in more than a hundred appeals in federal and state courts nationwide. Seth has presented oral arguments in the U.S. Courts of Appeals for the D.C. Circuit, the Seventh Circuit, the Ninth Circuit, and the Federal Circuit, as well as in the New Jersey Appellate Division.Seth has particular experience in patent appeals before the Federal Circuit. He has authored successful briefs for both patentees and defendants on a wide range of technologies, from medical devices to pharmaceuticals to computer hardware and software. His practice includes appeals from district courts, the Patent Trial and Appeal Board, and the International Trade Commission. Seth also has argued nine times in the Federal Circuit. His winning arguments include a successful reversal of three PTAB decisions in a consolidated appeal for a computer memory designer. Seth is co-chair of the Federal Circuit Bar Association’s Administrative Law & Regulatory Committee. And he is an Editor of Morrison Foerster’s <a href="https://federalcircuitry.mofo.com/" target="_blank">Federal Circuitry</a> blog, which takes a data-driven approach to analyzing the Federal Circuit and its decisions.Seth regularly practices in the United States Supreme Court. He has drafted petitions and amicus briefs at the certiorari stage, as well as party and amicus briefs at the merits stage. Seth also moots members of the bar for Supreme Court arguments through the Georgetown Supreme Court Institute and is a member of the Edward Coke Appellate Inn of Court.Seth’s clients and peers recognize his expertise. Legal 500 named Seth a Key Lawyer; Super Lawyers called him a Rising Star; and Best Lawyers in America added him to its Ones to Watch list, all for appellate practice. Before joining Morrison Foerster, Seth served as a law clerk for Judge Richard G. Taranto of the Federal Circuit. He earned his J.D. from Stanford Law School, where he worked on two successful certiorari petitions and one successful merits case through Stanford’s Supreme Court Litigation Clinic.Seth also holds a Ph.D. and M.S. in electrical engineering from Stanford University. During his graduate studies, he received the National Defense Science and Engineering Graduate Fellowship, published 10 peer-reviewed articles, and co-invented the subject matter of five U.S. patents.<h4>Appellate Arguments</h4><ul><li><a href="/resources/video-audio/220114-renesas-electronics-v-broadcom-corporation" target="_self">Renesas Electronics Corp. v. Broadcom Corp.</a> (00:10) (Fed. Cir.) Argued and won affirmance for inter partes review petitioner in challenge to electronic device claims</li><li><a href="/resources/video-audio/170609-netlist-inc-v-diablo-technologies" target="_self">Netlist, Inc. v. Diablo Technologies, Inc.</a> (02:56) (Fed. Cir.) Argued and won reversal for owner of computer memory patents in appeals from three consolidated inter partes reviews</li><li><a href="/resources/video-audio/200610-google-llc-v-netlist-inc" target="_self">Google LLC v. Netlist, Inc.</a> (13:15) (Fed. Cir.) Argued and won affirmance for owner of computer memory patents in consolidated appeals from decade-long reexamination</li><li><a href="/resources/video-audio/220309-apple-inc-v-mph-technologies" target="_self">Apple Inc. v. MPH Technologies Oy</a> (00:16) (Fed. Cir.) Argued for inter partes review petitioner in challenge to computer security claims</li><li><a href="/resources/video-audio/180808-netlist-inc-v-sandisk-llc" target="_self">Netlist, Inc. v. SanDisk LLC</a> (01:53) (Fed. Cir.) Argued for patent owner in consolidated appeals raising APA challenges to inter partes review decisions</li><li><a href="/resources/video-audio/201026-nicole-k-v-stigdon" target="_self">Nicole K. v. Stigdon</a> (00:16) (7th Cir.) Argued for children in Indiana foster care raising constitutional due process claims</li><li><a href="/resources/video-audio/200306-strike-3-holdings" target="_self">Strike 3 Holdings, LLC v. Doe</a> (21:40) (D.C. Cir.) Argued as court-appointed amicus defending an order refusing a subpoena to unmask an internet subscriber’s identity</li><li><a href="/resources/video-audio/161118-harris-v-mangum" target="_self">Harris v. Mangum</a> (00:02) (9th Cir.) Argued as court-appointed amicus defending indigent prisoner’s right to a guardian ad litem</li></ul><h4>Additional Representative Matters</h4><ul><li>SNIPR Technologies Ltd. v. Rockefeller University (Fed. Cir.) Revived five SNIPR patents related to CRISPR technology after prevailing in a precedential decision that reversed the Patent Office’s interpretation of the America Invents Act (AIA), under which post-AIA patents could be subjected to pre-AIA interference proceedings</li><li>Broadcom Corp. v. International Trade Commission (Fed. Cir.) Successfully defended ITC’s determination of no Section 337 violation in case involving multiple patents directed to system-on-chip technology for automobile infotainment systems</li><li>Chugai Pharmaceutical Co. v. Alexion Pharmaceuticals (D. Del.) Successfully beat back defendant’s push for summary judgment of invalidity for lack of written description on pharmaceutical genus claims, ultimately helping to secure a $775 million settlement for the patent owner</li><li>C.R. Bard Inc. v. AngioDynamics, Inc. (Fed. Cir.) Secured reversal of district court judgment of non-infringement, no willfulness, and invalidity, reviving Bard’s infringement case on three patents</li><li>Washington University v. Wisconsin Alumni Research Foundation (3d Cir.) Successfully defended trial victory for breach of patent licensing agreement and further won judgment entitling Washington University to prejudgment interest</li><li>Nevro Corp. v. Boston Scientific Corp. (Fed. Cir.) Secured reversal for Nevro of district court judgment of invalidity for indefiniteness</li><li>Federal National Mortgage Association v. Zabriskie (9th Cir.) Won reversal for Fannie Mae of a Fair Credit Reporting Act judgment</li><li>Henson v. Santander Consumer USA Inc. (S. Ct.) Represented U.S. Chamber of Commerce and others as amici supporting respondent in unanimous affirmance of Fair Debt Collection Act decision</li><li>BASF Corp. v. Johnson Matthey Inc. (Fed. Cir.) Won reversal of an invalidity ruling against patentee BASF, reviving its patent claims</li><li>C.R. Bard Inc. v. Medline Industries, Inc. (Fed. Cir.) Won vacatur for petitioner of three Patent Trial and Appeal Board decisions on obviousness for patents to medical device technology</li><li>Altayyar v. Etsy, Inc. (2d Cir.) Secured dismissal of securities fraud case for failure to adequately plead falsity</li><li>Bridge & Post, Inc. v. Verizon Communications, Inc. (Fed. Cir.) Secured dismissal because asserted patents claimed unpatentable subject matter</li><li>Sam Francis Foundation v. Christie’s, Inc. (S. Ct.) Successfully preserved Sotheby’s en banc win at the Ninth Circuit based on the dormant Commerce Clause</li><li>Phigenix, Inc. v. Genentech, Inc. (Fed. Cir.) Secured total victory of noninfringement for Genentech</li><li>Deason v. Fujifilm Holdings Corp. (New York Appellate Division, First Department) Secured reversal in major shareholder challenge to corporate acquisition</li><li>V.L. v. E.L. (S. Ct.) As counsel for children’s guardian ad litem, secured reversal of Alabama Supreme Court’s refusal to grant full faith and credit to Georgia judgment recognizing lesbian mother as legal parent</li></ul>

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Seth Lloyd is an associate in Morrison Foerster’s Appellate and Supreme Court Practice with broad experience briefing and arguing appeals. Seth has particular experience in patent appeals before the Federal Circuit. He has been a primary author of successful briefs on a wide range of technologies, from medical devices to chemistry to computer hardware and software. He also has successfully argued multiple times in that Court, including obtaining reversal of three Patent Trial and Appeal Board decisions in a consolidated appeal for a computer memory designer. Before joining Morrison Foerster, Seth served as a law clerk for Judge Richard G. Taranto of the Federal Circuit. He earned his J.D. from Stanford Law School and also holds a Ph.D. in electrical engineering from Stanford University.

Seth Lloyd is an associate in Morrison Foerster’s Appellate and Supreme Court Practice with broad experience briefing and arguing appeals. Seth has particular experience in patent appeals before the Federal Circuit. He has been a primary author of successful briefs on a wide range of technologies, from medical devices to chemistry to computer hardware and software. He also has successfully argued multiple times in that Court, including obtaining reversal of three Patent Trial and Appeal Board decisions in a consolidated appeal for a computer memory designer. Before joining Morrison & Foerster, Seth served as a law clerk for Judge Richard G. Taranto of the Federal Circuit. He earned his J.D. from Stanford Law School and also holds a Ph.D. in electrical engineering from Stanford University.

Seth Lloyd

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Federal Circuitry is a data-driven Federal Circuit blog. Our <a href="https://federalcircuitry.mofo.com/statistics">Federal Circuit Statistics</a> empirically analyze quantifiable aspects of the Court. Our <a href="https://federalcircuitry.mofo.com/trackers/en-banc-tracker">En Banc Tracker</a> highlights pending and past petitions. Our <a href="https://federalcircuitry.mofo.com/trackers/substantive-orders-tracker">Substantive Order Tracker</a> allows you to search less-discussed orders. Check back weekly for <a href="https://federalcircuitry.mofo.com/topics/last-week-in-the-federal-circuit" target="_self">Last Week in the Federal Circuit</a> and monthly for our <a href="https://federalcircuitry.mofo.com/topics/oral-argument-recap" target="_self">Oral Argument Recap</a>. Follow us on Twitter <a href="https://twitter.com/Fed_Circuitry" target="_blank">@Fed_Circuitry</a>.

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Many petitions for rehearing are filed; only the smallest handful are granted. Rather than track every filed petition, we track those that have a chance. Our database tracks petitions for rehearing once the Federal Circuit has called for a response (CFR). A CFR is the first real indication that the Court might have interest in the petition, as it indicates that at least one judge on the Court may be taking a second look. Our En Banc Tracker allows you to see the amount of time it takes for various cases to get a CFR, and you can sift through the data to see what types of cases have captured the potential attention of the Court. Our data goes back to January 2020.<div data-reactroot=""><iframe allowfullscreen="" frameBorder="0" height="2350" width="100%" src="https://public.tableau.com/views/RehearingCFRsandSubstantiveOrders/RehearingCFRs?:language=en&amp;:display_count=y&amp;:origin=viz_share_link&amp;:showVizHome=no&amp;:embed=yes&amp;:showShareOptions=false"></iframe><style media="(min-width:48.0625em)">#embed-wrapper-7402970{padding: 0 0 2350px;}</style></div>

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Many orders from the Federal Circuit are not reported but can affect practice and procedure before the Court. We track and reproduce those orders here, highlighting ones that may be of significant interest to those who have cases before the Federal Circuit.<div data-reactroot=""><iframe src="https://public.tableau.com/views/RehearingCFRsandSubstantiveOrders/SubstantiveOrders?:language=en&amp;:display_count=y&amp;:origin=viz_share_link&amp;:showVizHome=no&amp;:embed=yes&amp;:showShareOptions=false" width="100%" height="3030" allowfullscreen="" frameBorder="0"></iframe></div>

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Seth W. Lloyd

What Makes a Case Exceptional?

Fifth Circuit Weighs In on Transfer Factors In High-Tech IP Case

Recently in the Federal Circuit: More on Indefiniteness in IPRs

Recently in the Federal Circuit: Reasonable Expectation of Success May Not Be So Spooky After All

Recently in the Federal Circuit: Broadening Claims in IPRs

Realtime Adaptive Streaming L.L.C. v. Sling TV, L.L.C., No. 23-1035 (Fed. Cir.)What Makes a Case Exceptional?Panel: Chief Judge Moore and Judges Lourie and Albright,<a href="#_ftn1" target="_self">[1]</a> with Judge Albright authoring the opinion.You should read this case if: you are seeking or opposing an award of attorneys’ fees under 35 U.S.C. § 285.In district court, plaintiff Realtime Adaptive Streaming L.L.C. (“Realtime”) sued several defendants (collectively, “DISH”) for infringing U.S. Patent Nos. 8,934,535 and 8,867,610.<a href="#_ftn2" target="_self">[2]</a> These patents concern digital data compression. They are from the same patent family and share virtually identical specifications and claims. Both patents, as well as similar additional patents, were also the subjects of several contemporaneous district court and PTO proceedings. Ultimately, Realtime dropped its allegations for the ’535 patent, and the district court held the asserted ’610 patent claims ineligible. The Federal Circuit affirmed on appeal. DISH then sought and was awarded attorneys’ fees.On appeal, the Federal Circuit determined the district court abused its discretion by finding the case exceptional under Section 285 to warrant attorneys’ fees in light of six so-called “red flags” that occurred while the case was pending. The Federal Circuit held that the district court abused its discretion because it failed to explain the weight for each flag and because it gave weight to some flags that should not have been accorded any weight at all. As a result, the Federal Circuit vacated the award of attorneys’ fees and remanded for the district court to reconsider.Red Flag #1: Other district courts determined some claims in the ’535 patent ineligible. The district court treated those decisions as a red flag, and the Federal Circuit agreed. Although Realtime had dropped the ’535 patent from the case, the Federal Circuit observed that the district court expressly found claim 15 of the ’535 patent was “essentially the same in substance” as claim 1 of the ’610 patent. That was sufficient for the district court to treat those decisions as a red flag.Red Flag #2: The Federal Circuit issued an opinion in Adaptive Streaming Inc. v. Netflix, Inc., 836 F. App’x 900 (Fed. Cir. 2000), affirming certain claims in a different patent were ineligible. That patent was directed to receiving a video signal in one format and broadcasting it in a different format. While the district court treated that opinion as a red flag, the Federal Circuit disagreed. The patent in Adaptive Streaming was unrelated to Realtime’s patent and concerned a different technology. The Federal Circuit noted that DISH needed something more to show exceptionality, like a side-by-side analysis of the ’610 patent claim limitations and those in Adaptive Streaming.Red Flag #3: The PTAB issued two inter partes review decisions finding claims 1-14 of the ’535 patent would have been obvious and anticipated. Although the district court relied on these as a red flag, the Federal Circuit concluded the district court failed to adequately explain why these decisions were relevant. The PTAB’s decisions concerned anticipation and obviousness—not eligibility.(Possible) Red Flag #4: The PTO issued non-final office actions rejecting some claims of the ’610 patent as invalid during ex parte reexamination. However, it was unclear whether the district court actually considered those office actions to be red flags, because the court only stated they could have served as red flags. The Federal Circuit faulted the district court for that failure and for failing to explain how the office actions, which concerned obviousness under the broadest reasonable interpretation, supported exceptionality in a case governed by the Phillips standard of claim construction.Red Flag #5: DISH sent Realtime a letter expressing its belief the ’610 patent was invalid and its intention to seek attorneys’ fees if Realtime continued suit. In the letter, DISH referenced the Google, Netflix, and Adaptive Streaming decisions but failed to include sufficient analysis to justify exceptionality. The Federal Circuit generally noted the dangers of allowing such letters to justify exceptionality but the Court left open the possibility that a more detailed letter might suffice.Red Flag #6: DISH submitted an expert declaration on validity that the district court believed merited “serious consideration.” But the Federal Circuit stated that this was not a red flag because the district court never explained why Realtime failed to show serious consideration of that declaration, particularly when Realtime submitted its own expert declaration on validity.Ultimately, the parties get a do-over before the district court, guided by the Federal Circuit’s opinion. We’ll have to wait to see whether the district court again awards fees and how the Federal Circuit handles the matter if appealed.<a href="#_ftnref1" target="_self">[1]</a> Judge Albright, a district court judge in the Western District of Texas, sat by designation.<a href="#_ftnref2" target="_self">[2]</a> Realtime also alleged infringement of U.S. Patent No. 8,275,897 in its initial complaint before dropping those allegations in subsequent complaints.

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Noah Priluck is a member of Morrison Foerster’s Appellate and Supreme Court practice. His practice focuses on appeals and critical motions in federal and state courts across the country. 

Noah Priluck

What Makes a Case Exceptional?

In district court, plaintiff Realtime Adaptive Streaming L.L.C. (“Realtime”) sued several defendants (collectively, “DISH”) for infringing U.S. Patent Nos. 8,934,535 and 8,867,610.

Patent - Attorney Fees

The Federal Circuit is charged with disposing of the mandamus petitions that regularly arise from decisions denying transfer under 28 U.S.C. § 1404(a) in Texas patent litigation. The Fifth Circuit, whose law the Federal Circuit applies in such cases, rarely issues precedential transfer opinions—not even one a year over the last fifteen years. Few, if any, bear on the kinds of evidence and arguments commonly offered as part of transfer disputes in modern patent litigation. In In re TikTok, Inc., No. 23-50575, 2023 U.S. App. LEXIS 28880 (5th Cir. Oct. 31, 2023), the Fifth Circuit seized the opportunity to provide guidance on such evidence and arguments in the context of a high-tech intellectual property case not involving patent claims. Its opinion, issued October 31, 2023, will likely impact the availability of transfer for parties in popular Texas patent venues.The key takeaways from the TikTok opinion are:<ul><li dir="ltr">In software cases, if the defendant only allows certain engineers access to the relevant source code, the location of those engineers will likely bear heavily on the first private interest factor, “the ease of access to sources of proof.” This could have a significant effect on companies with source code accessible only to teams outside of Texas.</li><li dir="ltr">The convenience of witnesses who will have to travel significant distances regardless of how transfer is ruled on (e.g., witnesses abroad) must still be given substantial weight. This will likely improve the odds of transfer for defendants developing products in Asia seeking transfer to the West Coast or those in Europe seeking transfer to the East Coast.</li><li dir="ltr">Cases concerning foreign parties and conduct beyond Texas are good candidates for transfer absent a showing that individuals in the relevant Texas district have a documented connection to the dispute.</li><li dir="ltr">Post-motion activity and case progress may not weigh against transfer in circumstances where, like here, the movant seeks transfer early in a case and does not otherwise cause or contribute to any delays in resolving that motion.</li></ul>The Fifth Circuit granted mandamus and reversed Judge Alan D Albright’s denial of TikTok Inc.’s motion to transfer litigation from the Western District of Texas to the Northern District of California under 28 U.S.C. § 1404(a). The plaintiff is a Chinese company alleging that TikTok’s Chinese engineers took source code the plaintiff shared and used it to develop video-editing functionality that TikTok’s California engineers implemented in its popular app. TikTok, 2023 U.S. App. LEXIS 28880, at *2-3. TikTok petitioned the Fifth Circuit, not the Federal Circuit, for relief from Judge Albright’s denial of transfer because the claims are directed to copyright infringement, trade secret misappropriation, false advertising, and several state law torts—not patent infringement.The Fifth Circuit analyzed the private and public interest factors set out in In re Volkswagen of America, Inc., 545 F.3d 304 (5th Cir. 2008) (en banc). The relevant holdings on a factor-by-factor basis are below.<ul><li dir="ltr">The ease of access to source of proof favored transfer</li><ul><li dir="ltr">The Fifth Circuit reinforced that, “when the vast majority of the evidence is electronic, and therefore equally accessible in either forum, this factor bears less strongly on the transfer analysis.” TikTok, 2023 U.S. App. LEXIS 28880, at *7-8 (cleaned up) (quoting In re Planned Parenthood Fed’n Am., Inc., 52 F.4th 625, 630 (5th Cir. 2022)).</li><li dir="ltr">But the panel determined that the district court abused its discretion in treating the factor as neutral because the record evidence demonstrated that it would be relatively easier to access source code in the transferee forum than in the Western District. Id. at *8-9. Specifically, several TikTok engineers in the Northern District of California are permitted to access source code, whereas the only relevant TikTok engineer in Texas with access resides in the Northern District of Texas, not the Western District. Id. The Fifth Circuit emphasized that a proper analysis compares the relevant federal districts, not the relevant forum states. Id. (citing Volkswagen, 545 F.3d at 307). The Federal Circuit has made similar distinctions in the context of the local-interest factor. See In re Apple Inc., No. 2022-137, 2022 U.S. App. LEXIS 14398, at *6 (Fed. Cir. May 26, 2022).</li></ul><li dir="ltr">The availability of compulsory process was neutral</li><ul><li dir="ltr">The district court did not abuse its discretion in finding this factor neutral because TikTok failed to identity any unwilling non-party witnesses. TikTok, 2023 U.S. App. LEXIS 28880, at *11-13.</li></ul><li dir="ltr">The attendance for willing witnesses favored transfer</li><ul><li dir="ltr">The Fifth Circuit reaffirmed its “100-mile rule,” which provides that, when the distance between the transferor court and the proposed transferee court is more than 100 miles, “the factor of inconvenience to the witnesses increases in direct relationship to the additional distance to be traveled.” Id. at *13-14 (quoting Volkswagen, 545 F.3d at 315).</li><li dir="ltr">The panel determined that the district court abused its discretion by disregarding the convenience of the parties’ Chinese witnesses, who are closer to the Northern District of California than the Western District of Texas, making the former the “clearly more convenient venue for most relevant witnesses.” Id. at *14-15. This departs from Federal Circuit opinions holding that the 100-mile rule should not be rigidly applied when witnesses would have to travel significant distances regardless of forum. In re Apple Inc., 979 F.3d 1332, 1342 (Fed. Cir. 2020).</li><li dir="ltr">The panel also determined that the convenience of the California and Chinese TikTok engineering teams overwhelmed that of a single TikTok engineer residing in Irving, Texas. TikTok, 2023 U.S. App. LEXIS 28880, at *14-15.</li></ul><li dir="ltr">All other practical problems that make trial of a case easy, expeditious, and inexpensive were neutral</li><ul><li dir="ltr">The Fifth Circuit rejected the rationale that this factor weighed against transfer because the district court had familiarized itself with the case during the fourteen-month pendency of TikTok’s transfer motion. Id. at *16-18. The panel found that, under the specific facts before it, the district court abused its discretion by relying on the substantial post-motion case progress as weighing against transfer when that progress was attributable to the district court’s delay in deciding the motion. Id. The panel emphasized that § 1404(a) motions “should [take] a top priority in the handling of a case.” Id. at *16 (quoting In re Horseshoe Ent., 337 F.3d 429, 433 (5th Cir. 2003)). This echoes the Federal Circuit’s instructions in In re Apple Inc., 979 F.3d 1332, 1338 (Fed. Cir. 2020) and In re SK Hynix Inc., 835 F. App’x 600, 601 (Fed. Cir. 2021).</li></ul><li dir="ltr">The administrative difficulties flowing from court congestion were neutral</li><ul><li dir="ltr">The Fifth Circuit similarly rejected the district court’s rationale that this factor weighed against transfer due to the progress the case had made during the pendency of TikTok’s § 1404(a) motion in progressing towards to trial. Id. at *18-20. The panel distinguished Planned Parenthood, in which the petitioner inexcusably delayed seeking transfer until months into discovery, on the ground that the trial court—not TikTok—was responsible for the delayed resolution here. Id. at *19 (citing Planned Parenthood, 52 F.4th at 631). To find the post-motion progress towards trial as weighing against transfer in that circumstance was an abuse of discretion. Id. at 15-16.</li></ul><li dir="ltr">The local interest in having localized interests decided at home was neutral</li><ul><li dir="ltr">The Fifth Circuit affirmed the district court’s finding that this factor was neutral because the alleged act giving rise to suit—the misappropriation of source code—occurred in China. Id. at *21-22 (citing Def. Distrib. v. Bruck, 30 F.4th 414, 435 (5th Cir. 2022)).</li></ul><li dir="ltr">The familiarity of the forum with the law that will govern the case was neutral</li><ul><li dir="ltr">The Fifth Circuit first found that the district court abused its discretion by failing to conduct a “good-faith” choice-of-law analysis to ascertain which jurisdiction’s law would apply to the state law claims. Id. at *23.</li><li dir="ltr">The panel also found that the district court abused its discretion by finding that it was more capable of deciding claims arising under Texas law without considering whether those laws were so “exceptionally arcane” that the Northern District of California would be less equipped to handle them. Id. at *23-24.</li></ul></ul>Having weighed these factors, the Fifth Circuit summarized the case as one “concern[ing] Chinese intellectual property that was allegedly infringed and misappropriated by employees located in China” and remarked that “[t]he only individuals in the United States who have any documented connection to this dispute are located outside the district.” Id. at *25. It held, therefore, that “[t]he Northern District of California is a clearly more convenient venue to adjudicate this case.” Id.In concluding, the opinion noted that “the Federal Circuit has reached conflicting outcomes in reviewing mandamus petitions from the Western District of Texas” over the last few months before characterizing the instant opinion as a means to “improve ‘consistency of outcomes’ by further instructing when transfer is—or, for that matter, is not—warranted in response to a § 1404(a) motion.” Id. at *27 & n.15.

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Brian Nash co-chair's Morrison Foerster’s global IP Litigation Group and cross-disciplinary Intellectual Property Group.

Brian C. Nash

Brian Nash

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Regan Rundio is an associate in the Intellectual Property Litigation Group, based in the Austin office. He draws on his experience as a former federal district court clerk and patent examiner at the U.S. Patent & Trademark Office (USPTO) to develop favorable litigation strategies for clients. Regan’s background is in the semiconductor devices, consumer electronics, robotics, and fintech industries.

Regan J. Rundio

Regan Rundio

Fifth Circuit Weighs In on Transfer Factors In High-Tech IP Case

The Federal Circuit is charged with disposing of the mandamus petitions that regularly arise from decisions denying transfer under 28 U.S.C. § 1404(a) in Texas patent litigation. 

Federal Circuit Insights

Means-plus-function claim elements can be a sticky wicket during an inter partes review, to borrow a phrase from the cricket lovers out there. These are claim elements drafted under 35 U.S.C. § 112(f) (or its predecessor paragraph 6) that recite an element of a combination as a means for performing a specified function. Normally, elements like that are construed to cover the structure disclosed in a patent’s specification corresponding to the claim-recited function. But things get messy when the specification arguably lacks corresponding structure. In district court, that would be a basis for indefiniteness. But the Board in IPRs has consistently declined to hold claims unpatentable for indefiniteness, limiting its review to prior-art unpatentability issues. The Board and the Federal Circuit thus have grappled with what to do in an IPR with potentially indefinite claims reciting mean-plus-function elements. One recent case took another stab at the problem.Case of the (recent-ish) week: <a href="https://cafc.uscourts.gov/opinions-orders/22-1493.OPINION.10-6-2023_2202155.pdf" target="_blank">Sisvel Int’l S.A. v. Sierra Wireless, Inc.</a>, 22-1493 (October 6, 2023)Panel: Chief Judge Moore and Judges Clevenger and Chen, with Judge Chen writing the opinionYou should read this case if: you have a matter regarding inter partes review of a patent with a means-plus-function claim element.Sierra Wireless petitioned the Board to review a patent related to methods of channel coding when transmitting data in radio systems. The Board construed the limitation “means for detecting” as a mean-plus-function limitation. But the Board concluded that the scope of claims with this limitation could not be determined because the specification failed to disclose corresponding structure for the claimed means. The Board thus declined to evaluate whether claims with this limitation were patentable over the prior art.The Federal Circuit vacated and remanded the Board’s decision on the “means for detecting” limitation. The Court expounded on earlier precedent, distinguishing two types of indefiniteness challenges to claims with mean-plus-function elements in the computer arts. For the first type, the specification discloses no algorithm corresponding to the claimed means at all. In that scenario, the knowledge of a skilled artisan is generally not relevant to determining whether the specification discloses adequate corresponding structure. For the second type of challenge, the specification discloses an algorithm but the parties dispute its adequacy.The Federal Circuit explained that this case involves the second type of challenge because the parties disputed whether the specification’s references to named software protocols were sufficient to disclose an algorithm. But the Board had wrongly treated the case as presenting the first type of challenge. It refused to consider expert testimony about the adequacy of the specification’s disclosures because it concluded the references to known protocols were not algorithms. The Federal Circuit held this was error: “[i]f there is some disclosure of structure in the specification for performing the claimed function, the question of whether the specification discloses sufficient structure must be viewed in light of the knowledge of a skilled artisan”; “for a means-plus-function limitation where the corresponding structure is an algorithm, the specification need not disclose all the details of the algorithm to satisfy the definiteness requirement of § 112 ¶ 2 so long as what is disclosed would be sufficiently definite to a skilled artisan.”The Court instructed the Board on remand to analyze the expert testimony on the adequacy of the specification’s disclosures. It also explained that if the Board were still to determine that the specification lacks a sufficiently disclosed algorithm, it should then determine whether that made it impossible to resolve the prior-art challenge. Barring such impossibility, the Board must resolve the prior-art challenge on the merits despite potential indefiniteness.

The Regents of the University of California v. California Berry Cultivars, L.L.C.

Arch Development Corp. v. Genentech, Inc.

Whirlpool Corp. v. TST Water LLC

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Rachel Dolphin is an associate in the Litigation Department. Her practice focuses on intellectual property litigation and general commercial litigation.
Rachel’s intellectual property practice concent

Rachel Dolphin

Rachel S. Dolphin

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Recently in the Federal Circuit: More on Indefiniteness in IPRs

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Means-plus-function claim elements can be a sticky wicket during an inter partes review, to borrow a phrase from the cricket lovers out there. 

Last Week in the Federal Circuit

With Halloween fast approaching, many of us are asking the age-old question: “Is this decoration too heavy to hang with this [hook/tape/blue tack/string around a too-thin tree branch]?” The Federal Circuit faced a similar conundrum in one recent case and found that an ordinary engineer would be up to the task.Case of the (recent-ish) week: <a href="https://cafc.uscourts.gov/opinions-orders/21-1985.OPINION.9-21-2023_2193832.pdf" target="_blank">Elektra Limited v. ZAP Surgical Systems, Inc.</a>, No. 21-1985 (Sept. 21, 2023)Panel: Judges Reyna, Stoll, and Stark, with Judge Reyna writing the opinionYou should read this case if: you have a matter involving obviousness focusing on motivations to combine and reasonable expectations of success, especially at the Board.Elektra owns a patent claiming a radiation therapy device. The claimed device uses a linear accelerator to focus a beam of radiation into a patient. To avoid radiating sensitive tissues and organs, the device is mounted to a claimed moving pivot that allows it to be repositioned and rotated (that is, moved closer to and further from the patient and positioned at different angles).What does this have to do with hanging Halloween decorations, you’re wondering? Well, ZAP, the manufacturer of a radiation therapy device, filed an IPR asserting that Elektra’s patent was invalid for obviousness. The Board instituted review on all grounds and found all challenged claims would have been obvious in view of three prior art references. Those references separately disclose (1) an x-ray tube mounted to a moving pivot allowing repositioning and rotation; (2) a combined CT scanner and linear accelerator that rotates around a patient; and (3) the use of a CT scanner for performing radiation therapy. Relying on expert testimony and the references themselves, the Board found a person of ordinary skill would be motivated to combine the references and that the challenged claims would have been obvious. Elektra appealed.Okay, so really, what about those decorations? We’re getting there! On appeal, Elektra asserted that there is no motivation to combine because the prior art taught away from the claimed combination. It also argued the Board failed to make findings about whether there was a reasonable expectation of success, despite being required to do so. The Federal Circuit disagreed and affirmed.Are we ever going to find out about what the decorations have to do with this? Yes! The Federal Circuit held that answering questions about motivation to combine teachings in the prior art often necessarily entails considering whether there’s a reasonable expectation of success in doing so, just as the intrepid home decorator considers whether that do-it-yourself decoration hanger will really hold before putting it all together. In many cases “the Board makes an implicit finding on reasonable expectation of success by considering and addressing other, intertwined arguments, including, as we hold today, a motivation to combine.”We’ve all been there: you get ready to hang the giant plastic skeleton on the door, then you remember last year’s debacle and decide to add a holiday wreath hanger for extra support because you’re confident it will probably hold. In Elektra, the question was whether a person of ordinary skill in the art could re-engineer a prior art x-ray machine’s moving pivot to carry a much heavier prior art linear accelerator, as required for the claimed device, while maintaining critical targeting precision in view of the prior art’s cautions about device weight. The Federal Circuit held the Board’s analysis, including of purported teachings away in the references, necessarily addressed the reasonable expectation of success “in a blended manner” when it found a POSITA would have been motivated to combine prior-art teachings even if the solution would be challenging. The Federal Circuit was careful to note this “blended” analysis isn’t appropriate for every case.We all implicitly and unconsciously combine many distinct analyses as we engineer our way through everyday problems, like making sure that skeleton doesn’t fall and crush my pumpkins again this year. As the Federal Circuit recognized in Elektra, the Board often does the same when it analyzes the patents before it. The Board can, and often does, implicitly consider the separate question of reasonable expectations of success when it analyzes whether a person of ordinary skill has a motivation to combine, especially where the prior art calls for some everyday engineering.

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Recently in the Federal Circuit: Reasonable Expectation of Success May Not Be So Spooky After All

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With Halloween fast approaching, many of us are asking the age-old question: “Is this decoration too heavy to hang with this [hook/tape/blue tack/string around a too-thin tree branch]?” The Federal Circuit faced a similar conundrum in one recent case and found that an ordinary engineer would be up to the task.

Our case this week, at first glance, features a typical appeal from the Patent Trial and Appeal Board and the construction of the jingle-worthy term “connection rejection message” in the context of two patents involving cellular telecommunications systems. But as discussed below, what may be most interesting about the case is the Court’s guidance on procedure and standards of review.Case of the (recent-ish) week: <a href="https://cafc.uscourts.gov/opinions-orders/22-1387.OPINION.9-1-2023_2184217.pdf" target="_blank">Sisvel Int’l S.A. v. Sierra Wireless, Inc.</a>, 22-1387 (September 1, 2023)Panel: Judges Prost, Reyna, and Stark, with Judge Stark writing the opinionYou should read this case if: you have matters involving a motion to amend, claim construction or scope—or you just love administrative law.To cut to the chase on outcome here, the Federal Circuit affirmed the Board’s holding that “connection rejection message” is not limited to GSM or UMTS networks. In the Court’s view, that issue was not particularly close: while the patents’ embodiments related only to those networks, the specification explicitly stated that there were “many different” networks and that the invention was applicable in “any such” network. The Board and the Federal Circuit thus unsurprisingly declined to import limitations from the specification into the claims.But as already noted, the Court offered helpful guidance on other issues. First, the Court clarified the requirement that amendments during inter partes review “may not enlarge the scope of the claims of the patents.” 35 U.S.C. § 316(d). The Court held that requirement will be construed identically to the related statutes governing claim reissuance, § 251(d), and examination, § 305.That was bad news for the patent owner here. During the Board proceeding, the Board denied the motion to amend because it would have enlarged claim scope in at least one respect even though the proposed amendments also narrowed the claims in other respects (e.g., limiting the patent to a specific telecommunications protocol). The Federal Circuit agreed that changing “based at least in part on information in at least one frequency parameter” to “using the frequency parameter” impermissibly broadened the claims. Not only was “using” broader than “basing at least in part,” but the removal of the word “information” meant that embodiments that use the existence of a frequency parameter, but not its informational content, would be within the proposed substitute claim’s scope.The Federal Circuit emphatically rejected the patent owner’s contention that an amendment should have been allowed because, “when all of the limitations are considered as a whole, the scope of” the substitute claim “is narrower than the scope of” the original claim. The Court instead restated black-letter law: a substitute claim that is “broader in any respect” than the original claim is broader, as a matter of law.Second, the Federal Circuit corrected both parties’ mistaken belief that its review of the amendment issue was for only substantial evidence. As the Court explained, it reviews the denial of a motion to amend under Section 706 of the Administrative Procedure Act. Given that claim scope “is a matter of claim construction” that the Court reviews de novo, the question is a purely legal one. As “[l]egal error constitutes an abuse of discretion,” the Court would reverse a denial of a motion to amend under the APA’s “arbitrary, capricious, [or] abuse of discretion” standard if it disagreed with the Board’s interpretation of the relative breadth of the original versus substitute claims.In this case, of course, it did not.

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Dr. Aaron Bray focuses his practice on intellectual property with an emphasis on patent litigation. He works with clients who design and manufacture a variety of sophisticated technologies, including 

Aaron D. Bray

Aaron Bray

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Recently in the Federal Circuit: Broadening Claims in IPRs

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Our case this week, at first glance, features a typical appeal from the Patent Trial and Appeal Board and the construction of the jingle-worthy term “connection rejection message” in the context of two patents involving cellular telecommunications systems.

If you’ve ever wondered how they keep implanted medical devices from becoming dead weight when the batteries run out, this recent Federal Circuit decision addresses one solution—wireless charging through the skin! It also sheds light on a petitioner’s options when the Patent Trial and Appeal Board adopts a patent owner’s new claim construction after institution.Case of the (recent-ish) week:  <a href="https://cafc.uscourts.gov/opinions-orders/22-1532.OPINION.8-7-2023_2169283.pdf" dir="ltr" target="_blank">Axonics, Inc. v. Medtronic Inc., Nos. 2022-1532, 1533 (Aug. 7, 2023)</a>Panel: Judges Lourie, Dyk, and Taranto, with Judge Dyk writing the opinionYou should read this case if: you have a matter involving a new claim construction adopted after institution in an inter partes review.Axonics petitioned the Board to review claims of two patents on transcutaneous (i.e., through-the-skin) charging of implanted medical devices. In its petitions, Axonics applied an implied construction of two “wherein” clauses, treating the clauses as requiring only a single input. The patent owner and the Board used that implied construction during the institution phase of the IPR. Post-institution, the patent owner took a new tack. It argued the claims required two inputs, not merely one. It urged the Board to uphold the claims because the petitions failed to identify two separate inputs in any of the prior art references. In reply, Axonics defended its one-input construction. Even so, it also argued the petition-asserted prior art would satisfy the patent owner’s new two-input construction. Axonics supported that argument with a supplemental expert declaration. And although it continued to point to the same embodiments of the same prior art for its patentability challenges, it cited additional disclosures beyond those cited in its petitions.In the final written decisions, the Board adopted the two-input construction. Yet it refused to consider Axonics’ arguments and evidence under that construction because those arguments and evidence had not been included in the petitions.The Federal Circuit vacated and remanded. “[B]efore the Board decides a case under a construction adopted after the institution decision, it must give a petitioner an opportunity to respond to the new construction, whether that construction was first proposed by the patent owner or the Board.” That was so even if the petitioner relied on evidence and citations to the prior art absent from the petition, “at least where [the petitioner] relies on the same embodiments for each invalidity ground as were relied on in the petition.” The Court distinguished that situation from one where a petitioner’s reply relied on new prior art to teach a claim limitation, which past decisions had prohibited. The Court also left for another day the question whether, in response to a new claim construction, a petitioner could rely on new embodiments from the petition-presented prior art.Because the Board never gave Axonics the opportunity to present argument and evidence under Medtronic’s new construction, the Court remanded for the Board to consider the merits of Axonics’ arguments and evidence under that construction.

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If you’ve ever wondered how they keep implanted medical devices from becoming dead weight when the batteries run out, this recent Federal Circuit decision addresses one solution—wireless charging through the skin! It also sheds light on a petitioner’s options when the Patent Trial and Appeal Board adopts a patent owner’s new claim construction after institution.

Recently in the Federal Circuit: The New Board Construction Conundrum

This week’s case of the (recent) week could serve as a crash course in several areas of patent law. It touches on Hatch-Waxman litigation and the Orange Book, claim construction, anticipation/obviousness, written description and enablement, infringement, induced infringement, and a parallel IPR proceeding. But as discussed below, the most interesting aspects of the decision relate to safety and efficacy for claimed treatments, the effect of ongoing IPR proceedings, and anticipation of product-by-process claims.Precedential opinions: 4Non-precedential opinions: 3Rule 36: 0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/22-1089.OPINION.8-3-2023_2167785.pdf" target="_blank">Bufkin v. McDonough</a>, No. 22-1089 (178 days)Shortest (non-Rule 36) pending case from argument:<a href="https://cafc.uscourts.gov/opinions-orders/22-1286.OPINION.8-1-2023_2166230.pdf" target="_blank">Teradata Corporation v. SAP SE</a>, No. 22-1286 (54 days)Case of the (recent) week: <a href="https://cafc.uscourts.gov/opinions-orders/22-2217.OPINION.7-24-2023_2161663.pdf" target="_blank">United Therapeutics Corp. v. Liquidia Techs., Inc.</a>, Nos. 2022-2217, 2023-1021 (July 24, 2023) Panel: Judges Lourie, Dyk, and Stoll with Judge Lourie writing the opinionYou should read this case if: you have a matter involving (1) pharmaceutical patents where a party wishes to read safety and efficacy requirements into the claims or (2) allegations of induced infringement when a parallel IPR decision has issued but is still subject to appellate review.United Therapeutics holds a New Drug Application for an inhaled solution for treating pulmonary hypertension. Liquidia later filed a § 505(b)(2) New Drug Application, one of two abbreviated approval pathways under the Hatch-Waxman Act (the other being an abbreviated new drug application). United asserted that Liquidia’s proposed competing solution infringed two United patents, one claiming a method of treatment and the other a composition. After a bench trial, the district court found the method patent valid and infringed and the composition patent infringed but invalid. The parties cross-appealed and the Federal Circuit affirmed.On appeal, Liquidia argued that the district court erred in refusing to construe the claim term “treating pulmonary hypertension” to require that the treatment be safe and effective. The parties’ experts agreed that a known subset of patients would not benefit from the claimed treatment. Even so, the Federal Circuit agreed it was improper to read safety and efficacy requirements into the claims where not explicitly included. “Questions of safety and efficacy in patent law have long fallen under the purview of the FDA.”This argument spilled over into enablement and written description. Liquidia argued that because it was known that some patients would not benefit from the claimed treatment, the disclosure failed to enable the full scope of the invention. But the claims simply required improving hemodynamics, not necessarily being a net positive for a patient. Whether studies showed some patients had “increased mortality, yet showed ‘improvement in a patient’s hemodynamics,’ may be an issue for the FDA. But our focus is on the claimed invention.” The Federal Circuit thus affirmed that the method patent was enabled. Similarly, with written description, Liquidia’s argument that a patent needs separate disclosure “for each individual variant of the condition” likewise failed. “A subset of unresponsive patients is not analogous to unsupported species in a generic claim to chemical compounds.”This case also clarifies the effect of parallel IPR proceedings on a finding of induced infringement. The PTAB issued a written decision finding the treatment method patent invalid. Liquidia argued this precluded intent to induce infringement. But the appeal of the IPR decision was ongoing. The Court held that “[a] pending, non-final litigation does not negate an intent to infringe that is otherwise supported by the evidence.” One final area of interest relates to the other asserted patent involving a composition. The Federal Circuit refers to it as a “product-by-process” claim; it recites a composition prepared by a specific process. The district court found that a prior reference disclosed the composition as claimed. United argued that the reference did not teach that the prior-art composition was made using the process recited in the claim. The Federal Circuit was unpersuaded:  “As these claims are product claims, they are anticipated by a disclosure of the same product irrespective of the processes by which they are made.”So remember, get your prescription advice from a doctor or the FDA, not patent lawyers.

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This week’s case of the (recent) week could serve as a crash course in several areas of patent law. It touches on Hatch-Waxman litigation and the Orange Book, claim construction, anticipation/obviousness, written description and enablement, infringement, induced infringement, and a parallel IPR proceeding. But as discussed below, the most interesting aspects of the decision relate to safety and efficacy for claimed treatments, the effect of ongoing IPR proceedings, and anticipation of product-by-process claims.

Last Week In The Federal Circuit (July 31 – August 4): Federal Circuit Reminds To Focus On The Claims

With summer in full swing, it’s the perfect time to hang out in the pool and grill some burgers. Our case of the week involves an invention for doing both of those activities at the same time—and provides some insight on when claims can be broadened through the reissue process.Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/22-1438.OPINION.7-12-2023_2156183.pdf" target="_blank">In re Float’N’Grill LLC</a>, No. 22-1438Panel: Judges Prost, Linn, and Cunningham, with Judge Linn writing the opinionYou should read this case if: you have a matter involving reissue claimsThis week’s case centers on a patent covering a pool float that can support a grill. The specification disclosed a single embodiment: a float containing a “plurality of magnets” (labeled as 60 in the figure below) that could be used to attach the grill to the float.<div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/blt17d3c04636e7041b/64bacec158c6c431f7863295/230721-blog-graphic.png?format=auto&amp;quality=60" alt="blog graphic"/></div>As originally issued, the claims mirrored that embodiment, including reciting a “plurality of magnets” within the float.After the patent’s issuance, the patentee filed a reissue application, seeking claims that replaced the narrow “plurality of magnets” limitation with a more general requirement that the grill be “removably securable” to the float. The examiner rejected the reissue claims under 35 U.S.C. § 251, which provides that reissue claims must be directed to “the invention disclosed in the original patent.” According to the examiner, the magnets were “a critical element of the invention,” yet were absent from the reissue claims.The Federal Circuit affirmed. Surveying Supreme Court and Federal Circuit decisions interpreting the original-patent requirement, the Court explained that the analysis focuses on whether “the invention disclosed in the original patent . . . , on its face, explicitly and unequivocally described the invention as recited in the reissue claims.” Thus, “reissue claims broadening a limitation to cover undisclosed alternatives to a particular feature appearing from the face of the original specification to be a necessary, critical, or essential part of the invention, do not meet the original patent requirement of § 251.” And the Court stressed that no “express statement of criticality of an element in the original specification” is required for the element to be deemed “essential to the invention claimed in the original patent.”Applying those principles, the Court concluded that the reissue claims here were not directed to the same invention disclosed in the original patent. The plurality of magnets was “an essential part of the invention” as originally disclosed. After all, the magnets were “the only disclosed structure for performing the necessary task of removably and safely securing the grill to the float apparatus.” The original disclosure did not describe the magnets as optional or merely representative of removable fasteners more generally. Nor did it specify any alternative components that could perform the same function as the disclosed magnets. Because the reissue claims omitted the plurality of magnets, they failed the original-patent requirement.OTHER WEEKLY STATSPrecedential opinions: 5Non-precedential opinions: 11Rule 36: 9Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/22-1308.OPINION.7-14-2023_2157763.pdf" target="_blank">Trinity Info Media, LLC v. Covalent, Inc.</a>, No. 22-1308 (254 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/22-1451.OPINION.7-10-2023_2154482.pdf" target="_blank">Axonics, Inc. v. Medtronic, Inc.</a>, No. 22-1451 (34 days)

Last Week In The Federal Circuit (July 10 – July 14): An Applicant Gets Grilled On The Original Patent Requirement

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Last Week In The Federal Circuit (July 10 – July 14): An Applicant Gets Grilled On The Original Patent Requirement

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With summer in full swing, it’s the perfect time to hang out in the pool and grill some burgers. Our case of the week involves an invention for doing both of those activities at the same time—and provides some insight on when claims can be broadened through the reissue process.

Fans of civil procedure will want to check out our case of the week, which offers an interesting discussion of the requirements for claim preclusion in patent infringement suits—and a reminder about the distinctions between direct and induced infringement.Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/22-1385.OPINION.7-5-2023_2152171.pdf" target="_blank">Inguran, LLC v. ABS Global, Inc.</a>, No. 22-1385Panel: Judges Lourie, Bryson, and Reyna, with Judge Reyna writing the opinionYou should read this case if: you have a matter involving claim preclusionA company doing business as STgenetics owns a patent on methods for preselecting the gender of a domestic animal’s offspring by sorting reproductive cells. ST filed three lawsuits against its competitor, ABS, for patent infringement based on ABS’s system for making certain “straws” used in animal reproduction.The first lawsuit was based on ABS’s own use of its system to manufacture and sell these straws. ABS stipulated to direct infringement, and the district court awarded an ongoing royalty on each straw ABS sold that was made with the infringing technology. ST then brought another lawsuit against ABS; during discovery, ST learned that ABS had begun licensing its system to third parties and teaching them how to use it to produce their own straws. So ST filed a third lawsuit against ABS, this time alleging that ABS induced infringement by these third parties.The district court dismissed ST’s complaint in this third lawsuit, concluding that claim preclusion barred ST’s claims. Claim preclusion (sometimes called res judicata) generally applies when (1) there is a final judgment on the merits in an earlier suit, (2) the two suits involve the same parties, and (3) the two suits involve the same cause of action. The district court determined that ST’s first lawsuit met these requirements—including, as relevant here, that the first and lawsuits were based on the same cause of action.The Federal Circuit reversed. The Court explained that the same-cause-of-action requirement turns on whether the two lawsuits involve the same set of “transactional facts.” In a patent case, these include both the asserted patents and the accused activity.The Court held that ST’s first and third lawsuits were based on distinct causes of action because they involved different accused activities. In particular, the first lawsuit alleged only direct infringement by ABS, while the third lawsuit accused ABS of inducing its licensees’ infringement.To be sure, the Court emphasized, claim preclusion encompasses not only claims that were actually asserted in the earlier action, but also claims that could have been asserted. But the Court concluded that ST “could not have asserted an inducement claim” during the first lawsuit. When ST filed its first complaint (and even by the time of the first trial), ABS had not begun licensing its system to third parties. At most, ABS had created an internal “brainstorming” document that suggested pursuing commercial licensing. But ABS had not yet taken any actions to encourage others to infringe, as is required for induced infringement. In other words, “[a]n induced patent infringement claim brought at the time of trial” in the first suit “would have been based on speculation.” Thus, the judgment in the first action did not preclude ABS from asserting induced infringement claims in the third lawsuit.OTHER WEEKLY STATSPrecedential opinions: 1Non-precedential opinions: 2Rule 36: 0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/22-1385.OPINION.7-5-2023_2152171.pdf" target="_blank">Inguran, LLC v. ABS Global, Inc.</a>, No. 22-1385 (65 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/22-1967.OPINION.7-7-2023_2153765.pdf" target="_blank">Edwards v. MSPB</a>, No. 22-1967 (28 days)

Last Week In The Federal Circuit (July 3 – July 7): Three Lawsuits, Still No Claim Preclusion

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Last Week In The Federal Circuit (July 3 – July 7): Three Lawsuits, Still No Claim Preclusion

Fans of civil procedure will want to check out our case of the week, which offers an interesting discussion of the requirements for claim preclusion in patent infringement suits—and a reminder about the distinctions between direct and induced infringement.

Summer is finally kicking into gear, but the Federal Circuit isn’t on vacation yet. Last week the Court issued several interesting decisions—including our case of the week, which analyzes the nexus requirement for objective evidence of nonobviousness.Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/22-1373.OPINION.6-6-2023_2137962.pdf" target="_blank">Yita LLC v. MacNeil IP LLC</a>, No. 22-1373Panel: Judges Taranto, Chen, and Stoll, with Judge Taranto writing the opinionYou should read this case if: you have a matter involving objective evidence of nonobviousnessMacNeil owns patents claiming vehicle floor mats that “closely conform” to the walls of the footwell. The claimed inventions involve scanning the vehicle’s footwell, heating a material, and molding it into the shape of the scanned surface.Yita petitioned for IPRs of MacNeil’s patents. As relevant here, the Board upheld one set of claims, rejecting Yita’s obviousness challenge. It found that the prior art disclosed all of the claim elements, including the close-conformance limitation. And it found that a skilled artisan would have been motivated to combine the asserted prior-art references with a reasonable expectation of success. But the Board ultimately held the claims nonobvious based on MacNeil’s secondary-considerations evidence, including commercial success and industry praise for its floor trays embodying the claimed invention.The Federal Circuit reversed in relevant part. It emphasized that “objective evidence of nonobvious lacks a nexus if it exclusively relates to a feature that was ‘known in the prior art.’” The Court noted that all of MacNeil’s secondary-considerations evidence related only to the close-conformance limitation. For instance, MacNeil’s customer reviews often cited the tray’s close fit as the main reason for their purchase. Based on the Board’s finding that the close-conformance limitation was in the prior art, the Court concluded that none of MacNeil’s secondary-considerations evidence was relevant to the obviousness inquiry. And because secondary considerations were the only Graham factor favoring nonobviousness, the Court held that the record compelled a conclusion of obviousness.The Court reiterated that secondary-considerations evidence need not be linked to a specific “new” feature not found in the prior art; it can instead be tied to the “inventive combination of known elements.” But when the asserted commercial success, industry praise, or other objective evidence is attributable to a single feature rather than the combination of elements, a nexus is lacking if that feature is in the prior art.OTHER WEEKLY STATSPrecedential opinions: 6Non-precedential opinions: 8Rule 36: 7Longest pending cases from argument: Medtronic, Inc. v. Teleflex Innovations S.A.R.L., Nos. <a href="https://cafc.uscourts.gov/opinions-orders/21-2357.OPINION.6-5-2023_2137084.pdf" target="_blank">21-2357</a>, <a href="https://cafc.uscourts.gov/opinions-orders/21-2359.OPINION.6-5-2023_2137076.pdf">21-2359</a> (116 days) (companion cases)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/22-1650.OPINION.6-7-2023_2138809.pdf" target="_blank">Blackhawk Network, Inc. v. Interactive Communications International, Inc.</a>, No. 22-1650 (33 days)<div></div>

Last Week In The Federal Circuit (June 5 – June 9): A Nexus For Your Lexus

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Last Week In The Federal Circuit (June 5 – June 9): A Nexus For Your Lexus

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Summer is finally kicking into gear, but the Federal Circuit isn’t on vacation yet. 