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 five 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-204954215{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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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

What happens when two courts of appeal each think the other has exclusive jurisdiction over an appeal? Confusion and inter-circuit criticism. The latest chapter in such a dispute between the Federal and Fifth Circuits on the scope of the Federal Circuit’s exclusive jurisdiction in patent cases is unfolding now.Chandler v. Phoenix Services involves a so-called Walker Process claim. Walker Process monopolization claims are antitrust—not patent—claims based on the enforcement of patents procured by fraud. In Chandler, the defendants’ patent had been found unenforceable due to inequitable conduct in an earlier case. While that case was making its way to the Federal Circuit, the Chandler defendants allegedly took several steps to enforce the patent against competitors (including the Chandler plaintiffs), such as sending cease and desist letters, advertising the patent on their website, and asserting the patent in litigation. The Chandler plaintiffs then brought a Walker Process claim, alleging that the defendants were trying to enforce a patent they knew to be unenforceable. The district court granted summary judgment to defendants, finding that the plaintiffs lacked standing and that the statute of limitations had expired. The Chandler plaintiffs appealed to the Federal Circuit. But in a precedential order issued last month, the Federal Circuit declined jurisdiction and transferred the case to the Fifth Circuit—the regional circuit for this case arising from district court in Texas.In the transfer order, the Federal Circuit recounted blow-by-blow its previous dispute with the Fifth Circuit over which one had appellate jurisdiction over a similar claim. By way of background, 28 U.S.C. § 1295(a)(1) gives the Federal Circuit exclusive jurisdiction over appeals “arising under[] any Act of Congress relating to patents.” In Xitronix Corporation v. KLA-Tenco Corporation, the Federal Circuit issued a precedential order holding that it lacked appellate jurisdiction over a Walker Process case on the ground that it arose under antitrust law, not patent law. 889 F.3d 1075, 1078 (Fed, Cir. 2018) (“Xitronix I”). As the court explained, “patent claims will not be invalidated or reviewed based on the results of this case.” The Federal Circuit thus transferred the appeal to the Fifth Circuit.The Fifth Circuit, however, disagreed and shipped the Xitronix appeal back to the Federal Circuit. In doing so, it took a more expansive view of the Federal Circuit’s jurisdiction than the Federal Circuit itself had. The Fifth Circuit concluded that the case belonged in the Federal Circuit because it “touched on” patent law in that the plaintiff’s antitrust claim turned in part on whether the patent at issue was enforceable. Xitronix Corporation v. KLA-Tenco Corporation, 916 F.3d, 429, 441 (5th Cir. 2019) (“Xitronix II”).After receiving the bounce-back from the Fifth Circuit, the Federal Circuit in Xitronix accepted jurisdiction in a non-precedential decision. In doing so, however, it characterized the Fifth Circuit’s reasoning as “incorrect,” “untenable,” and based on a “misread[ing]” of Federal Circuit precedent. Xitronix Corp. v. KLA-Tencor Corp., 757 Fed. Appx. 1008, 1009 (Fed. Cir. 2019). Fast-forward to June 2021 and the Chandler appeal. The Federal Circuit again found itself with an appeal in a Walker Process case arising from a district court from within the Fifth Circuit. So what did it do? It adhered to the position articulated in the first (and precedential) Xitronix order, concluded it lacked appellate jurisdiction, and transferred the appeal to the Fifth Circuit. In doing so, it recounted its dispute with the Fifth Circuit in Xitronix. The Federal Circuit explained that while it had ultimately acquiesced to jurisdiction in Xitronix it had not backed down from its view that the appeal had actually belonged in the Fifth Circuit. The Federal Circuit defended its reasoning in Xitronix I, noting that in Gunn v. Minton 568 U.S. 251 (2013), the Supreme Court held that a state court had jurisdiction over a malpractice suit because it did not “arise under” federal patent law, despite requiring a patent law issue to be resolved. Drawing on Gunn, the Chandler court re-stated its position that “the risk of another circuit making an erroneous or inconsistent patent law decision within a Walker Process claim is not enough to trigger [Federal Circuit] jurisdiction over federal patent law cases.”What will happen next in Chandler? It seems likely that the jurisdictional ping-pong between Washington and New Orleans will not resume here and that the Fifth Circuit will take the case. As the Federal Circuit’s transfer order notes, the Fifth Circuit should have jurisdiction over Chandler even under the Fifth Circuit’s own reasoning in Xitronix II. That is so because the patent-at-issue had previously been ruled unenforceable, leaving no live patent law issues to be decided.  If the Federal Circuit’s prediction is correct, the underlying disagreement between the circuits will likely remain unresolved. And future appeals involving Walker Process and other patent-adjacent claims could continue to bounce between the two courts—unless and until one of them recedes from its view or the Supreme Court steps in.

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Joe Palmore co-chairs Morrison Foerster’s Appellate and Supreme Court practice. Chambers USA describes him as “an outstanding oral advocate,” who is “calm, focused, effective and doesn’t back down,” and has “complete command of the facts.” Joe “writes great briefs” (Chambers USA), with one client recounting that “the Court mirrored the language he thoughtfully chose in its ultimate order” (Legal 500).

Joseph R. Palmore

Joseph R. Palmore is co-chair of the firm's Appellate and Supreme Court Practice Group and Managing Partner for the Washington, D.C. office. Before joining Morrison Foerster, Joe was an Assistant to the Solicitor General at the United States Department of Justice and the Deputy General Counsel of the Federal Communications Commission (FCC).

Joseph Palmore

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Return to Sender: When Courts of Appeals Disagree on Which One Has Jurisdiction

Return to Sender: When Courts of Appeals Disagree on Which One Has Jurisdiction

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What happens when two courts of appeal each think the other has exclusive jurisdiction over an appeal? Confusion and inter-circuit criticism. The latest chapter

Federal Circuit Insights

Maryrose McLaughlin, Morrison & Foerster summer associate, co-authored this post.The Federal Circuit announced last week that it will resume in-person oral arguments later this summer. The Court’s new protocols generally take effect with the September 2021 sitting, and we noticed that the Court has also scheduled some in-person arguments in July.That was the big news from the Federal Circuit last week; on the opinion front, the Court had a quieter week, with no precedential decisions. (The Supreme Court made up for that with a major patent <a target="_blank" href="https://federalcircuitry.mofo.com/topics/Supreme-Court-Preserves-Again-Inter-Partes-Review-Despite-Finding-Constitutional-Violation.html">decision</a> of its own.) But among the Federal Circuit’s decisions was an interesting opinion about claim construction and prosecution history. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 0Non-precedential opinions: 4Rule 36: 3Longest pending case from argument: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1144.OPINION.6-21-2021_1792989.pdf">Intex Recreation Corp. v. Team Worldwide Corporation</a>, No. 20-1144 (193 days)Shortest pending case from argument (non-Rule 36): <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1438.OPINION.6-23-2021_1794560.pdf">Apple Inc. v. Corephotonics, Ltd.</a>, No. 20-1438 (14 days)Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1144.OPINION.6-21-2021_1792989.pdf">Intex Recreation Corp. v. Team Worldwide Corporation</a>, No. 20-1144Panel: Judges Newman and Reyna (Judge Stoll was on the panel but did not participate in deciding the case)You should read this case if: You have a matter involving disavowal of claim scope during prosecution.This week’s case is about a patent for an air mattress. Team Worldwide Corp. owns a patent claiming “an inflatable body” with a recessed electric pump. Intex Recreation Corp. filed a petition for inter partes review, asserting obviousness and anticipation challenges. One piece of prior art Intex invoked was a patent for a hovering pillow. The pillow hovers by taking in air from a fan, then expelling it through holes on the bottom of the pillow.Whether the hovering pillow rendered the Team Worldwide’s claims unpatentable turned on the claim construction of the term “inflatable body.” Team Worldwide construed an “inflatable body” to mean “a substantially airtight structure that expands when filled with air or other gases.” Although the claim text and patent description were inconclusive, Team Worldwide used the prosecution history to support limiting the claims to a “substantially airtight” body.During prosecution, the examiner initially found another patent, “Sexton,” rendered some of the applicant’s claims unpatentable. The applicant distinguished its claims from Sexton by arguing Sexton lacked an inflatable body that was substantially airtight. The applicant said, “[F]or the combined structure to be an inflatable body, it must itself meet the criterion of an inflatable body, i.e., the combined structure taken as a whole must be substantially airtight and expand when filled with air or other gas.” Consequently, the examiner agreed the claims were patentable over Sexton.Based on that prosecution history, the Board agreed with Team Worldwide’s narrower construction limiting “inflatable body” to one that is “substantially airtight.” As a result, the Board found the claims patentable over the hovering-pillow patent.The Federal Circuit affirmed those determinations. On claim construction, the Court explained that precedent supports limiting a claim when statements during prosecution clearly and unmistakably disavow claim scope. Additionally, in certain contexts, the use of “i.e.,” can limit the claim scope when it defines a claim term. Here, the applicant used “i.e.,” immediately after the term “inflatable body,” to set forth “the criterion of” the term to the examiner during prosecution.These circumstances, the Federal Circuit concluded, were sufficient to limit the claims to an “inflatable body” that was “substantially airtight.” The Court held the applicant’s statements to the examiner disclaimed a different meaning. And based on that claim construction, the Court agreed with the Board that Team Worldwide’s claims were patentable over the hovering-pillow patent.The Court went on to vacate other aspects of the Board’s decision on different grounds, leading it to ultimately remand the case for further proceedings.

Last Week in the Federal Circuit (June 21–25): How Airtight Does an Air Mattress Have to Be?

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Associate

Maryrose McLaughlin is an associate in the Litigation Department of Morrison Foerster’s Washington, D.C. office.

Maryrose Fahy McLaughlin

Maryrose McLaughlin

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Last Week in the Federal Circuit (June 21–25): How Airtight Does an Air Mattress Have to Be?

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Maryrose McLaughlin, Morrison & Foerster summer associate, co-authored this post.
The Federal Circuit announced last week that it will resume in-person oral arg

Last Week in the Federal Circuit

Now that we have the Supreme Court’s big decision in Arthrex, which we wrote about <a href="/topics/Supreme-Court-Preserves-Again-Inter-Partes-Review-Despite-Finding-Constitutional-Violation.html">here</a>, many of us are wondering what the next steps will look like. We may know sooner rather than later. Today, the Federal Circuit issued a sua sponte order in pending appeals where one of the parties had appeared to raise an Appointments Clause challenge. The body of the short order reads:(1) Within 14 days from the date of this order, the parties that raised an Appointments Clause challenge shall file a brief, not to exceed 10 pages double-spaced, explaining how they believe their cases should proceed in light of Arthrex. Responses from the other parties, including the United States Patent and Trademark Office, subject to the same length restrictions, are due within 14 days thereafter.(2) All deadlines and proceedings are stayed.Based on these orders, we could start to see some action from the Federal Circuit in currently pending appeals in about a month.We also may get further news with the Supreme Court’s order list on Monday from tomorrow’s petition conference. That list may include orders granting, vacating, and remanding the many Federal Circuit decisions that had vacated and remanded Board decisions for new hearings under the Federal Circuit’s original Arthrex decision (now vacated). The United States filed several consolidated petitions for certiorari from those Federal Circuit decisions, which the Supreme Court has been holding. If those decisions are indeed returned to the Federal Circuit, it seems likely the Federal Circuit could issue similar orders to the above after recalling its mandates sending those cases back to the Patent Trial and Appeal Board.

Early Hints About What Happens Next After Arthrex

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.

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 nationwide. 

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Early Hints About What Happens Next After Arthrex

CVSG in American Axle and Cases in General: What Does It Mean? A Q&A With Deanne Maynard

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Now that we have the Supreme Court’s big decision in Arthrex, which we wrote about here, many of us are wondering what the next steps will look like. We may kno

Substantive Orders Update

The Supreme Court issued its long-awaited decision today in United States v. Arthrex, Inc., Nos. 19‑1434, -1452, -1458. Although a majority of the Court held that Congress’s statutory scheme violated the Constitution, the Supreme Court once again preserved the availability of inter partes reviews for challenging issued patents. Still unknown is whether Arthrex will have any practical effect on practice at the Patent Trial and Appeal Board going forward.Read our <a href="https://www.mofo.com/resources/insights/210621-finding-constitutional-violation.html">client alert.</a>

Supreme Court Preserves (Again) Inter Partes Review Despite Finding Constitutional Violation

Alex Yap co-chairs the firm’s Patent Trial and Appeal Board (PTAB) practice and is a member of Morrison Foerster’s IP Litigation practice. 

Alex S. Yap

Alex Yap

Supreme Court Preserves (Again) Inter Partes Review Despite Finding Constitutional Violation

The Supreme Court issued its long-awaited decision today in United States v. Arthrex, Inc., Nos. 19‑1434, -1452, -1458. Although a majority of the Court held th

If <a href="/topics/Last-Week-in-the-Federal-Circuit-June-14-Prosecution-Disclaimer--Whats-Good-for-the-Goose-.html" target="_blank">last week’s</a> post on prosecution disclaimer left you hoping for more decisions about the patent application process, you're in luck. This week we're covering another case about patent prosecution and the somewhat rare doctrine of prosecution laches. Below we provide our usualy weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions:  7Non-precedential opinions: 5Rule 36: 3Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1086.opinion.6-10-2021_1788770.pdf" target="_blank">Anania v. McDonough</a>, No. 20-1086 (185 days)Shortest pending case from argument (non-Rule 36):  <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1839.opinion.6-9-2021_1788218.pdf" target="_blank">Cameron v. McDonough</a>, No. 20-1839 (33 days)Case of the week:<a href="http://www.cafc.uscourts.gov/opinions-orders/18-2390.opinion.6-1-2021_1784662.pdf" target="_blank">Hyatt v. Hirshfeld</a>, Nos. 2018-2390, -2391, -2392, 2019-1038, -1039, -1049, -1070 (June 1, 2021)Panel:  Judges Reyna, Wallach, and Hughes, with Judge Reyna writing the opinionYou should read this case if:  you are a patent prosecutor or are curious about the latest chapter in a long-running dispute between the Patent Office and a serial patent applicantOur case this week features independent inventor, Gilbert Hyatt, who filed an astonishing 381 patent applications during the “GATT Bubble” before the PTO’s June 8, 1995 transition from patent terms of 17 years from issuance to 20 years from filing. The applications largely relate to microchip and integrated circuit technology and are continuations of applications that date back to the 1970s and ’80s. Most are still pending. Any patents that issue will remain valid for 17 years from issuance, even though the original applications are decades old. The PTO calculated that processing Hyatt’s applications would require “532 years of examiner time,” or the equivalent of about “40,000 typical applications.”After the PTO rejected four Hyatt applications, Hyatt filed suit under 35 U.S.C. § 145, which allows applicants to seek a court order requiring the PTO to issue the patents. The PTO moved to dismiss based on prosecution laches, a defense the PTO had never before asserted in a district court case on pending applications. According to the PTO, Hyatt engaged in a pattern of delay during prosecution, filing overly long and complex applications, and repeatedly amending claims to shift their scope and create duplications. The district court sided with Hyatt, however, finding that substantial blame for the delay rested with the PTO and that prosecution laches did not bar issuance of the applications. The court ultimately ordered the PTO to issue many of Hyatt’s claims.On appeal, the Federal Circuit reached several important holdings about prosecution laches. As a preliminary matter, it held that prosecution laches can be a defense in a Section 145 action. And it held that the defense was available even if the Patent Office never rejected the claims for laches during examination.The Court explained that prosecution laches can “‘render a patent unenforceable when it has issued only after an unreasonable and unexplained delay in prosecution that constitutes an egregious misuse of the statutory patent system under a totality of the circumstances.’”  The Court held that the district court had failed to assess the totality of the circumstances in deciding whether that standard was met. For example, the district court should have considered evidence tending to show Hyatt’s “pattern of conduct across an enormous body of similar applications” beyond the four at issue. The Federal Circuit also found that the district court overemphasized alleged PTO delays and underemphasized Hyatt’s behavior in prosecution:It is not the case that an applicant may prosecute his patents however he or she wishes within the statute and PTO regulation, because the doctrine of prosecution laches places an additional, equitable restriction on patent prosecution conduct beyond those imposed by statute or PTO regulation. An applicant must therefore not only comply with the statutory requirements and PTO regulations but must also prosecute its applications in an equitable way that avoids unreasonable, unexplained delay that prejudices others.Further, the PTO’s conduct may be considered in the totality of circumstances, but its delay “cannot excuse the applicant’s own delay” in prosecution.The Federal Circuit also refined the standard for applying prosecution laches in a Section 145 action: it determined that, like in infringement actions, the PTO has an obligation to show prejudice in order for prosecution laches to apply. The Federal Circuit further concluded, however, that prejudice is presumptively met by a prosecution delay of six years or more. And finally, the Federal Circuit held that “clear abuse of the PTO’s patent examination system” constitutes prejudice. “Clear abuse” occurs when the applicant “unduly increases the administrative burden on the PTO.”Given these conclusions, the Federal Circuit determined that the PTO sufficiently met its initial burden with respect to prosecution laches. The burden thus shifted to Hyatt to prove that he did not, in fact, engage in unreasonable or unexplainable delay. The Court remanded for the district court to consider evidence and decide that issue in the first instance.

Last Week in the Federal Circuit (June 7-11):  Prosecution Laches—Following the Letter of the Law May Not Always Be Enough

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Last Week in the Federal Circuit (June 7-11): Prosecution Laches—Following the Letter of the Law May Not Always Be Enough

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If last week’s post on prosecution disclaimer left you hoping for more decisions about the patent application process, you're in luck. This week we're covering 

Although last week saw just four Federal Circuit opinions, they were all precedential ones and covered a range of interesting issues. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest. Precedential opinions: 4Non-precedential opinions: 0 Rule 36: 0Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/18-2390.opinion.6-1-2021_1784662.pdf" target="_blank">Hyatt v. Hirshfeld</a>, No. 18-2390 (481 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/20-2067.opinion.6-3-2021_1785911.pdf" target="_blank">Lynch v. McDonough</a>, No. 20-2067 (56 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1573.opinion.6-3-2021_1785939.pdf" target="_blank">SpeedTrack, Inc. v. Amazon.com, Inc.</a>, Nos. 2020-1573 & 2020-1660Panel: Judges Prost, Bryson, and Reyna, with Judge Prost writing the opinion.You should read this case if: you have a matter involving claim construction after an alleged prosecution disclaimer.If you’re wondering what disavowal of claim scope by prosecution disclaimer looks like, keep reading. The primary claim at issue relates to a computer filing system (think virtual folders) and recites, “the category descriptions hav[e] no predefined hierarchical relationship with such list or each other” (emphasis added). SpeedTrack sued retail website operators for infringement. Thereafter and relying on prosecution disclaimers made by SpeedTrack, the district court construed “hierarchical relationship” to mean that category descriptions are ranked into levels of subordination based on predefined, hierarchical field-and-value relationships. In other words, “French” would be a value (i.e., a subordinate) of the field of “language.” Based on that construction, the district court found that using computer filing systems with defined field-and-value relationships does not infringe. On appeal, the Federal Circuit acknowledged that its only job was to determine whether the district court’s claim construction was correct. If so, no infringement. Reviewing the prosecution history, the Court found that SpeedTrack added the “hierarchical” limitation as an amendment during prosecution to overcome prior art. In attempting to distinguish itself from the prior art during prosecution, SpeedTrack explained that its invention is “essentially ‘fieldless’” and “‘free-form,’” whereas the prior art taught a hierarchical system based on user-defined, field-and-value relationships. Perhaps sealing its fate, SpeedTrack noted that the “hierarchical” limitation was added to capture the difference between its claimed system and that of the prior art. On appeal, SpeedTrack argued that it distinguished the prior art on other additional grounds, but the Court didn’t bite. Precedent dictated that distinguishing prior art on particular grounds can serve as a disclaimer of claim scope, even if the applicant also distinguishes the prior art on additional grounds. SpeedTrack also made arguments during litigation to distinguish the prior art for reasons similar to its prosecution statements.  SpeedTrack argued on appeal that the Court shouldn’t consider those litigation statements because they were not part of the intrinsic patent record and so cannot demonstrate prosecution disclaimer. It’s unclear what weight the Court ultimately gave to the litigation statements. While the Court admitted it’s “[t]rue enough” that the statements were not made during prosecution, the Court still noted that the statements provided further reason why SpeedTrack’s appeal arguments failed.In the end, the Court reminded litigants that the doctrine of prosecution disclaimer is rooted in equitable concerns: claims shouldn’t be construed one way to achieve allowance and another way to determine infringement.

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Last Week in the Federal Circuit (June 1–4): Prosecution Disclaimer – What’s Good for the Goose …

Last Week in the Federal Circuit (June 1–4): Prosecution Disclaimer – What’s Good for the Goose …

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Although last week saw just four Federal Circuit opinions, they were all precedential ones and covered a range of interesting issues. Below we provide our usual

We hope our readers had a restful Memorial Day Weekend. Even DC’s <a href="https://www.washingtonpost.com/weather/2021/05/29/cold-weather-cicadas/">cicadas</a> took the weekend off. Before the long weekend, the Federal Circuit left us with 3 precedential opinions, including one addressing what qualifies as prior art. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest. Precedential opinions: 3 Non-precedential opinions: 4 Rule 36: 0 Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1203.opinion.5-26-2021_1783046.pdf" target="_blank">Edgewell Personal Care Brands v. Munchkin, Inc.</a>, No. 20-1203 (202 days) (opinion modified following grant of rehearing petition) Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1283.opinion.5-28-2021_1784022.pdf" target="_blank">SPEX Techs., Inc. v. Western Digital Corp.</a>, No. 20-1283 (25 days) Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1937.opinion.5-28-2021_1784040.pdf" target="_blank">Becton, Dickinson and Company v. Baxter Corporation Englewood</a>, No. 20-1937Panel: Judges Prost, Clevenger, and Dyk, with Judge Dyk writing the opinionYou should read this case if: you have a prior art patent that was cancelled in inter partes review In our case of the week, a patent challenger challenged patent claims as obvious in light of a prior patent. But that prior patent was itself cancelled in an inter partes review. Does that patent remain prior art for purposes of the obviousness analysis? Baxter, the patent owner in this case, argued “no.” In Baxter’s view, an inter partes review is a second look at the patent grant, so when the inter partes review results in cancellation, it’s as if the patent was never granted in the first place. Here, the prior patent was cancelled in an inter partes review before Becton, Dickinson and Company filed its petition challenging Baxter’s patent. According to Baxter, that meant that by the time of this challenge to its patent, the prior patent was not prior art.The Federal Circuit disagreed. It held that a patent, once granted, can qualify as prior art regardless of whether it is currently valid. The Court pointed to the language of the Patent Act. This case arose under the pre-America Invents Act version of the statute, when 35 U.S.C. § 102(e)(2) provided that prior art includes “a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.” (Today, the statute similarly provides in § 102(a)(2) that prior art includes “a patent issued under section 151 . . . in which the patent . . . names another inventor and was effectively filed before the effective filing date of the claimed invention.”) The Court held that “[t]he text of the statute requires only that the patent be ‘granted,’ meaning the ‘grant[]’ has occurred.” Once the patent is granted, the Court reasoned, that condition is satisfied—even if the patent is later cancelled. The Court went on to hold that the prior patent, in combination with other prior art, did render obvious the claim limitations at issue. It therefore reversed the Board’s contrary determination as unsupported by substantial evidence.

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Last Week in the Federal Circuit (May 24-28): Once A Granted Patent, Always a Granted Patent?

Last Week in the Federal Circuit (May 24-28): Once A Granted Patent, Always a Granted Patent?

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We hope our readers had a restful Memorial Day Weekend. Even DC’s cicadas took the weekend off. Before the long weekend, the Federal Circuit left us with 3 prec

There's a new Chief Judge at the Federal Circuit (as of Saturday), but life continues as usual here at Federal Circuitry. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest. Precedential opinions: 2 Non-precedential opinions: 5Rule 36: 0 Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1292.opinion.5-17-2021_1778434.pdf" target="_blank">Conway v. United States</a>, No. 20-1292 (159 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1956.opinion.5-18-2021_1779356.pdf" target="_blank">In re: Rajagopalan</a>, No. 20-1956 (14 days) Case of the (recent) week: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-2164.opinion.5-12-2021_1776598.pdf" target="_blank">Trimble Inc. v. PerDiemCo LLC</a>, 19-2164 (May 12, 2021)Panel: Judges Newman, Dyk, and Hughes, with Judge Dyk writing the opinionYou should read this case if: you have a declaratory judgment patent case involving specific personal jurisdictionSince there were no precedential patent decisions last week while the week before had several, we decided to switch things up slightly by writing about one of the earlier week’s cases. The decision caught our eye because the Court discusses the importance of avoiding special patent rules when it comes to general rules of civil litigation. The case is about whether, and under what circumstances, demand letters for patent infringement sent into a state suffice to establish specific personal jurisdiction in that state over the patent owner. The Federal Circuit rejected any bright-line rule on this issue. Instead it held that the “central question” is “whether a defendant’s connection to a forum is sufficient to satisfy the minimum contacts or purposeful availment test,” a question that must be answered based on each case’s specific facts. The Court identified three reasons for rejecting any bright-line rule. First, it stressed the Supreme Court’s continued warnings against creating “special rules for patent litigation in the context of rules governing civil litigation generally.” Both eBay—for permanent injunctions—and SCA—for laches—rejected such special patent rules. Unless “Congress has enacted a patent-specific statute that ‘placed patent infringement cases in a class by themselves,’” courts generally should not themselves undertake such an endeavor. Second, the Court read non-patent Supreme Court cases as holding “that communications sent into a state may create specific personal jurisdiction, depending on the nature and scope of such communications.” Past Federal Circuit decisions had applied that principle in the context of patent litigation. The Court also noted other factors that past Federal Circuit decisions have considered, such as “hiring an attorney or patent agent in the forum state to prosecute a patent application” or the “presence of ‘an exclusive licensee doing business in the forum state.’” Third, the Court held that specific jurisdiction in patent cases should consider “a broad set of a defendant’s contacts with a forum.” According to the Court, that broad set includes considering “nonexclusive patent licenses” connected to the forum state.Applying these considerations, the Federal Circuit held that the declaratory judgment plaintiffs had established specific personal jurisdiction over the patent-owner defendant. The patent owner “accumulat[ed] an extensive number of contacts with the forum in a short period of time,” going “far beyond ‘solely informing a party who happens to be located [in the forum state] of suspected infringement.’” The patent owner had also “negotiated some ten other nonexclusive licenses, including several with large firms operating nationwide.” Those and related facts were enough to satisfy the minimum contacts required for personal jurisdiction.

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Last Week in the Federal Circuit (May 17-21): Avoiding Special Rules For Patent Litigation

Last Week in the Federal Circuit (May 17-21): Avoiding Special Rules For Patent Litigation

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There's a new Chief Judge at the Federal Circuit (as of Saturday), but life continues as usual here at Federal Circuitry. Below we provide our usual weekly stat

Some of the big news a couple weeks ago was the Supreme Court’s decision to invite the Solicitor General (SG) to file a brief expressing the views of the United States in American Axle, a Section 101 case involving an industrial process for manufacturing. This action—commonly referred to as a CVSG (Call for the Views of the Solicitor General)—provides a strong indication that the Supreme Court is seriously considering granting review in a case.As readers no doubt know, the Supreme Court often CVSGs in patent cases before granting cert. The Court recently CVSG’d two 101 cases only to deny review last Term (discussed in our article <a href="https://federalcircuitry.mofo.com/topics/200714-supreme-court-review-sometimes-what-is-not-decided-matters-more-than-what-is.html">here</a>). Given the importance of CVSGs and the fact they are intermediate stopping points for many patent cert petitions that actually get granted, we decided to catch up with the co-chair of MoFo’s Appellate and Supreme Court practice, <a href="https://www.mofo.com/people/deanne-maynard.html">Deanne Maynard</a>, to discuss them. Before joining the firm, Deanne was an Assistant to the Solicitor General for five years, representing the United States in the Supreme Court.Brian Matsui: I know you’re well-versed in CVSGs, both from being in the SG’s office and in private practice when cases get CVSG’d. So generally speaking, what does it mean when the Supreme Court CVSGs?Deanne Maynard: In the simplest terms, it means the Supreme Court is interested but wants more guidance. Some Justices on the Court are considering granting the petition, but there may be something holding the Court back. So they invite the views of the SG. And although it’s called an “invitation,” the SG views it as an order to file a brief on the cert-worthiness of the case and the question presented.As for what it means, it often allows the Court to get the views of an “honest broker,” a non-party who doesn’t have its own axe to grind in the case but still knows and cares a lot about the question presented. And the SG can tell the Court whether the case is a good vehicle to resolve the question or if there might be some obstacle that might get in the way. That can be helpful for the Justices. Of course, in patent cases, the United States may have more of an interest in how the question comes out: the government issues patents, handles agency patent challenges, owns patents itself, and is sometimes sued on others’ patents.Brian: So how does the process work? The Court asks for a brief, and after some period of time, one is filed?Deanne: There’s no deadline for CVSG briefs. But often you can tell, depending on the time of year of the invitation order, when the SG might file the brief. Generally, the SG tries to file briefs in time for cert petitions to be considered for certain Conferences, where the Justices discuss the petitions and decide which ones to grant. So some briefs will be filed in time for the Court to consider them before it recesses in July. Others will be filed over the summer, in time for the long summer Conference in September. And then in December, the SG might file briefs so that they can be granted in time for them to be heard before the last oral argument in April.So for American Axle, it’s too soon for the SG to file a brief before the Court recesses this summer. That means the first possibility would be over the summer before the September Conference. The Office generally will try to file the brief by then. But since there’s no deadline, it could take longer. If we look at the 101 cases denied last Term, the Court CVSG’d one several months before the other. But the second invitation came before the SG had responded to the first, so the SG decided to file both briefs at the same time so the government could coordinate its views across the two cases.Brian: How does the SG go about figuring out what the views of the United States should be? Does the SG’s Office have patent expertise?Deanne: As soon as the SG gets an invitation, the Office sends a request for the views of every affected agency as well as various Justice Department divisions. In patent cases, that often includes at least the PTO, the Department of Commerce, and the FTC, which often has views on intellectual property issues relating to competition. Depending on the case, it may also include agencies like the FDA and NIH. For the DOJ, it would include several parts of the civil division, which often deals with government IP issues, and the antitrust division. These agencies and divisions will send written views to the SG on what they think the United States’ position should be, on both the cert-worthiness and the merits of the question presented. But ultimately, it’s the SG who will decide what the view of the United States should be, and who will resolve any competing interests within the government. The Office currently has the benefit of a Deputy Solicitor General, Malcolm Stewart, who has supervised the patent docket for over decade. Before filing an invitation brief, the Office often meets with counsel for the parties to the case. If either party requests a meeting, the Office will meet with both sides. But if neither party makes a request, the Office generally doesn’t reach out to them. The meeting is a chance for the parties to explain why the cert petition should be granted or denied. In addition to the Deputy SG, the Assistant to the SG assigned to the case will be at the meeting, as well as representatives from the interested federal agencies and DOJ divisions. The meetings are often set up so the Office will meet with each party separately, followed by a government-only meeting so the Office can discuss with the other government entities what position the SG’s brief should take.Brian: Does the Court pretty much always follow the SG’s recommendation?Deanne: It depends on what the SG recommends. Yes, the Court almost always grants cert if the SG recommends grant. It’s confirmatory, as the Justices were already interested.But if the SG recommends deny, then it might depend on why the SG says deny. Sometimes the SG’s brief might recommend deny but say that the issue itself is really important and should be reviewed, just not in this case. In that situation, the SG might identify some possible reason why the case isn’t the right vehicle to resolve the question presented and say the Court should wait for a later case. The Court might grant anyway.The Court also might grant review if the SG says the case was wrongly decided but cert should be denied. For example, the SG might say the issue won’t have any widespread significance or the disagreement in the lower courts might resolve itself. But because the Court was already interested in the case when it CVSG’d, it might grant anyway. Still, we never know for sure why the Court grants or denies review because those orders are unexplained.Brian: So what do we make of American Axle given the cert denials on the 101 cases last Term?Deanne: Obviously the Court is interested, given the CVSG in American Axle. And on a superficial level, three CVSGs in 101 cases over the past couple of years suggests the Court sees something of interest.But I’m not sure how much you can draw from the other CVSGs or the cert denials last Term. The SG recommended deny in both 101 CVSGs, but it identified and recommended granting a third petition addressing methods of treating diseases. Of course, the Court denied that one too, and there’s no way to know why. But given the difference between the mechanical arts issues in American Axle and methods of treating diseases, I don’t think the Acting SG (or the SG, if one is confirmed before the brief is filed) will feel constrained by the prior grant recommendation. That recommendation was pretty closely tied to patent eligibility questions related to methods of treating diseases, even though the brief noted broader confusion stemming from the Supreme Court’s 101 jurisprudence. And while the Deputy SG is the same, the Administration is different. And we don’t yet know if the Biden Administration will feel differently about these issues.One thing to keep an eye on is how the SG views American Axle from a simplicity of technology perspective. In recommending deny in one of the CVSGs last Term, the brief noted that the Supreme Court in particular had less experience addressing patent eligibility questions in the software context. The SG suggested taking a case involving industrial processes, which is more like the issues in American Axle. But now that a case actually is before the Court, it will be interesting to see if the Office has any concerns that the technology and issues aren’t the best vehicle to address some of the 101 confusion the previous SG identified.

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Deanne Maynard, Washington, D.C.-based co-chair of our Appellate and Supreme Court practice, is one of the nation's most accomplished appellate advocates.

Deanne Maynard

Deanne Maynard | Appellate + Supreme Court Lawyer

For more than 20 years, Deanne Maynard, co-chair of Morrison Foerster’s Appellate and Supreme Court practice, has briefed and argued significant appeals in the United States Supreme Court and appellate courts across the country. She has argued 14 cases before the Supreme Court and filed over 100 briefs in that Court.

Deanne E. Maynard

CVSG in American Axle and Cases in General: What Does It Mean? A Q&A With Deanne Maynard

Some of the big news a couple weeks ago was the Supreme Court’s decision to invite the Solicitor General (SG) to file a brief expressing the views of the United

The Federal Circuit had a busy week, issuing 18 opinions—8 of them precedential.  One of those cases put a new spin on two PTAB-related issues we’ve covered extensively on this blog:  <a href="https://federalcircuitry.mofo.com/search/?s=arthrex">Arthrex</a> (which held PTAB judges were unconstitutionally appointed) and <a href="https://federalcircuitry.mofo.com/search/?s=thryv">the AIA’s no-appeal bar</a>.  Read on for this week’s statistics and our case of the week.Precedential opinions:  8Non-precedential opinions:  8 Rule 36:  12Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1506.OPINION.5-11-2021_1776030.pdf">Free Stream Media Corp. v. Alphonso Inc.</a>, No. 19-1506) (251 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1399.OPINION.5-13-2021_1777271.pdf">New Vision Gaming v. SG Gaming, Inc.</a>, No. 20-1399 (34 days)Case of the week:<a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1399.OPINION.5-13-2021_1777271.pdf">New Vision Gaming & Development, Inc. v. SG Gaming, Inc.</a> Nos. 20-1399 & 20-1400 Panel:  Judges Newman, Moore, and Taranto, with Judge Moore writing the majority opinion and Judge Newman concurring in part and dissenting in partYou should read this case if:  you have an Arthrex challenge not raised before the agency or you have an IPR or CBM with a forum-selection clause issueThe majority opinion in our case of the week is just one paragraph long.  But this short precedential decision packs a punch, resolving one important issue and implicating several more.The issue the Court resolved concerns Arthrex.  The appellant here challenged the Board’s decision in a CBM review on Arthrex grounds, but did so for the first time on appeal.  Was the Arthrex challenge waived?  No, the Court held, not where the Board’s decision and the Board rehearing petition both came before the decision in Arthrex issued.  The Court noted that it had previously reached that conclusion in a non-precedential order, but now with this decision, the Court has made that holding precedential.As we’ve <a href="https://federalcircuitry.mofo.com/topics/201124-orders-of-interest-roundup-arthrex-style.html">observed</a> before, the Court has continued to apply its decision in Arthrex in some cases while the case is under review at the Supreme Court.  Add this case to the list:  the Court vacated and remanded on Arthrex grounds.The majority stopped there, but Judge Newman did not.  Her separate opinion concurred on the Arthrex issue but dissented from the majority’s decision not to reach other issues in the case.  One of those issues concerns a contractual forum-selection clause.  Years ago, the parties here entered a patent licensing agreement, which included a clause providing that disputes would be resolved in state or federal court in Nevada.  Does that clause bar the PTAB from conducting CBM review of the patent licensed in that agreement?  The Board answered “no,” reasoning that no “contractual estoppel defense” appears expressly in any statute or rule governing the Board.  But Judge Newman cited precedent generally requiring enforcement of forum-selection clauses.  And she noted a non-precedential Federal Circuit decision indicating that petitioning for PTAB review could violate a forum-selection clause.  While Judge Newman’s opinion did not ultimately state a firm answer to the question, she argued that the Court should have resolved the question before sending the case back to the PTAB.She thought the same about a related question the Court declined to reach:  Is the Board’s decision not to enforce a forum-selection clause appealable?  Both SG Gaming (which prevailed before the Board) and the PTO (as intervenor) argued that this issue falls within the judicial-review bar in 35 U.S.C. § 324(e).  That provision for CBM review—like the judicial-review bar for IPRs, 35 U.S.C. § 314(d)—makes the “determination by the Director whether to institute” review “final and nonappealable.”  According to SG Gaming and the PTO, the decision to conduct review despite a forum-selection clause is a decision whether to institute review, and therefore nonappealable.  But Judge Newman disagreed, arguing that the “rejection of the parties’ choice of forum is indeed subject to judicial review” because that decision concerns the Board’s “conduct” of review rather than its institution of review. While Judge Newman disagreed with the majority’s decision not to reach these issues in this case, it seems all but certain that these interesting, important questions will be back before the Court someday.

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Last Week in the Federal Circuit (May 10-14): The Arthrex and No-Appeal-Bar Gifts Keep on Giving

Last Week in the Federal Circuit (May 10-14):  The Arthrex and No-Appeal-Bar Gifts Keep on Giving

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The Federal Circuit had a busy week, issuing 18 opinions—8 of them precedential.  One of those cases put a new spin on two PTAB-related issues we’ve covered ext