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>

En Banc Tracker

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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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

You’ve lost your case before a Federal Circuit panel and you file a rehearing petition.  When can you expect good news (or at least some news…)?Timing of rehearing decisionsFor a rehearing petitioner, the threshold positive sign to look for is a call for a response (or “CFR”).  Under the federal appellate rules, a party can’t file a response opposing a rehearing petition unless the Court requests one.  That request is a sign that at least one judge has some interest in the petition.  Even with a CFR, the overwhelming majority of petitions still get denied.  But since a CFR is a gating requirement for any successful rehearing petition, we took a look at when you might expect to receive a CFR to your rehearing petition.  (We examined petitions for panel and en banc rehearing since November 2019 that had a CFR.  You can follow these cases with our <a href="https://federalcircuitry.mofo.com/trackers/en-banc-tracker">En Banc Tracker</a>.)When will the Court make its decision?  We found the CFR comes, on average, about 20 days after the petition is filed.  Then, from the filing of the response to the decision on rehearing, we found the Court takes on average 40 days.Who’s issuing the CFRs?There are usually two types of CFRs (although it’s not apparent from the docket and a bit of an imperfect science).  CFRs that come early typically come from the panel that decided the appeal, as they get first crack at looking at any petition for rehearing, regardless of whether it is styled as a petition for panel rehearing or en banc.  See Internal Operating Procedures (IOP) ##12 & 14.2.  Under the Court’s IOPs, the panel has 10 business days to decide what to do, and during that time any judge on the panel can CFR.  See IOP ##12.1(b), 12.4(b).CFRs that come later, by contrast, typically come from a judge outside the panel.  Once the panel’s 10 business day period expires, the petition goes to the full Court for 10 business days, and any active judge on the Court can request a response.  See IOP #14.2.So with that in mind, we decided to take a look at whether and how often the panel versus non-panel members of the Court request a response—that is, take some interest in the case.  We thought panel decisions with dissents likely would get a CFR early by the panel, since the dissenting judge could request one. To test that hypothesis, we separated the CFRs we’ve collected into early (14 calendar days or less between petition and CFR) and late (15 days or more).  We chose that dividing line to approximate the 10-business-day line in the Court’s IOPs.  (But that approximation is imperfect because holidays can make 10 business days longer than 14 calendar days.  And, of course, we couldn’t exactly be certain that early CFRs came from the panel rather than someone from the Court at large.  The IOPs contemplate early circulation of a rehearing petition to the full Court if the panel affirmatively votes not to rehear the case early, but our speculation is that this doesn’t happen much.)Here is what we found:<div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/blt79f5a23e4e0a7afa/627316bcb5ad5f2863c595c4/chart23321.png?format=auto&amp;quality=60" alt="Chart"/></div>So the $64 question is whether anything can be gleaned from this.  We have to caveat that the sample size is small, and we’re looking only at rehearing petitions that received a CFR.  But there were a few surprises.  A large portion of CFRs came early, and thus presumably from the panel that heard the case (43% of all the CFRs we collected).  The panel CFR’d in many cases despite a unanimous merits decision (13 of 19 CFRs).  And whether a member of the panel dissented from the merits decision didn’t seem to affect whether the CFR came early (from the panel) or late (from the rest of the Court):  CFRs in cases with panel dissents were evenly split between the two categories.  So surprisingly often, even when there was a panel dissent the petition went to the full Court before the response requests (half of CFRs with panel dissents; none of those petitions were granted).  Finally, and this is really almost certainly a small sample size thing (but still seems interesting), the sooner the CFR, the higher the grant rate.  We’ll continue tracking the data to see if it’s an anomaly, or something more.

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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The Lifespan of a Rehearing Petition

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You’ve lost your case before a Federal Circuit panel and you file a rehearing petition.  When can you expect good news (or at least some news…)?
Timing of rehea

The Lifespan of a Rehearing Petition

Federal Circuit Insights

Last week was argument week, and the Federal Circuit previewed its new YouTube channel for streaming live arguments (sadly, audio only for now).  Still, that didn’t slow the Federal Circuit down in issuing opinions, including six precedential ones.  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: 6Non-precedential opinions: 4Rule 36: 7Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/19-2261.opinion.3-4-2021_1742616.pdf" target="_blank">Safeguard Base Operations, LLC v. United States</a>, No. 19-2261 (241 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/19-2280.opinion.3-4-2021_1742622.pdf" target="_blank">Olaplex, Inc. v. L’Oreal USA, Inc.</a>, No. 19-2280 (55 days)Case of the week:<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1646.opinion.3-2-2021_1741285.pdf" target="_blank">Rain Computing, Inc. v. Samsung Electronics America, Inc.</a>, Nos. 20-1646, -1656Panel:  Judges Lourie, Dyk, and Moore, with Judge Moore writing the opinionYou should read this case if:  you have a claim term with functional language that may be subject to means-plus-function interpretationEveryone knows patents must end with claims that “particularly point out and distinctly” identify the invention.  35 U.S.C. § 112(a).  But some inventions don’t lend themselves to succinct delineation in the claims.  So Congress provided an alternative—rather than identify in the claims an exact structure or step that is an element of the invention, patentees can express the element as “a means or step for performing a specified function.”  35 U.S.C. § 112(f).  When they do, the claim will be “construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”  Id.  Congress thus allowed a sort of shorthand—patentees can detail the structure, material, etc. essential to their invention in other parts of the specification and use so-called means-plus-function (or step-plus-function) language to incorporate those details into the claims.This week’s case deals with when claims trigger means-plus-function interpretation and what details the specification must give about the corresponding structure, material, or acts.  Rain Computing owns a patent to a method for providing software over a network.  The claimed method requires a step of sending “a user identification module configured to control access” to software.Does that language trigger means-plus-function interpretation?  The Federal Circuit said yes.  It applied a rebuttable presumption that “user identification module” was not a means-plus-function term because it lacks the word “means.”  It held the presumption rebutted—“module” is “a well-known nonce word that can operate as a substitute for ‘means.’”  That was how the patent here used the term, as a “black box recitation of structure.”  The prefix “user identification” was no help—it “merely describes the function of the module: to identify a user.”  Nor did it matter that the applicant had amended the claims from “user identification module for accessing” to “user identification module configured to control access.”  The “configured to” phrasing was still “purely functional.”  The Court also clarified that method claims can include a “nested” means-plus function term.Because “user identification module” was a means-plus-function term, the Court asked whether other parts of the patent disclose adequate structure corresponding to the claimed function.  The Federal Circuit rejected the district court’s view that the patent’s disclosure of generic “computer-readable media or storage devices” was adequate structure.  “These computer-readable media or storage devices amount to nothing more than a general-purpose computer.”  But Federal Circuit precedent had long required more than a general purpose computer except in the “rare” situation where any general purpose computer can perform a claimed function “without any special programming.”  The Court held this was not that rare situation, as both the patent owner and the inventor agreed some programming would be required.  And under that precedent, Rain Computing’s claims were invalid for indefiniteness—the lack of adequate corresponding structure meant the patent failed to particularly point out and distinctly claim the invention.

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.

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Last Week in the Federal Circuit (March 1-5): Purely Functional Claiming And Means-Plus-Function Elements

Last Week in the Federal Circuit (March 1-5):  Purely Functional Claiming And Means-Plus-Function Elements

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Last week was argument week, and the Federal Circuit previewed its new YouTube channel for streaming live arguments (sadly, audio only for now).  Still, that di

Last Week in the Federal Circuit

Since we’re all about data at Federal Circuitry, we took a quick look at what our data show about how often Federal Circuit judges sit each year.  To quantify that, we looked at how many different panel days each judge heard argument for 2018, 2019, and 2020.  We excluded panels convened to hear only one case.  That can happen, for example, because of a rare argument on a motion or for plus panels, where one judge of a main panel is replaced for a single case (perhaps because of conflicts or when a case comes back after a remand).Here’s the result:<div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/bltce05bf2347823871/627316bba1a1dd2aa9f6ca02/chart101.png?format=auto&amp;quality=60" alt="Chart Indicating Panel Days Per Year 2018-2020"/></div>For the twelve active judges, the data confirm what we often hear – the judges decide many cases a year.  Each active judge averaged about 35 panel days per year.  Since each panel generally decides 4-6 cases (argued and submitted), even on the low end that’s 140 cases per year, or around 12 a month.  That’s just another reminder of the importance of clear, strong appeal briefs—judges often have to understand years of litigation and complex issues in a relatively short time.Looking at specific judges, Chief Judge Prost sat the most days of any judge across this three-year span, followed by Judge Reyna and then Judge Lourie.  The raw numbers thus suggest you’re more likely to see (or lately, hear) one of those judges on argument morning.The data also give some details about which senior judges you might find yourself in front of.  Judge Clevenger sat the most full panel days of any senior judge over the last three years; Judges Schall and Bryson tied for second.  Judge Plager sat the least days, so advocates had to settle for seeing Judge Plager in his amazing courthouse portrait (with his cat).Check back soon for a follow-up post looking at monthly trends of when judges sit.

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How Often Do Federal Circuit Judges Sit?

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Since we’re all about data at Federal Circuitry, we took a quick look at what our data show about how often Federal Circuit judges sit each year.  To quantify t

How Often Do Federal Circuit Judges Sit?

<p style="box-sizing: inherit;margin-top: 0px;margin-right: 0px;margin-bottom: 1.25rem;margin-left: 0px;padding-top: 0px;padding-right: 0px;padding-bottom: 0px;padding-left: 0px;font-size: 1.0625rem;line-height: 1.6;text-rendering: optimizelegibility;font-variant-numeric: normal;font-variant-east-asian: normal;color: rgb(82, 83, 87);hyphens: manual;overflow-wrap: normal;">Below is an excerpt from one of Morrison & Foerster’s blogs, <a href="https://govcon.mofo.com/" target="_blank" style="box-sizing: inherit;background-color: transparent;color: rgb(77, 169, 197);line-height: inherit;text-decoration-line: none;">Government Contracts</a>, where our lawyers offer a real-time assessment of the statutory, regulatory, legal, and business-related developments and trends that are shaping the industry. The blog’s regularly-published Insights provide an in-depth analysis of developments and trends affecting government contracting. To read this post in full on our Government Contracts blog, please click <a href="https://govcon.mofo.com/topics/u-s-navy-breached-implied-in-fact-software-license-federal-circuit-decides-in-bitmanagement/" target="_self" style="box-sizing: inherit;background-color: transparent;color: rgb(77, 169, 197);line-height: inherit;text-decoration-line: none;">here</a>.<p style="box-sizing: inherit;margin-top: 0px;margin-right: 0px;margin-bottom: 1.25rem;margin-left: 0px;padding-top: 0px;padding-right: 0px;padding-bottom: 0px;padding-left: 0px;font-size: 1.0625rem;line-height: 1.6;text-rendering: optimizelegibility;font-variant-numeric: normal;font-variant-east-asian: normal;color: rgb(82, 83, 87);hyphens: manual;overflow-wrap: normal;">  <p style="box-sizing: inherit;margin-top: 0px;margin-right: 0px;margin-bottom: 1.25rem;margin-left: 0px;padding-top: 0px;padding-right: 0px;padding-bottom: 0px;padding-left: 0px;font-size: 1.0625rem;line-height: 1.6;text-rendering: optimizelegibility;font-variant-numeric: normal;font-variant-east-asian: normal;color: rgb(82, 83, 87);hyphens: manual;overflow-wrap: normal;">The Federal Circuit handed a substantial victory to Bitmanagement Software GMBH last week, finding the U.S. Navy had infringed the company’s copyright by installing its three-dimensional visualization software on hundreds of thousands of government computers without using license-tracking software to monitor and limit the number of simultaneous users.  The court’s <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1139.OPINION.2-25-2021_1739332.pdf" style="box-sizing: inherit;background-color: transparent;color: rgb(77, 169, 197);line-height: inherit;text-decoration-line: none;">decision</a> is significant, not only in affirming the lower court’s finding that an implied-in-fact license existed between the government and Bitmanagement despite no privity of contract between the two (who transacted through a reseller), but also in taking the further step of holding the Navy to a key condition of that license, one the Navy failed to meet, with the potential for a hefty damages award to the software vendor.

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Locke Bell is a partner in the firm’s Government Contracts & Public Procurement practice.

Locke Bell

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U.S. Navy Breached Implied-in-Fact Software License, Federal Circuit Decides in Bitmanagement

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Below is an excerpt from one of Morrison & Foerster’s blogs, Government Contracts, where our lawyers offer a real-time assessment of the statutory, regulatory, 

U.S. Navy Breached Implied-in-Fact Software License, Federal Circuit Decides in Bitmanagement

All eyes are on Arthrex this week, right?  So of course we decided to take a look at a Court decision reviewing the Board, and one that—so says the dissent—creates a circuit split.  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: 3Non-precedential opinions: 4Rule 36: 1Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/19-1704.opinion.2-22-2021_1736971.pdf" target="_blank">SynQor, Inc. v. Vicor Corp.</a>, No. 19-1704 (290 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1693.opinion.2-23-2021_1737903.pdf" target="_blank">MModal LLC v. Nuance Communications, Inc.</a>, No. 20-1693 (18 days)Case of the week:<a href="http://www.cafc.uscourts.gov/opinions-orders/19-1704.opinion.2-22-2021_1736971.pdf" target="_blank">SynQor, Inc. v. Vicor Corp.</a>, No. 19-1704 (Fed. Cir. Feb. 22, 2021)Panel:  Judges Dyk, Clevenger, and Hughes, with Judge Hughes writing the opinion and Judge Dyk dissenting.You should read this case if:  You’re interested in issue preclusion or have one of the 10 remaining inter partes reexamination casesLast week a divided Court took a look at issue preclusion in administrative proceedings, and that definitely caught our eye.  The appeal involves inter partes reexaminations—so if you haven’t had one, you aren’t likely to since they began their slow sunset after Congress passed the AIA and replaced them with inter partes reviews.  In this reexamination, the Board found the patent owner’s claims would have been obvious, ruling against the patent owner on whether certain prior art references were incompatible and on motivation.  The details don’t really matter for our purposes.  What does matter is that in another, earlier (and now final) reexamination involving a different but related patent and the same parties, the Board reached the opposite conclusion on those two issues.  So patent owner took an appeal in the later case, arguing that issue preclusion (also known as collateral estoppel) precludes relitigation of the issues that the patent owner won in the earlier case but lost in the later one.  Not to bury the lede:  the patent owner won.Much of the Court’s opinion addressed whether common law issue preclusion applied to inter partes reexaminations.  The Court noted it previously held preclusion applied to inter partes reviews, and that courts presume issue preclusion applies to administrative proceedings absent evidence of contrary intent from the statutory text.  We won’t pause long on this part of the decision.  The Court noted—on that front—that its decision would govern a limited number of cases.  How limited?  In a footnote, the Court noted that only 10 inter partes reexaminations remain pending before the Board.  So the short of it:  issue preclusion applies and is consistent with the now defunct statutory scheme governing inter partes reexaminations.Now for the slightly longer version:  the parties (and the Court) disputed whether issue preclusion could apply if inter partes reexaminations are “examinational” or “inquisitorial” proceedings rather than “adversarial” or “adjudicatory” ones—since the examiner, not the parties, frames and drives the proceeding.  The Court determined that inter partes reexaminations gave the patent owners and third-party requestors enough rights to present and rebut evidence and arguments, even though the parties have no discovery rights or subpoena powers, depriving the parties of deposing (and therefore cross-examining) witnesses.  On the latter point, the Court acknowledged the importance of cross-examination of witnesses, but said it’s not the only way to test credibility.  It pointed to the presentation of contrary evidence.  Of course, the Court noted that not everyone agrees with it that issue preclusion can apply without cross-examination or live testimony, and it cited other courts and commentators suggesting otherwise.Turning to the merits of whether preclusion applied to the facts before it, the Court recited the familiar requirements for issue preclusion:  “(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.”  The Court emphasized that the question is whether the issues are identical, not whether the patent claims in the earlier and later inter partes reexaminations are identical.  And on that point, the Court held that whether two prior art references were compatible and there was motivation to combine them were resolved in the earlier inter partes reexamination proceeding:  “The Board, acting as trier of fact, decided this issue.”  And because these issues were essential to the Board’s earlier patentability decision and both parties had a full and fair opportunity to litigate the issues, issue preclusion barred relitigation.  The Court emphasized that “collateral estoppel applies “even if new evidence exists” in the later proceeding.Finally, the Court addressed new claims that had been added during reexamination.  Because the patent expired before the new claims issued, the patent owner’s appeal over those new claims became moot.  The patent owner thus requested that the Board’s decision on the new claims be vacated under Munsingwear.  The Court agreed, and vacated the Board’s decision as to those new claims to prevent “an unreviewable decision from spawning any legal consequences”—like, for example, the issue preclusion issues the Court just decided.Of course there is more:  Judge Dyk dissented.  He disagreed that issue preclusion applies to inter partes reexaminations because they are examinational (or inquisitorial) and not adjudicatory and fail to include court-like procedures.  For support, Judge Dyk pointed to Supreme Court and Federal Circuit precedent describing inter partes reexamination proceedings as inquisitorial rather than adjudicative.  He zeroed in on the absence of any right to cross-examine witnesses, stating that the Supreme Court has emphasized the importance of cross-examination for the discovery of truth and that other circuits have refused to apply issue preclusion when cross-examination was unavailable.  And here, Judge Dyk highlighted the importance of cross-examination in this case.  He noted that one difference potentially explaining the different outcomes in the first versus the second Board decision was that the patent owner’s witnesses had been deposed in related district court litigation after the first case and before the second case.

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Last Week in the Federal Circuit (February 22-26): Who Needs Cross Examination? Issue Preclusion Before the PTAB

Healthcare, Biologics, and Severability: Will the ACA—and the BPCIA—Survive the Latest Challenge?

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All eyes are on Arthrex this week, right?  So of course we decided to take a look at a Court decision reviewing the Board, and one that—so says the dissent—crea

Last Week in the Federal Circuit (February 22-26):  Who Needs Cross Examination?  Issue Preclusion Before the PTAB

Although argument week isn’t until next week, the Federal Circuit heard oral argument today in two cases. One was rescheduled from earlier this month for medical reasons. But the other, GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., No. 18-1976, caught our eye because of how it came about procedurally. (It’s also super interesting substantively, but because we’re procedure nerds, we’re focusing on procedure today.) The case appears to represent the rare situation (first we’ve seen) where a Federal Circuit panel withdraws its own precedential opinion and asks for re-argument without public action by the en banc Court. And it provides a nice case study of how the rehearing process works at the Federal Circuit, so we thought we’d walk through it.So how did we get here? If the case name sounds familiar, that’s because the Federal Circuit already heard oral argument in the case almost a year and a half ago, in September 2019 (back in the good ol’ days of in-person arguments). Then in October 2020, the Court issued a widely discussed opinion—authored by Judge Newman and joined by Judge Moore—holding that Teva was liable for infringing a GSK method of treatment patent based at least in part on Teva’s drug label. Chief Judge Prost dissented, concluding that the majority opinion wrongly found inducement based on Teva’s marketing for unpatented uses through a so-called “skinny label.” See 21 U.S.C. § 355(j)(2)(A)(viii).Teva filed a petition for en banc rehearing only. That is, Teva’s petition did not ask for panel rehearing. But the Practice Notes to the Federal Circuit’s rules explain that “[a] petition for rehearing en banc is presumed to request relief that can be granted by the panel that heard the appeal, and action on the petition for rehearing en banc will be deferred until the panel has an opportunity to grant the relief requested.” That note matches the Court’s internal operating procedures (IOPs), which specify that the clerk sends en banc rehearing petitions first to the original panel. IOP #14, ¶ 2(a). The original panel then has ten working days to act on the petition. IOP #12, ¶ 1(b). If the panel takes no action or votes to deny the petition within that time, the clerk will circulate the petition to the full en banc Court.Teva filed its petition on December 2, 2020. Ten working days later, on December 16, the Court invited a response to the petition, which a single judge can request. Because that request came within ten working days of the petition’s filing, the IOPs suggest the request likely came from one of the original panel members. (The clerk doesn’t have to wait the full ten working days if all original panel members indicate before then that they are voting to deny the petition, so it’s possible the petition had already been circulated to the en banc Court.)GSK filed its response on January 29, 2021 (with lots of amici filing briefs in the interim supporting further review). Under the IOPs, the clerk would have then circulated the petition and response back to the original panel members with a new ten-working-day deadline to decide whether to take any action. IOP #12, ¶ 4. Seven working days later, on February 9, the Court issued an order “On Petition For Rehearing” that listed only Chief Judge Prost and Judges Newman and Moore. The order vacated the October 2020 judgment and withdrew the accompanying opinion. And it scheduled a new oral argument for 10 a.m. today.What does it all mean? The timeline and wording of the Court’s order suggest that even though Teva filed an en banc rehearing petition, the petition never made it beyond the original panel. That distinguishes this case from others we’ve seen (such as <a href="https://federalcircuitry.mofo.com/topics/Last-Week-in-the-Federal-Circuit-October-19-23-Still-More-Axes-to-Grind-in-American-Axle.html">American Axle</a>) where an original panel withdrew its prior opinion and issued a revised one at the same time the full Court issued an order denying en banc review. When that happens, judges beyond the original panel participated in the action on the petition, and likely at least had a chance to comment on the revisions to the panel decision. After all, once the clerk circulates a petition to the full court, any judge can weigh in about whether certain revisions would lead him or her to agree with the panel decision or at least to vote to deny en banc review. From the public information here, nothing indicates other judges had a chance to weigh in. Of course, it’s possible that still happened privately—this is a fairly high-profile case and petition, and because the original panel decision was precedential, it would have circulated to the full Court before issuing. IOP #10, ¶ 5. But all public indications are that the action here came only from the original panel. (If the panel drafts a new opinion for publication, however, that draft likely would again circulate to the full Court before issuance, and the full Court may issue an order acting in some way on the en banc petition simultaneously with the issuance of any new panel opinion. See IOP #14, ¶ 2.)Time will tell what all this means for the case outcome. Today’s oral argument was lively and well worth a listen. For now, we’ll have to be satisfied with understanding a bit about how the sausage is made.

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Know Your En Banc Petition Process—How An En Banc Petition In GlaxoSmithKline v. Teva Led To A New Panel Argument Without Apparent En Banc Action

Know Your En Banc Petition Process—How An En Banc Petition In GlaxoSmithKline v. Teva Led To A New Panel Argument Without Apparent En Banc Action

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Although argument week isn’t until next week, the Federal Circuit heard oral argument today in two cases. One was rescheduled from earlier this month for medica

The Federal Circuit had a slow week, issuing only 8 decisions (just 3 of them precedential).  But among those was an interesting case with a question of first impression about the doctrine of equitable intervening rights.  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: 3Non-precedential opinions: 5Rule 36: 0Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/19-1927.opinion.2-18-2021_1735559.pdf" target="_blank">Canfield Scientific, Inc. v. Melanoscan, LLC</a>, No. 19-1927 (316 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1552.opinion.2-16-2021_1733600.pdf" target="_blank">Takeda Pharmaceutical Company v. Torrent Pharmaceuticals Ltd.</a>, No. 20-1552 (11 days)Case of the week:<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1090.opinion.2-19-2021_1736234.pdf" target="_blank">John Bean Technologies Corp. v. Morris & Associates, Inc.</a>, No. 20-1090Panel:  Judges Lourie, Reyna, and Wallach, with Judge Reyna writing the opinionYou should read this case if:  you have a case involving a reissued or reexamined patent, where there might be a defense of equitable intervening rightsMorris and John Bean make poultry chillers—a business so exciting they are the only two companies in the country to do it.  Their presumably fierce rivalry spilled into the Federal Circuit in our case of the week.In 2002, John Bean obtained a patent.  Believing the patent was invalid, Morris made poultry chillers with features described in the patent.  Eleven years later, John Bean obtained reexamination of its patent.  Armed with the amended claims, John Bean sued Morris for infringement.To Morris, this seemed unfair:  It had invested in making poultry chillers based on the patent as it stood in 2002, then the reexamination pulled the rug out from under it.  So Morris asserted the affirmative defense of equitable intervening rights under 35 U.S.C. § 252.  That defense allows a would-be infringer to continue making, using, or selling a product if it did so before reissuance or reexamination.  But that is allowed only “to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.”To John Bean, this defense seemed inapplicable:  While the doctrine protects investments made in reliance on earlier circumstances, Morris’s investment had already paid off.  Morris had sold enough poultry chillers since 2002 to recoup all the money it invested in this line of business.The question for the Federal Circuit was whether a defendant is barred from asserting the defense of equitable intervening rights when it has already recouped all monetary investments made before the reexamination or reissue.  No, the Court held, a court can still grant this equitable remedy even in that scenario. Addressing the statute, the Court observed that this was its first “opportunity to examine the boundaries of the phrase ‘protection of investments’ in § 252.”  Noting that the “text does not specify” any “precise[]” limits, the Court saw “no indication” that monetary investments “are the only investments that a court may deem sufficient to protect.”  The Court therefore held that recoupment is only one “factor that a court may consider” in the equitable analysis—not a per se bar.The Court also emphasized that equitable remedies are “flexible.”  (Apparently, “equity abhors a defendant who has already recouped all monetary investments” is not on anyone’s list of equitable maxims.)  The Court stopped short of setting forth a comprehensive standard for the equitable analysis.  Instead, it held only that the district court did not abuse its discretion, without expressly adopting the district court’s seven-factor test.The opinion contains another important holding.  John Bean had argued that willful infringement makes a defendant a bad actor unable to assert equitable defenses like equitable intervening rights.  The Court rejected that proposed bar on the equitable-intervening-rights defense, too.  It held instead that a defendant satisfying § 252’s requirements for the equitable-intervening-rights defense is not an infringer at all, and therefore cannot willfully infringe.

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Last Week in the Federal Circuit (February 15-19): Equitable Intervening Rights

Last Week in the Federal Circuit (February 15-19):  Equitable Intervening Rights

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The Federal Circuit had a slow week, issuing only 8 decisions (just 3 of them precedential).  But among those was an interesting case with a question of first i

Did you remember to send your favorite examiner a Valentine’s Day card?  Okay, so maybe that’s not the typical applicant/examiner relationship.  But this week we do look at some potential consequences from the back and forth between examiners and applicants.  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: 7Non-precedential opinions: 16Rule 36: 4Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/19-2196.opinion.2-12-2021_1732513.pdf" target="_blank">Synchronoss Technologies, Inc v. Dropbox, Inc.</a>, No. 19-2196 (191 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1261.opinion.2-10-2021_1730972.pdf" target="_blank">Caterpillar Paving Products v. Wirtgen America, Inc.</a>, No. 20-1261 (8 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1833.opinion.2-8-2021_1729415.pdf" target="_blank">Chudik v. Hirshfeld</a>, No. 20-1833Panel:  Judges Taranto, Bryson, and Hughes, with Judge Taranto writing the opinionYou should read this case if:  you have a matter involving patent term adjustment, particularly delays due to PTAB appealsOur case of the week deals with the exciting world of patent term adjustment, which allows patent owners to ask the Patent Office to extend a patent’s term because of delays during examination.  By statute and regulation, only some kinds of delays qualify for an adjustment.Chudik focuses on one type of delay, called C-delay (based on the relevant statutory provision defining it).  C-delay allows patent owners to seek adjustment for delays caused by “appellate review” that “reverses” an earlier adverse determination of unpatentability.  The relevant provision (35 U.S.C. § 154(b)(1)(C)(iii)) applies to delay due to:appellate review by the Patent Trial and Appeal Board or by a Federal Court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability.The issue in Chudik was whether a C-delay occurs when an applicant appeals a rejection to the Board but, before the Board hears the case, the examiner withdraws the rejection and reopens prosecution.  Chudik got a patent on a guide for shoulder surgery, but not without some sprains, strains, and tears.  During the examination, he appealed four times to the Board from examiner rejections, only to have the examiner withdraw the rejection each time and re-open prosecution.  Although the examiner finally allowed the claims after the fourth appeal, Chudik claimed he was entitled to 655 days of “C-delay” for the period when his four appeals were pending.  The PTO denied his request and the district court upheld the PTO’s decision.The Federal Circuit affirmed based on the statute’s plain language.  According to the Federal Circuit, there was no C-delay because Chudik’s patent did not result from an appeal decision “reversing” an examiner determination of unpatentability.  Rather, Chudik was (un)lucky enough to have an examiner reconsider an earlier position and back down before the Board heard his case.  The ordinary usage of a “decision” following “appellate review” leading to reversal required that “a distinct reviewing authority” take action to modify the examiner’s decision, not that the examiner herself decide to reconsider.The Court noted that another type of delay, B-delay, would normally be available in situations where an examiner unilaterally acts before an appeal decision.  B-delay typically allows adjustments for prosecution time beyond three years.  But B-delay excludes adjustments for “time consumed by continued examination … requested by the applicant.”  That meant Chudik could not benefit from a B-delay adjustment—before beginning the merry-go-round of appeal-withdrawal-reopen-rejection, he had received an earlier final rejection and requested continued examination rather than filing an appeal.  The Federal Circuit thus concluded with a cautionary note:  “The unavailability of B-delay for nearly two years (655 days) of delay in the PTO illustrates what applicants should understand when deciding whether to request a continued examination rather than take an immediate appeal.  The potential benefit of immediate re-engagement with the examiner through such continued examination comes with a potential cost.”

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Last Week in the Federal Circuit (February 8-12): Patent Term Adjustments When Examiners Back Down

Last Week in the Federal Circuit (February 8-12): Patent Term Adjustments When Examiners Back Down

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Did you remember to send your favorite examiner a Valentine’s Day card?  Okay, so maybe that’s not the typical applicant/examiner relationship.  But this week w

Last week I took a look at affirmance rates—both in general and excluding Rule 36s (see <a target="_blank" href="https://federalcircuitry.mofo.com/topics/Its-Two-Weeks-After-Your-Argument-And-Youve-Heard-Nothing--What-Does-That-Mean.html">It’s Two Weeks After Your Argument, And You’ve Heard Nothing.  What Does That Mean</a>).  This week I decided to see what things have been like for cases submitted since the Federal Circuit went to telephonic arguments.  My first thought was that the affirmance rates would be about the same for appeals during the current era of the telephonic argument compared to our overall numbers.  Although I wondered if our sample size would to be too small, MoFo’s appellate paralegal, Chad Borgman, found that over 500 appeals (including more than 250 patent appeals) have been decided in cases submitted since the pandemic forced the Court to go remote.So what did I find out:  not to bury the lede, but the numbers were not what I expected.  The significant gap in affirmance rates when comparing patent owner appeals and non-patent owner appeals mostly disappeared—that is, a significantly higher percentage of appeals are being affirmed, with non-patent owners being the relative losers.  (I offer a possible explanation that may make this a phantom, timing-based disparity, with one big “but see” at the end.)<div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/blt60eb91b7d9db8869/62f67171df0a3871e08aaf87/valentinechart1.png?format=auto&amp;quality=60" alt="Chart"/></div>My first reaction was:  wow, these affirmance rates are way higher than I expected—particularly for IPR petitioners in PTAB appeals who now lose more than patent owners.  By comparison, here are the numbers we crunched last week, which looks at all appeals decided from November 2019 to February 2021:<div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/blt52c9e839eed83a60/62f671b3305090599e33ddda/valentinechart2.png?format=auto&amp;quality=60" alt="Chart"/></div>So what explains the difference?  Are cases being affirmed more since the Court went remote?  Possibly.  But one alternative—and perhaps likely—explanation is that, despite our sample size being decent‑sized, looking at appeals based upon submission date skews more toward affirmances.  In other words, if we’re looking at appeals submitted and decided over slightly less than a year, the cases submitted and decided in the past few sessions (think the December and January sessions) likely skew toward affirmance.  Those decisions may be Rule 36s (which by definition are affirmances) or short non-prec opinions in unargued cases (which tilt toward affirmance).<div class="embedded-entry redactor-component block-entry" type="entry" data-sys-entry-uid="bltc159130bca9bdd40" data-sys-entry-locale="en-us" data-sys-content-type-uid="image_content" sys-style-type="block"><div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/blt5e34304a96929cb7/62f671fbe717bf11519ad720/valentinechart3.png?format=auto&amp;quality=60" alt="Chart"></div></div>Just to finish the analysis, I took out Rule 36s from the data.  The affirmance rate of course shifts downward, because you’re taking out a chunk of affirmances.But not surprisingly, the rates don’t shift all that dramatically.  There have been fewer Rule 36s since the Court went remote, as about a quarter to a half of oral arguments get cancelled each month (with cancelled argument cases being prime candidates for Rule 36 affirmances and instead often resulting in non-prec affirmances (see our post <a href="https://federalcircuitry.mofo.com/topics/No-Argument-No-Opiniona-Quick-Look-at-Unargued-Rule-36-Decisions-During-the-Pandemic.html">No</a> Argument, No Opinion—A Quick Look At Unargued Rule 36 Decisions During The Pandemic)). <div class="embedded-entry redactor-component block-entry" type="entry" data-sys-entry-uid="blt92904e8654e6d7b4" data-sys-entry-locale="en-us" data-sys-content-type-uid="image_content" sys-style-type="block"><div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/blt9607ad01db5a5820/62f672392a66d4760f013f3d/valentinechart4.png?format=auto&amp;quality=60" alt="Chart"></div></div>By now you may be wondering if there’s anything to glean from these numbers...  The stats suggest a higher affirmance rate, but there’s an explanation that suggests that the actual affirmance rate may not, in fact, be higher.That’s fair:  about halfway through writing this post, I had my own doubts.  But one additional stat maybe suggests that the higher affirmance rate for patent appeals may not be entirely explained by mere timing issues:  the affirmance rate for non-patent cases.  As I noted last week, the affirmance rate for non-patent cases is 63.7% and 59.1% once Rule 36s are removed.  Based on the above, one would expect that rate to be higher.  Not so.  It’s a little lower:  since the Court went remote, non-patent cases have been affirmed 62.8% of the time and 58.9% of the time with Rule 36s.  And while that, too, might be explained (after all, non-patent cases, on average tend to be decided quicker) it at least lends some support to the hypothesis that patent cases are being affirmed at a slightly higher rate since the Court went remote.

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Is Your Appeal More Likely to Be Affirmed Since the Court Went Remote? a Post Valentine’s Day Definitely, Maybe…

Is Your Appeal More Likely to Be Affirmed Since the Court Went Remote?  a Post Valentine’s Day Definitely, Maybe…

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Last week I took a look at affirmance rates—both in general and excluding Rule 36s (see It’s Two Weeks After Your Argument, And You’ve Heard Nothing.  What Does

Since we started this blog, we have taken a look at win-loss percentages a number of times.  Now that we recently updated our statistics (sortable, <a href="https://federalcircuitry.mofo.com/statistics">here</a>), we took another look.  This time we thought we’d add a twist to our calculations by answering the following question:  how much do a party’s odds change once you remove Rule 36 affirmances?  For those less familiar with the Court, Rule 36 affirmances are one word judgments that merely state “AFFIRMED.”  They usually happen a week or two after oral argument (but see <a href="https://federalcircuitry.mofo.com/topics/Last-Week-in-the-Federal-Circuit-December-14-18-Andor-confusion.html">here</a>) and occasionally happen in un‑argued cases (see <a href="https://federalcircuitry.mofo.com/topics/No-Argument-No-Opiniona-Quick-Look-at-Unargued-Rule-36-Decisions-During-the-Pandemic.html">here</a>).  By definition, excluding Rule 36s means the reversal rate will go up—after all, we’ve removed a significant percentage of affirmances.  But we wondered how much it goes up, and what type of appeal benefits (depending on your perspective) the most.For this post, we took a look at patent appeals.  For a baseline, the statistics generally seemed in line with the last time we took a look <a href="https://federalcircuitry.mofo.com/topics/201021-who-wins-who-loses-revisited.html">here</a>.  (We look at all, district court, and PTAB appeals—ITC appeals are included in the “all” category since there aren’t enough of them to make it worthwhile as a third category.)<div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/blt8c86cb20db67612e/627316b2a1a1dd2aa9f6c9fa/chart12.png?format=auto&amp;quality=60" alt="Chart"/></div>As the chart above shows, the overall affirmance rate remains high.  But it is lower for district court appeals compared to PTAB appeals and for non-patent owner appeals compared to patent owner appeals.Now let’s take a look when we take out the Rule 36s.  Right away, it’s clear the biggest change is for non‑patent owner appellants.  Overall, a defendant or IPR petitioner that appeals becomes the favorite once you’re a few weeks past oral argument and Rule 36s are no longer expected, obtaining some sort of relief 53% of the time overall and 60% of the time when looking at just district court appeals.<div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/blt2b2417683e46c170/627316b24886af2aa2be10ae/chart22.png?format=auto&amp;quality=60" alt="Chart"/></div>Now, our statistics are sortable, so you can look at other tribunals.  For example, if we look at non‑patent cases, the affirmance rate goes from 64% to 59% once Rule 36s are removed—a much smaller decrease.  In all likelihood the decrease is due to the fact that most Rule 36s happen on the Court’s patent docket, as more of that docket has oral argumentsThat’s all for this week.  Next week we’ll take a look at whether any of these numbers are different if we only look at cases submitted since the Court went remote with telephonic arguments.  Until then, in the words of Effie:  “May the odds be ever in your favor.”  Suzanne Collins, The Hunger Games.

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It’s Two Weeks After Your Argument, And You’ve Heard Nothing. What Does That Mean?

It’s Two Weeks After Your Argument, And You’ve Heard Nothing.  What Does That Mean?

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Since we started this blog, we have taken a look at win-loss percentages a number of times.  Now that we recently updated our statistics (sortable, here), we to