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-316296595{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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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

At Federal Circuitry blog, we like to check in once in a while on what the Federal Circuit is doing in its orders that don’t get posted on the public website. Those orders often offer nuggets about practice at the Federal Circuit and sometimes even give insight into more substantive issues. So below we flag a few orders that caught our eyes.In looking at orders in the last month or so, we noticed a range of orders in pending cases following the Supreme Court’s certiorari grant in Arthrex (see <a href="https://federalcircuitry.mofo.com/topics/Supreme-Court-to-Review-Arthrex.html" target="_blank">Supreme Court to Review Arthrex: Big Deal or Ho Hum?</a> and <a href="https://federalcircuitry.mofo.com/topics/What-Does-the-Supreme-Courts-Grant-on-Social-Security-Cases-Have-to-Do-With-iArthrexi.html" target="_blank">What does the Supreme Court’s Grant in Two Social Security Cases Have to Do with Arthrex?</a>). In some, the Federal Circuit declined to halt proceedings even though Arthrex’s fate remains uncertain in the Supreme Court. For example, the Federal Circuit <a target="_blank" href="https://media2.mofo.com/v3/assets/blt5775cc69c999c255/blt417e29c8fcf1d161/6273169b0d4d8e1d7f10f2a6/201021-finjan-stay-order.pdf">denied </a>an opposed stay request by an appellant from an inter partes review in appeal No. 19‑2151. The movant was a petitioner who argued for vacatur under the Federal Circuit’s decision in Arthrex but acknowledged that Federal Circuit precedent foreclosed that argument. Although the movant argued that the Supreme Court’s review had the potential to change that precedent, a per curiam order denied the motion.Along the same lines, in another per curiam <a target="_blank" href="https://media2.mofo.com/v3/assets/blt5775cc69c999c255/blt59b20610750c2e87/6273169c8e09542a15b7deb3/201027-new-arthrex-remand-order.pdf">order </a>in appeal No. 20-1444, the Federal Circuit granted a patent owner’s motion to vacate and remand to the PTAB under Arthrex. Although the petitioner and the government opposed that relief, the Federal Circuit granted it less than a week after the parties had been notified of oral argument scheduling. Consistent with the stay denial in appeal No. 19‑2151, the Court treated the Federal Circuit’s Arthrex decision as dispositive despite the pending Supreme Court review.In two other cases, however, the Federal Circuit stayed cases based on the cert. grant in Arthrex. Both those cases seem to differ from the above because they involve unsettled questions about the effect of Arthrex. Thus in appeal No. 20-1196, about a week before the scheduled oral argument, the Federal Circuit sua sponte <a href="https://media2.mofo.com/v3/assets/blt5775cc69c999c255/blta31cf23bac6f624f/6273169c4886af2aa2be10a6/201023-ttab-order.pdf" target="_blank">canceled </a>argument and ordered the case stayed pending the Supreme Court’s decision in Arthrex. The appeal was from the TTAB, not the PTAB, and the opening brief argued that Arthrex should apply to TTAB judges. And in appeal No. 19-2454, the Court <a href="https://media2.mofo.com/v3/assets/blt5775cc69c999c255/blt714360b789cdac25/627316a00d4d8e1d7f10f2aa/201023-mspb-arthrex-order.pdf" target="_blank">granted </a>the government’s unopposed stay request based on the Arthrex cert. grant and again canceled a scheduled oral argument. The appeal involved another unanswered question—whether the reasoning of Arthrex extends to the MSPB.Looking at these cases together, the Court appears to be continuing to apply its settled precedent on Arthrex when that precedent squarely applies to the facts of a given case. But it may be less likely to extend that settled precedent to new facts until it receives further guidance from the Supreme Court.<div><div><div id="_com_4" class="msocomtxt" language="JavaScript"></div></div></div><div id="_mcePaste" style="position: absolute;left: -10000px;top: 0px;width: 1px;height: 1px;overflow-x: hidden;overflow-y: hidden;">At Federal Circuitry blog, we like to check in once in a while on what the Federal Circuit is doing in its orders that don’t get posted on the public website. Those orders often offer nuggets about practice at the Federal Circuit and sometimes even give insight into more substantive issues. So below we flag a few orders that caught our eyes in the past couple weeks. In looking at orders in the last month or so, what caught our attention the most was a range of orders in pending cases following the Supreme Court’s certiorari grant in Arthrex (see <a href="https://federalcircuitry.mofo.com/topics/Supreme-Court-to-Review-Arthrex.html">Supreme Court to Review Arthrex: Big Deal or Ho Hum?</a> and <a href="https://federalcircuitry.mofo.com/topics/What-Does-the-Supreme-Courts-Grant-on-Social-Security-Cases-Have-to-Do-With-iArthrexi.html">What does the Supreme Court’s Grant in Two Social Security Cases Have to Do with Arthrex?</a>). In some cases, the Federal Circuit declined to halt proceedings even though Arthrex’s fate remains uncertain in the Supreme Court. For example, in one case, the Federal Circuit denied an opposed stay request by a petitioner/appellant from an inter partes review in appeal No. 19‑2151. The movant was a petitioner who argued for vacatur under the Federal Circuit’s decision in Arthrex but acknowledged that Federal Circuit precedent foreclosed that argument. Although the movant argued that the Supreme Court’s review had the potential to change that precedent, a per curiam order denied the motion. Along the same lines, in another per curiam order in appeal No. 20-1444, the Federal Circuit granted a patent owner’s motion to vacate and remand to the PTAB under Arthrex. Although the petitioner and the government opposed that relief, the Federal Circuit granted it less than a week after the parties had been notified of oral argument scheduling. Consistent with the stay denial in appeal No. 19‑2151, the Court treated the Federal Circuit’s Arthrex decision as dispositive despite the pending Supreme Court review. In two other cases, however, the Federal Circuit stayed cases based on the cert. grant in Arthrex. Both those cases seem to differ from the above because they involve unsettled questions about the effect of Arthrex. Thus in appeal No. 20-1196, about a week before the scheduled oral argument, the Federal Circuit sua sponte canceled argument and ordered the case stayed pending the Supreme Court’s decision in Arthrex. The appeal was from the TTAB, not the PTAB, and the opening brief argued that Arthrex should apply to TTAB judges. And in appeal No. 20-1444, the Court granted the government’s unopposed stay request based on the Arthrex cert. grant and again canceled a scheduled oral argument. The appeal involved another unanswered question—whether the reasoning of Arthrex extends to the MSPB. Looking at these cases together, it appears that the Court will continue to apply its settled precedent on Arthrex when that precedent squarely applies to the facts of a given case. But it may be less likely to extend that settled precedent to new facts until it receives further guidance from the Supreme Court.<div><div><div id="_com_1" class="msocomtxt" language="JavaScript"></div></div><div><div id="_com_4" class="msocomtxt" language="JavaScript"></div></div></div></div>

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Orders of Interest Roundup, Arthrex Style

Last Week in the Federal Circuit (July 6-10): Arthrex Strikes Again

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Excerpt: In a roundup of recent orders, we look at how the Federal Circuit is responding to the certiorari grant in Arthrex.

Orders of Interest Roundup, Arthrex Style

Federal Circuit Insights

It’s a few days before Thanksgiving and the sunsets are shorter and earlier, so we thought we’d discuss a CBM case before the sun completely sets on that procedure. 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: 3Rule 36: 1Longest case pending from argument: Tie between <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-1852.opinion.11-19-2020_1688201.pdf">Whitewater West Industries v. Alleshouse</a>, Nos. 19-1852, 19-2323 and <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/20-1054.opinion.11-19-2020_1688174.pdf">Vectura Limited v. GlaxoSmithKline LLC</a>, No. 20-1054 (45 days)Shortest case pending from argument (non-rule 36): <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-2040.opinion.11-17-2020_1686702.pdf">Koninklijke Philips N.V. v. Iancu</a>, No. 19-2040 (15 days)Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/18-1635.opinion.11-17-2020_1686726.pdf">SIPCO, LLC v. Emerson Electric Co., No. 18-1635 (Nov. 17, 2020)</a>Panel: Judges O’Malley, Reyna, and Chen, with Judge Chen authoring the opinionYou should read this case if: you filed a CBM case before the statutory sunset in September.Even though Halloween is long gone (as is our candy), we thought we’d discuss a zombie case this week. First decided in September 2019, the original Federal Circuit decision in this case held that the Board erred in instituting CBM review on SIPCO’s patent—that is, the Board erroneously determined SIPCO’s patent recited a business method that was not excluded from review as a “technological invention.” That meant that SIPCO had beat the long odds (see post <a href="https://federalcircuitry.mofo.com/topics/201021-who-wins-who-loses-revisited.html">here</a>) and prevailed as a patent owner in a PTAB case. (For those that don’t know what CBM is, it’s probably a little late now. The procedure sunset in September 2020, which means there are no more future cases although the Board and Court will still be deciding the pending ones.)Emerson Electric, however, said not so fast. It filed a cert petition raising whether the Patent Office’s threshold determination that SIPCO’s patent qualified for CBM review was reviewable in an appeal from a PTAB final decision. That issue, of course, was similar to a then-pending case in the Supreme Court: Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020). And in Thryv, the Supreme Court held that the Patent Office decision as to whether earlier litigation bars institution of inter parties review under 35 U.S.C. § 315(b) is “final and nonappealable” under the “No Appeal” provision of 35 U.S.C. § 314(d). And as is common when the question presented in a pending cert petition may be affected by a recently decided Supreme Court decision, the Supreme Court GVR’d (granted the petition, vacated the decision, and remanded), here, in light of Thryv.So SIPCO came back to life in the Federal Circuit. The Court noted that CBM review is subject to the near-identical “No Appeal” provision in 35 U.S.C. § 324(e), which states that “[t]he determination by the Director whether to institute a post-grant review under this section shall be final and nonappealable.” And the Court explained that the determination whether a patent qualifies for CBM review—that is, whether it claims a business method and is not a “technological invention”—is “expressly and exclusively tied to the decision to institute the proceeding.” The Federal Circuit thus concluded that Thryv makes clear that the threshold determination that a patent qualifies for CBM review is non-appealable under 35 U.S.C. § 324(e).Having held that it couldn’t review whether SIPCO’s patent was a CBM, the Federal Circuit had to address patentability. The PTAB had determined the claims ineligible under § 101 and unpatentable under § 103. The Court side-stepped eligibility and addressed only obviousness—which really amounted to three claim construction issues, although the Court noted that substantial evidence supported the Board even under two of SIPCO’s preferred constructions. We’re not going to dive into those case-specific claim construction issues here—one of which briefly touches upon the ever-present issue of trying to import limitations from the specification into the claims. But as an aside, it you’ve been looking for a case stating the what-should-be-unremarkable proposition that just because a claim term had one meaning in one case doesn’t mean it has to have the same meaning in another case, this case is for you. The Court noted that just because it construed the term “low power RF signal” one way in an earlier case involving the same parties doesn’t mean that a similar term has the same meaning in a later case. The Court noted: “that case involved different patents, in entirely different patent families, with different specifications. We find it unsurprising that similarly worded claims may be construed differently when presented in such different contexts and different records.”Enjoy Thanksgiving everyone.

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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Last Week in the Federal Circuit (November 16-20): A Beautiful Sunset for CBMs

Last Week in the Federal Circuit (November 16-20): A Beautiful Sunset for CBMs

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It’s a few days before Thanksgiving and the sunsets are shorter and earlier, so we thought we’d discuss a CBM case before the sun completely sets on that proced

Last Week in the Federal Circuit

I was counsel of record on an <a href="https://www.supremecourt.gov/DocketPDF/19/19-840/143417/20200513125326824_Adler%20et%20al.%20Amicus%20Brief%20ISO%20Petitioners%205.13.2020.pdf" target="_blank">amicus brief</a> in California v. Texas for four law professors arguing that even if the Affordable Care Act’s individual mandate is unconstitutional, it can be severed from the rest of the statute. This post states my own views, not necessarily those of amicus brief’s signatories.The Biologics Price Competition and Innovation Act of 2009 (“BPCIA”) is looking alive and well after last week’s Supreme Court oral argument on the Affordable Care Act (“ACA”).If you didn’t realize the BPCIA was at issue in California v. Texas—the latest of many attempts to invalidate the Affordable Care Act—you are not alone. The BPCIA, a law allowing for FDA approval of “biosimilars” (less expensive versions of already-approved biologic medicines), seems far afield from the Affordable Care Act’s marquee provisions expanding health coverage and reforming health insurance markets.But the BPCIA was in fact Title VII, Subtitle A of the Affordable Care Act. That provenance has put the BPCIA at risk from the repeated, politically charged attempts to invalidate the entire ACA.The latest such case argued last week began after Congress amended the ACA in 2017. By then, the Supreme Court in NFIB v. Sebelius had already held that the Affordable Care Act’s “individual mandate” could be construed as a tax and upheld on that basis. But after the 2017 Congress reduced that tax to zero, several Republican states (later joined by the Trump Department of Justice) argued that the mandate could no longer be a tax provision and was now unconstitutional. The challengers further argued that the entire ACA was inseverable from the now-unconstitutional mandate and thus should fall.The challengers’ inseverability argument for total invalidation extends not just to the ACA’s reforms of the health insurance market (such as its prohibition of coverage denials based on pre-existing conditions) but also to what the Trump DOJ <a target="_blank" href="https://www.supremecourt.gov/DocketPDF/19/19-840/146406/20200625205555069_19-840bsUnitedStates.pdf">characterized </a>as the statute’s “comparatively ‘minor,’ ancillary provisions”—including the BPCIA.Manufacturers of biologics and biosimilars might be surprised by the characterization of the BPCIA as “minor” or “ancillary.” The FDA has approved at least 28 biosimilars since 2010.<a class="anchor" id="_ftnref1" name="_ftnref1" href="#_ftn1">[1]</a> It has been estimated that nine of these drugs alone are already creating more than $250 million in annual market savings.<a class="anchor" id="_ftnref2" name="_ftnref2" href="#_ftn2">[2]</a>In any event, after last week’s oral argument it appears that the BPCIA and the rest of the ACA’s provisions—whether characterized as major or minor—are safe. It has been widely expected that the Court’s three more liberal members, Justices Breyer, Sotomayor, and Kagan, would vote to leave the rest of the ACA intact even if the tax-less “mandate” were found unconstitutional. That means at least two of the Court’s six more conservative Justices would also need to support a holding that the “mandate” is severable from the rest of the statute for that position to win. Based on their comments at oral argument, it appears that at least Chief Justice Roberts and Justice Kavanaugh are likely to provide those two critical votes.For example, Chief Justice Roberts observed that the Court’s severability doctrine requires it to ask “whether Congress would want the rest of the law to survive if an unconstitutional provision were severed” and noted that “here, Congress left the rest of the law intact when it lowered the penalty to zero.” He said “[t]hat seems to be compelling evidence on the question.” Justice Kavanaugh also appeared to lean in favor of severability: “looking at our severability precedents, it does seem fairly clear that the proper remedy would be to sever the mandate provision and leave the rest of the Act in place, the provisions regarding preexisting conditions and the rest.” Making case outcome predictions from oral argument can be perilous, but these statements struck many Court observers as quite definitive.Yale Law School Professor Abbe Gluck has called the Affordable Care Act “the most challenged—and the most resilient—statute in modern American history.”<a class="anchor" id="_ftnref3" name="_ftnref3" href="#_ftn3">[3]</a> It appears likely that the statute—and its subpart, the BPCIA—will show its resilience yet again when the Court rules in California v. Texas. Decision is expected by July 2021.<a class="offset" id="_ftn1" name="_ftn1" href="#_ftnref1">[1]</a> FDA, Biosimilar Product Information: FDA-Approved Biosimilar Products, <a href="https://www.fda.gov/drugs/biosimilars/biosimilar-product-information" target="_blank">https://www.fda.gov/drugs/biosimilars/biosimilar-product-information</a>.<a class="offset" id="_ftn2" name="_ftn2" href="#_ftnref2">[2]</a> Wayne Winegarden, Incenting Competition to Reduce Drug Spending: The Biosimilar Opportunity 4 (2019), <a href="https://www.pacificresearch.org/wp-content/uploads/2019/07/BiosimilarsCompetition_F.pdf">https://www.pacificresearch.org/wp-content/uploads/2019/07/BiosimilarsCompetition_F.pdf</a>.<a class="offset" id="_ftn3" name="_ftn3" href="#_ftnref3">[3]</a> Abbe R. Gluck, Affordable Care Act Entrenchment, 108 Georgetown L.J. 495 (2020), <a href="https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3561167">https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3561167</a>.

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Joe Palmore co-chairs Morrison Foerster’s Appellate and Supreme Court practice and is resident in the firm’s Washington, D.C. and New York offices. 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

Joe Palmore co-chairs Morrison Foerster’s Appellate and Supreme Court practice and is resident in the firm’s Washington, D.C. and New York offices. 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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Healthcare, Biologics, and Severability: Will the ACA—and the BPCIA—Survive the Latest Challenge?

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

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I was counsel of record on an amicus brief in California v. Texas for four law professors arguing that even if the Affordable Care Act’s individual mandate is u

Last week, the Federal Circuit was relatively busy, issuing five precedential opinions and three other written decisions.  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: 5Non-precedential opinions: 3Rule 36: 6Longest case pending from argument: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2291.OPINION.11-9-2020_1682328.pdf">Hessami v. MSPB</a>, No. 19-2291 (189 days)Shortest case pending case from argument (non-rule 36): <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1828.OPINION.11-13-2020_1684550.pdf">In re: Google Technology Holdings LLC</a>, No. 19-1828 (38 days)Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1104.OPINION.11-9-2020_1682293.pdf">Donner Technology, LLC v. Pro Stage Gear, LLC</a>, No. 20-1104Panel: Chief Judge Prost and Judges Dyk and Hughes, with Chief Judge Prost writing the opinionYou should read this case if: you have an obviousness issue where the prior art comes from a different fieldIn deciding whether a claimed invention is obvious, the Federal Circuit has held, the prior art that matters is the “analogous art.”  What is “analogous art”?  The Court took up that question in our case of the week.This case involves a patent for a guitar effects pedalboard.  An electric guitar can be connected to pedals that make sound effects.  A pedalboard, as the name suggests, is a board that houses the pedals.  According to the patent, prior art pedalboards made it difficult to swap or rearrange pedals because of how the wiring was laid out.  The claimed invention aims to solve that problem with a different way of mounting pedals and routing wires.The IPR petition in this case challenges various claims as obvious in light of a patent relating to electrical relays.  That patent—we’ll follow the Court’s lead and call it the “Mullen” patent—issued several decades earlier and describes a structure that provides space for wiring channels.The PTAB rejected the obviousness challenge because it determined that the Mullen patent is not “analogous art.”  The Federal Circuit vacated the decision, finding multiple errors in the PTAB’s “analogous art” analysis.The Mullen patent, all agreed, is not from the “same field of endeavor” as the claimed invention (one concerns electrical relays; the other concerns guitar pedalboards).  Therefore, under Federal Circuit precedent, the reference is analogous art only if it “still is reasonably pertinent to the particular problem” addressed by the patent.  The Court held that this means “the problems to which both relate” (meaning both the reference and the claimed invention) “must be identified and compared.”The PTAB failed to do so, the Court held.  For one, the PTAB never identified the problem addressed by the prior art reference.  For another, the PTAB didn’t properly identify the problem addressed by the claimed invention.  According to the PTAB, the patent’s purpose was “to mount guitar effects on a pedal board.”  The Court rejected this as a factual matter, finding it not supported by substantial evidence.  The Court also found legal error, holding that the PTAB’s characterization of the patent’s purpose “is so intertwined with the patent’s field of endeavor that it would effectively exclude consideration of any references outside that field.”  Future cases may hash out just how broadly to define the problem a patent is trying to solve.The Court also noted yet another reversible error for good measure:  The PTAB appeared to have ignored arguments and evidence presented by the petitioner.The Court went on to address three considerations the PTAB had relied on.  First, the PTAB noted “significant differences” between the Mullen patent and the claimed invention.  Second, the PTAB concluded that the relevant person of ordinary skill would have had a poor understanding of the Mullen technology.  Third, the Mullen patent was much older than the claimed invention.  These considerations were insufficient standing alone to make the Mullen patent irrelevant, the Federal Circuit held, because the PTAB failed to connect these observations to the governing legal standard.By this point, the Court had all but held that the Mullen patent was analogous art.  Yet the Court stopped short of saying so.  Instead, it vacated the PTAB’s decision and left it to the Board to apply the clarified legal standard to these facts.  The Court may have been driven by scrupulous adherence to principles of judicial modesty.  Or maybe the panel members disagreed over whether the Mullen patent was indeed analogous art, and this narrow result was an effective compromise that yielded this instructive—and unanimous—opinion.

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 (November 9-13): Analyzing Analogous Art

Last Week in the Federal Circuit (November 9-13): Analyzing Analogous Art

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For obviousness, what counts as relevant prior art?  The Federal Circuit explains in our case of the week.

Last week was argument week at the Federal Circuit, which as usual meant the Court issued several Rule 36 affirmances and short non-precedential decisions. But tucked in between those was at least one case—a Hatch-Waxman case—with important ramifications going forward. 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: 2Non-precedential opinions: 9Rule 36: 6Longest pending case from argument: <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-1530.opinion.11-4-2020_1680467.pdf">Chevron U.S.A. Inc. v. University of Wyoming Research</a>, No. 19-1530 (155 days)Shortest pending case from argument (non-Rule 36): <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-2129.opinion.11-6-2020_1681764.pdf">Perfectus Aluminum, Inc. v. United States</a>, No. 19-2129 (32 days)Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-2402.opinion.11-5-2020_1681030.pdf">Valeant Pharmaceuticals North America LLC v. Mylan Pharmaceuticals Inc.</a>, No. 19-2402 (Nov. 5, 2020)Panel: Judges Newman, O’Malley, and Taranto, with Judge O’Malley writing the opinion.You should read this case if: you have a venue issue in a Hatch-Waxman case.Since the Supreme Court’s TC Heartland decision in 2017, patent litigants and courts have grappled with venue questions that the Supreme Court left unanswered. In pharmaceutical patent suits between brand-name and generic drug companies under the Hatch-Waxman Act, one of these questions was where the relevant “acts of infringement” occur, since that location is critical under the patent venue statute:Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.28 U.S.C. § 1400(b) (emphasis added).In Hatch-Waxman cases, the act of infringement is statutorily defined under 35 U.S.C. § 271(e)(2)(A) as the submission of an abbreviated new drug application (“ANDA”) for a patented drug or use. When suit is filed, the generic drug has yet to be approved by the FDA or marketed in the United States, so more traditional acts of infringement (e.g., selling the infringing product) have yet to occur. Instead, a Hatch-Waxman suit seeks to resolve in advance whether the future distribution of the generic drug would infringe the asserted patent claims.This aspect of the Hatch-Waxman statutory scheme led to the question in Valeant: for venue purposes, is the location where “acts of infringement” occured limited to where the defendant committed acts relating to the submission of the ANDA, or does it also include the locations where the defendant contemplates future distribution of the generic drug that allegedly would infringe the patent claims? Practically speaking, the “future distribution” theory would have placed few restrictions on venue (beyond the “regular and established place of business” requirement) given that pharmaceutical companies typically seek to market their drugs throughout the United States after FDA approval.The Federal Circuit went with the more restrictive answer based on a “plain language” reading of the statutes. It held that § 1400(b)’s “has committed acts of infringement” language focuses on the location of a past act of infringement—where an act preceding the filing of suit occurred. And it held that only the submission of the ANDA constitutes an act of infringement under § 271(e)(2). Thus, other than where a defendant is incorporated, venue is proper “only in those districts that are sufficiently related to the ANDA submission—in those districts where acts occurred that would suffice to categorize those taking them as a ‘submitter’ under § 271(e).” This holding significantly limits venue options for Hatch-Waxman cases.The Federal Circuit acknowledged some of the policy concerns with this approach: generic companies could “game” the system to avoid certain jurisdictions, and brand-name companies might have to file identical suits against different generic companies in multiple districts. But the Federal Circuit found that these concerns could not override the plain language of the statutes and left it to Congress to decide whether to revise them. It remains to be seen whether generic companies actually will try to avoid certain jurisdictions by moving their operations (and possibly changing their place of incorporation as well).Interestingly, in answering the big-picture venue question for Hatch-Waxman cases, the Federal Circuit left some more nuanced questions unanswered. It explicitly declined to say precisely what acts are sufficient to make a company a “submitter” under § 271(e), leaving future cases to “define what all relevant acts involved in the preparation and submission of an ANDA might be.” It also left open the question of whether an act of infringement occurs in the District of Maryland based on the FDA’s receipt of the ANDA there. It did not need to address these questions in Valeant because the district court found that no act involved in the submission of the ANDA occurred in the district where the suit was filed (New Jersey). The Federal Circuit did note that “acts protected by the safe harbor provisions in § 271(e) are non-infringing for all purposes, including venue.” But district courts following Valeant will have to sort out for themselves the precise contours of the acts that make one a “submitter” for venue purposes.

Amgen Inc., et al. v. Sandoz Inc., et al. (Northern District of California).

Applied Biosystems Group v. Illumina (Northern District of California).

Nevro v. Stimwave (District of Delaware).

Nevro v. Boston Scientific (Northern District of California).

The Medicines Company v. APP Pharmaceuticals (District of Delaware).

Alzheimer’s Institute of America v. CoMentis (Western District of Oklahoma).

Trimble Navigation Ltd. v. Hemisphere GPS (Northern District of California).

Intellectual Ventures v. Altera (District of Delaware).

Confidential Wireless Telecommunications Arbitration (International Centre for Dispute Resolution).

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Eric Pai focuses his practice on intellectual property litigation, with particular emphasis on life sciences disputes regarding biotechnology, medical devices, and biologics and pharmaceuticals. He ha

Eric C. Pai

Eric Pai

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Last Week in the Federal Circuit (November 2-6): Limits on Venue in Hatch-Waxman Cases

Last Week in the Federal Circuit (November 2-6): Limits on Venue in Hatch-Waxman Cases

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Last week was argument week at the Federal Circuit, which as usual meant the Court issued several Rule 36 affirmances and short non-precedential decisions. But 

As readers know, we have written about Arthrex a lot. So what better way to start Monday than another short post? Today, the Supreme Court granted cert. in Carr v. Saul, No. 19-1442, and Davis v. Saul, No. 20-105—two cases involving the Social Security Act. What does that have to do with Arthrex? Here’s the question presented for both petitions:Whether a claimant seeking disability benefits under the Social Security Act forfeits an appointments-clause challenge to the appointment of an administrative law judge by failing to present that challenge during administrative proceedings.The issue in both Carr and Davis is whether Social Security claimants needed to raise their Appointments Clause challenge in the administrative agency.On its face, that is essentially the same as one of the questions that the government sought review of in Arthrex—arguing that patent owners forfeited their Appointments Clause challenge by not raising it in the PTAB. Here is what the government <a target="_blank" href="https://www.supremecourt.gov/DocketPDF/19/19-1458/148434/20200722154503654_19-1452%20et%20al.%20-%20Smith%20%20Nephew%20-%20Cert%20Response%20Memo.pdf">asked</a> the Supreme Court to review in Arthrex:Whether the court of appeals in Arthrex erred by adjudicating an Appointments Clause challenge that had not been presented to the agency.But unlike in the Social Security cases granted today, the Supreme Court did not grant review of the government’s forfeiture question in Arthrex. At first glance, that inconsistency now seems odd. The government in today’s Social Security cases even <a target="_blank" href="https://www.justice.gov/sites/default/files/briefs/2020/10/01/20-105_davis.pdf">noted</a> that “[t]he question presented in these cases overlaps with one of the questions presented in United States v. Arthrex, Inc., petition for cert. pending, No. 19-1434 (filed June 25, 2020).” And if the Supreme Court in Carr and Davis were to broadly hold that claimants forfeit their Appointments Clause challenges by not raising them in the Social Security Administration, wouldn’t that suggest that the Federal Circuit would need to reconsider its ruling that patent owners preserved appointments-clause challenges despite failing to raise them before the PTAB? (Of course, that assumes the Supreme Court holds there is an appointments-clause problem with PTAB judges in Arthrex.)Before you read too much into this—there are many differences between the Social Security cases and Arthrex. For starters, Carr and Davis aren’t about whether Social Security ALJs are constitutionally appointed; that issue was essentially decided by the Supreme Court in Lucia—which decided that Securities and Exchange Commission ALJs were inferior officers rather than employees, and thus needed to be appointed by a department head. The Social Security Administration fixed the constitutional problem identified in Lucia by having the head of the department ratify the ALJs’ appointment. (And it should be noted that the issue in Arthrex, in contrast, is whether the PTAB judges are inferior officers or principal officers, the latter requiring presidential appointment and Senate advice and consent.) So the only issue in Carr and Davis is the forfeiture issue. And there are other differences too: the Social Security Administration also authorized new hearings post-Lucia if a claimant raised an Appointments Clause challenge before the Agency. As the government also noted in its cert. briefing, courts of appeals have recognized that other “distinctive characteristics of Social Security proceedings justify” their no-forfeiture holdings.Finally, there may be an even more straightforward reason why the Supreme Court granted the forfeiture question in Carr and Davis but not in Arthrex. Even though the government won on the forfeiture issue in the courts of appeals, the government acquiesced to cert. in Carr and Davis—agreeing with the petitioner Social Security claimants that it was an important issue for the Supreme Court to decide. The government noted that there was an entrenched split in the circuits, which was unlikely to resolve itself without the Court’s intervention. And given the millions of disability cases and hundreds of thousands of Social Security ALJ hearings, the government noted that the issue would affect a profound number of cases. As important as PTAB cases are, the volume simply isn’t the same.So what’s our takeaway? Unfortunately, it’s more wait and see. The Court’s cert. denial on the forfeiture issue in Arthrex is a little more interesting now given the grant in Carr and Davis. And it seems possible that Carr and Davis could have some effect on the Arthrex cases depending upon what the Supreme Court does. But most likely, the Court just felt like it had to grant in Carr and Davis given the circuit split and number of cases that the circuit split was affecting.

What Does the Supreme Court’s Grant in Two Social Security Cases Have to Do With Arthrex?

As readers know, we have written about Arthrex a lot. So what better way to start Monday than another short post? Today, the Supreme Court granted cert. in Carr

What Does the Supreme Court’s Grant in Two Social Security Cases Have to Do With Arthrex?

In what seems to be a pattern, the week before argument week was again light on output at the Federal Circuit. The Court issued just two opinions and two dispositive orders. 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: 1 opinion and 1 precedential orderNon-precedential opinions: 1 opinion and 1 non-precedential orderRule 36: 0Longest and shortest case pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1526.OPINION.10-27-2020_1675813.pdf" target="_blank">Corcamore, LLC v. SFM, LLC</a>, No. 19-1526 (236 days) (only decision this week in which argument was held)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-142.ORDER.10-28-2020_1676855.pdf" target="_blank">In re Nitro Fluids LLC</a>, No. 20-142 (Oct. 28, 2020)Panel: Judges Reyna, Wallach, and Chen, with Judge Reyna authoring the order.You should read this case if: you have a client accused of infringement in multiple forums by the same plaintiff.This week we look at another grant of a mandamus petition from the Federal Circuit, which seems to be a bit of a trend (see <a target="_blank" href="https://federalcircuitry.mofo.com/topics/last-week-in-the-federal-circuit-september-14-18-a-tale-of-two-mandamus-petitions.html">A Tale of Two Mandamus Petitions</a>). In this week’s order, the Federal Circuit sent back Judge Albright’s denial of a motion to transfer a case from the Western District to the Southern District of Texas and gave guidance on the first-to-file rule.Cameron International Corp. first sued Nitro Fluid for patent infringement in the Southern District of Texas. That court stayed the case pending an inter partes review. Cameron then sued Nitro Fluid in the Western District of Texas on related patents but based on the same products.Despite the pending Southern District case, the Western District court rejected a motion to transfer or decline jurisdiction based on the first-to-file rule. That rule generally says that “the court in which an action is first filed is the appropriate court to determine whether subsequently filed cases involving substantially similar issues should proceed.” But the Western District court thought there were “sufficiently compelling circumstances” to overcome the rule based on applying the traditional transfer factors.The Federal Circuit vacated that order, holding that the district court had abused its discretion. The Federal Circuit accepted that, under Fifth Circuit law, “compelling circumstances” could overcome the first-to-file rule and that the 1404(a) transfer factors could in some cases amount to compelling circumstances. But it held that the district court got “matters backwards” by placing the burden on Nitro Fluid and asking whether the factors favor transfer. Instead, the district court should have placed the burden on Cameron and asked whether “the balance of transfer factors favors keeping the case in the second-filed court.”The Federal Circuit also held that the district court had committed “clear errors” in analyzing two of the transfer factors. First, in considering court congestion, the district court wrongly focused on the fact that it could hear cases more quickly than the Southern District. But it failed to consider whether that was because of “an appreciable difference” in congestion, as required, or instead due to other factors, like a stay in favor of Patent Office proceedings. Second, the district court erred in considering judicial economy. It wrongly elevated “its own views on the importance of speed of resolution” above the premium that the first-to-file rule places “on the importance of allowing one court to resolve substantially overlapping cases.” As the Federal Circuit explained, “there is no reason to think that even if the second-filed court could more quickly resolve this case than the first-to-file court that would alleviate the need for two courts to resolve the overlapping issues.” The Federal Circuit thus remanded to the district court to reconsider the factors under the correct test.

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Last Week in the Federal Circuit (October 26-30): Another Texas Mandamus Grant

Last Week in the Federal Circuit (September 14-18): A Tale Of Two Mandamus Petitions

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This week we look at yet another mandamus grant from a Texas district court on a transfer motion. This time the Court provides guidance on both the first-to-fil

Last Week in the Federal Circuit (October 26-30): Another Texas Mandamus Grant

Before October is out the door, we wanted to take a moment to review the Federal Circuit’s sitting earlier this month.Looking at statistics from the October sitting, the same two things we noticed last month stood out to us again.  First, the Court continues to cancel far fewer arguments now than it did earlier this year.  We’ve seen the rate of argument cancellations plummet from 55% in July and 46% in August to 22% in September and, now, 21% in October.Second, as the number of cancelled arguments stays low, the Court number of Rule 36 summary affirmances stays high.  This month, 48% of the argued cases were summarily affirmed—which is not quite as high as last month’s 61% whopper, but still higher than pre-pandemic times (38% from November to March) and earlier in the pandemic (less than 30% from June through August).We thought that this might reflect the Court’s increasing comfort with telephonic arguments, which may have led it to hold argument even in cases that aren’t particularly close.  But a peek ahead at the November sitting suggests the first trend—the low cancellation rate—may not have been a real trend after all.  A much higher portion of the arguments in November, 59%, have already been cancelled.  As to those November cases, a few things to note:<ul><li>PTAB cases remain the relative losers on the oral argument front, getting cancelled in 6 out of 13 cases (46%).  That’s generally consistent with what we’ve seen throughout the pandemic.</li><li>District court, Court of Federal Claims, and Board of Contract Appeals cases fared much better—if you want argument—getting cancelled at a 21% rate (4 out of 19).</li><li>Veterans cases came in at 50-50, with 4 cases argued and 4 cases cancelled.</li></ul>We’ll have to wait and see which was the blip in the radar:  the low cancellation rates in September and October or the higher rate in November.Here are some additional statistics from the Court’s October sitting:Total cases: 33 arguments (and 7 counseled cases submitted on the briefs) Oldest case: Military-Veterans Advocacy v. Secretary of Veterans Affairs, No. 19-1600 (docketed Feb. 24, 2019; 591 days from docketing to argument).Quickest cases: NetSoc, LLC v. Quora, Inc., No. 20-1430 , and NetSoc, LLC v. Oath Inc., No. 20-1437 (docketed Jan. 31, 2019; 249 days from docketing to argument)PTAB cases: 6 arguments (and 2 cases submitted on the briefs)District court cases: 15 arguments (and 3 cases submitted on the briefs)Rule 36 affirmances: 16 (all in argued cases; 5 from district court, 5 from the PTAB, 2 from the CFC, 2 from the CAVC, 1 from TTAB, 1 from BCA).Number of argument days by judge:<ul><li>Prost: 4 </li><li>Newman: 3</li><li>Mayer: 0</li><li>Plager: 0</li><li>Lourie: 4</li><li>Clevenger: 1 </li><li>Schall: 0</li><li>Bryson: 1</li><li>Linn: 0</li><li>Dyk: 3 </li><li>Moore: 2        </li><li>O’Malley: 0</li><li>Reyna: 2 </li><li>Wallach: 3</li><li>Taranto: 3 </li><li>Chen: 2 </li><li>Hughes: 2 </li><li>Stoll: 3 </li></ul>

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October Oral Argument Recap

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Before October is out the door, we wanted to take a moment to review the Federal Circuit’s sitting earlier this month.
Looking at statistics from the October si

October Oral Argument Recap

Oral Argument Recap

Last week we <a href="https://federalcircuitry.mofo.com/topics/Supreme-Court-to-Review-Arthrex.html">discussed</a> the first Federal Circuit case added to the Supreme Court’s docket this Term, and we wondered when we’d have the opportunity to discuss whatever cases might be next in the pipeline. Lucky for us, that opportunity came a little sooner than expected. We got a precedential order with a concurring opinion teeing up the latest Section 101 challenge for the Supreme Court to consider (or not). Below we provide our usual weekly statistics and our case (or in this instance, order) of the week.Precedential opinions: 2Non-precedential opinions: 3Rule 36: 4Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1094.opinion.10-20-2020_1672276.pdf" target="_blank">Monk v. Wilkie</a>, No. 19-1094 (323 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1837.opinion.10-20-2020_1672247.pdf" target="_blank">Finjan, Inc. v. Juniper Networks, Inc.</a>, No. 19-1837 (13 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/18-1763.order.10-23-2020_1674428.pdf" target="_blank">American Axle & Manufacturing, Inc. v. Neapco Holdings LLC</a>, No. 18-1763 (precedential order denying motion to stay the mandate)Panel: Judges Dyk, Moore, and Taranto, with Judge Dyk authoring the order and Judge Moore filing a concurring opinionYou should read this case if: you’re trying to stay a mandate or you’re following American AxleThis week is about some process and a little substance. First, process: we all know about American Axle (which we discussed <a href="https://federalcircuitry.mofo.com/topics/Agreeing-to-Disagree-en-Banc-Style--How-Often-Do-Judges-Dissent-From-Denial-of-Rehearing-En-Banc.html">here</a>), where the Federal Circuit sharply divided in denying rehearing en banc and which may present the Supreme Court with an opportunity to address Section 101 challenges outside the software and diagnostic context. In Friday’s precedential order, the Federal Circuit denied patent owner American Axle’s motion to stay the mandate pending the filing of a cert. petition. Some circuits are rather generous in granting such relief, but others (including the Federal Circuit) have tended to be more stingy. Friday’s order was no exception.What makes the order noteworthy is that the Federal Circuit adopted a standard for evaluating these motions, and it did so as a matter of Federal Circuit law rather than looking to regional circuit law. It looked to how the Supreme Court and individual Justices’ in-chambers opinions have examined similar requests for relief. And it concluded that, to stay the mandate, a movant must show: “(1) a reasonable probability that four Justices will consider the issue sufficiently meritorious to grant certiorari; (2) a fair prospect that a majority of the [Supreme] Court will vote to reverse the judgment below; and (3) a likelihood that irreparable harm will result from the denial of a stay.” And in close cases, the Federal Circuit should balance the equities and weigh the relative harms between the parties. Importantly, the Court emphasized the need to show irreparable harm, and that a request to stay the mandate can be (and has been) denied on that basis alone. The Court cited an in-chambers opinion by Chief Justice Roberts refusing to stay a mandate—even after the Supreme Court had granted certiorari—because the patent owner seeking to prevent generic competition had failed to show irreparable harm.Given that, the Federal Circuit’s focus on irreparable harm in the American Axle order was hardly surprising. One might have thought that American Axle could satisfy the “reasonable probability of cert.” prong of the Court’s test, given that the Federal Circuit itself sharply divided over the issue in denying rehearing and that the Supreme Court has expressed recent interest in 101 issues (discussed <a href="https://federalcircuitry.mofo.com/topics/200714-supreme-court-review-sometimes-what-is-not-decided-matters-more-than-what-is.html">here</a>). But for the casual observer, it was difficult to see how the patent owner could show irreparable harm. And that’s where American Axle’s request faltered. It based its assertions of irreparable harm on the expected continuation of potentially expensive district court litigation that might need to be redone if the Supreme Court were to review and reverse the Federal Circuit’s decision. The Federal Circuit noted that mere litigation costs, even if substantial, aren’t irreparable harm. (But as Judge Moore noted in her concurrence, district court judges have discretion to stay or slow down litigation even after a mandate issues. In our experience, some judges will do so, especially where there’s a basis for a credible cert. petition.)And then for some substance: Judge Moore’s concurring opinion emphasized that American Axle had satisfied the first two prongs of the Court’s test: (1) a reasonable probability that certiorari will be granted and (2) a fair prospect that the Supreme Court will reverse. She explained that the Federal Circuit’s 101 decision is primed for Supreme Court review—no doubt providing American Axle with more good quotes for its upcoming cert. petition. Here are a few: Judge Moore noted that “[t]he Supreme Court often grants certiorari to resolve circuit splits that render the state of the law inconsistent and chaotic. What we have here is worse than a circuit split—it is a court bitterly divided.” (Internal citations omitted.) She stated that, “[a]s the nation’s lone patent court, we are at a loss as to how to uniformly apply § 101.” “There is very little about which all twelve [active judges on the Federal Circuit] are unanimous, especially when it comes to § 101.” Yet she said they were “unanimous” in their “unprecedented plea for guidance.” And she emphasized that American Axle differs from some of the Supreme Court’s past 101 cases, involving business methods or diagnostics. The claims here “are directed to a process for manufacturing car parts—the type of process which has been eligible since the invention of the car itself.”With that, we’re sure there’s more to come—regardless of what the Supreme Court does with any cert. petition here. Under the Supreme Court’s current COVID-19 deadline <a href="https://www.supremecourt.gov/orders/courtorders/031920zr_d1o3.pdf" target="_blank">extensions</a>, American Axle has 150 days from the July 31, 2020 rehearing denial to seek cert.

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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

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Last Week in the Federal Circuit (October 19-23): Still More Axes to Grind in American Axle

Last Week in the Federal Circuit (October 19-23): Still More Axes to Grind in American Axle

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Last week we discussed the first Federal Circuit case added to the Supreme Court’s docket this Term, and we wondered when we’d have the opportunity to discuss w

At Federal Circuitry, we frequently update our statistics. We now have almost a year’s worth of data since we started our project of collecting every Federal Circuit decision and collating all of the Court’s substantive orders. In a <a href="https://federalcircuitry.mofo.com/topics/200714-who-wins-who-loses.html" target="_blank">post in July</a>, I took a look at some win-loss rates. One of the things I found interesting was that the data showed that in patent cases, patent owner appellants did noticeably worse than non-patent owner appellants. I thought it would be worth seeing if things have generally remained the same with about three more months of data.So have things changed? Not really for patent owners. Statistically, it’s still not great to be the patent owner in a Federal Circuit appeal. In July, I noted that patent owner appellants lose 79% of the time. With the additional data, patent owners still lose 79% of the time. The affirmance rates are about the same from both the PTAB (86% in July compared to 84% now) and district courts (71% in July compared to 73%). So that basically means that patent owners did a little better from the PTAB and a little worse from district courts over the past few months.Is the same true with non-patent owner appeals? Sort of. In July, we noted that non-patent owner appeals had a 54% affirmance rate, a 60% affirmance rate just taking PTAB appeals, and a 41% affirmance rate when PTAB appeals are removed. With the additional data, non-patent owners are still doing better than patent owners, but the gap has narrowed. The overall affirmance rate now is 62%, 67% just taking PTAB appeals, and 53% for non-PTAB appeals.Obviously, this means that non-patent owners did much worse than before in decisions over the last three months. Looking at only the newly added cases sheds some light on why these numbers changed. Over the last three months, non-patent owners lost nearly 72% of the time. And they lost a stunning 85% of the time in PTAB appeals. And while non-patent owners did better outside the PTAB (losing 63% of the time), that still is much worse than before.One other tidbit I found interesting. When looking at Board of Contract Appeals and Court of Federal Claims appeals, the affirmance rate is about 71%, which is nearly identical to the overall 71% affirmance rate in the Federal Circuit. But the Rule 36 rate is only 9%. By contrast, the Court’s overall Rule 36 rate is 24% and 34% for patent cases. There could be multiple explanations for this. It may be that BCA and CFC cases have been submitted on the briefs more frequently than other kinds of cases, which generally increases the likelihood that the Court will issue at least a short opinion. It also seems possible that, because there are less BCA and CFC cases at the Court, there may be less precedent on those cases, making it more likely that a case will raise an issue that the Court decides warrants an opinion. In a future post, we may try to take a closer look at those cases to see if we can find any interesting trends.Now’s the time when I’ll note the usual caveats that past outcomes don’t predict future results, and caution against reading too much into this—the more we parse the data, the smaller the sample size and the more likely that a couple case outcomes can skew the data. But if you’re like me and find this interesting, you can go to our <a target="_blank" href="https://federalcircuitry.mofo.com/statistics">statistics page</a>, and click on “case outcomes” and manipulate the data on your own.

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Who Wins, Who Loses Revisited

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At Federal Circuitry, we frequently update our statistics. We now have almost a year’s worth of data since we started our project of collecting every Federal Ci