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

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

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Partner

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

Brian Matsui

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

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

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

Seth Lloyd

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

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Many petitions for rehearing are filed; only the smallest handful are granted. Rather than track every filed petition, we track those that have a chance. Our database tracks petitions for rehearing once the Federal Circuit has called for a response (CFR). A CFR is the first real indication that the Court might have interest in the petition, as it indicates that at least one judge on the Court may be taking a second look. Our En Banc Tracker allows you to see the amount of time it takes for various cases to get a CFR, and you can sift through the data to see what types of cases have captured the potential attention of the Court. Our data goes back to January 2020.<div data-reactroot=""><iframe allowfullscreen="" frameBorder="0" height="2350" width="100%" src="https://public.tableau.com/views/RehearingCFRsandSubstantiveOrders/RehearingCFRs?:language=en&amp;:display_count=y&amp;:origin=viz_share_link&amp;:showVizHome=no&amp;:embed=yes&amp;:showShareOptions=false"></iframe><style media="(min-width:48.0625em)">#embed-wrapper-204954215{padding: 0 0 2350px;}</style></div>

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

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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, 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.

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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Who Wins, Who Loses Revisited

06_30_federalcircuit_blog_selections_11_win_loss2

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

Who Wins, Who Loses Revisited

Federal Circuit Insights

Perhaps the biggest Federal Circuit news last week didn’t come from the Federal Circuit; it happened when the Supreme Court granted review in Arthrex (read our <a href="https://federalcircuitry.mofo.com/topics/Supreme-Court-to-Review-Arthrex.html" target="_blank">insight</a>).  In the Federal Circuit, the Court not surprisingly issued a smattering of Rule 36s in the week following oral arguments and more precedential opinions than the week before.  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: 2Rule 36: 3Longest pending case from argument: Tie between <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1583.OPINION.10-14-2020_1668711.pdf">Warsaw Orthopedic, Inc. v. SASSO</a>, No. 19-1583 and <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1213.OPINION.10-15-2020_1669685.pdf">POSCO v. United States</a>, No. 19-1213 (343 days each).Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2108.OPINION.10-15-2020_1669672.pdf">St. Jude Medical, LLC v. Snyders Heart Valve LLC</a>, Nos. 19-2108, -2109, -2140 (41 days)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2108.OPINION.10-15-2020_1669672.pdf">St. Jude Medical, LLC v. Snyders Heart Valve LLC</a>, Nos. 19‑2108, ‑2109, ‑2140 (Oct. 15, 2020)Panel: Judges Newman, O’Malley, and Taranto, with Judge Taranto writing the opinion.You should read this case if: you have a matter involving the meaning of a claim term defined functionally.Perhaps because it’s almost Halloween, this week we’re focusing on a case that is very much for the faint of heart. The opinion addresses several issues, but we’re going to discuss just one—the construction of a claim term defined primarily by function under the broadest reasonable interpretation.Snyder owns a patent claiming an artificial heart valve that is implantable without surgery and without removing the damaged valve. St. Jude challenged the validity of several of Snyder’s claims in inter partes reviews. The parties disputed, among other things, the meaning of a claim term requiring an artificial heart valve with a “frame sized and shaped for insertion between the upstream region and the downstream region” of the native heart valve. Applying the broadest reasonable interpretation standard, the Board refused to limit the claim to artificial valves “sized and shaped for insertion into a damaged heart valve.” It instead read the “sized and shaped” language to require merely a valve sized and shaped to fit “in a position between” the upstream and downstream valve regions, regardless of whether the damaged valve remained or had been removed. On this basis, the Board found Snyder’s claims anticipated by a prior-art reference describing an artificial valve that entirely replaced the damaged native valve.The Federal Circuit held that the Board’s construction of the “sized and shaped” limitation was at odds with the specification’s clear disclosures. The Court began with the claim language, reasoning that “[t]he requirement that the frame be ‘sized and shaped’ a certain way suggests a focus on how the frame is fitted to the surrounding material (which depends on whether the native valve remains).” The Court also noted that the claim preamble refers to “repairing a damaged heart valve having a plurality of cusps.” That reference to “cusps” of the damaged valve “appears superfluous if claim 1 is interpreted to include embodiments where the damaged valve and its cusps are removed.”Although the claim language was helpful, it was the specification that ultimately “resolve[d] the interpretive question” in the Court’s view. The specification stated that “the frame is sized and shaped for insertion between the plurality of cusps C of the damaged heart valve.” To the Court, that language went beyond describing only the valve’s placement between upstream and downstream regions (as the Board had held), it tied the “sized and framed” claim language to the artificial valve’s specific function of “fitting between the cusps of the intact native valve.” Other specification passages confirmed the importance of that sizing and fitting to the invention by consistently describing how the invention “can be inserted without removing the native heart valve and that this is an improvement on the prior art.” Indeed, for that very reason the specification had distinguished the prior art that the Board held anticipatory under its construction. As the specification explained, the purportedly anticipatory reference required “removal of the native valve,” but the invention was designed to overcome the need for removal. Based on these passages, the Court held that it was “unreasonable” to read the “sized and shaped” limitation as covering an artificial valve fitted only to occupy the space left after removing a damaged native valve. That changed construction was enough to reverse the Board’s anticipation holding.

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 (October 12-16): The Federal Circuit on Matters of the Heart

Last Week in the Federal Circuit (October 12-16): The Federal Circuit on Matters of the Heart

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Perhaps the biggest Federal Circuit news last week didn’t come from the Federal Circuit; it happened when the Supreme Court granted review in Arthrex (read our 

Last Week in the Federal Circuit

Over the past several months, we’ve looked at <a href="https://federalcircuitry.mofo.com/topics/200714-supreme-court-review-sometimes-what-is-not-decided-matters-more-than-what-is.html" target="_blank">what Federal Circuit cases</a> the Supreme Court has and hasn’t reviewed, and <a href="https://federalcircuitry.mofo.com/topics/200930-how-the-federal-circuit-and-its-judges-fare-at-the-supreme-court.html" target="_blank">how often the Supreme Court</a> agrees with each Federal Circuit judge. Today, we got another data point with our first grant of a Federal Circuit case for the new Supreme Court term. The case is about the proper procedure for appointing administrative patent judges at the Patent Trial and Appeal Board.That issue is one Federal Circuit watchers are very familiar with, and we’ve written about it several time times (see <a href="https://federalcircuitry.mofo.com/topics/200713-last-week-in-the-federal-circuit-week-of-july-6-10-anthrex-strikes-again.html" target="_blank">here</a>, <a href="https://federalcircuitry.mofo.com/topics/200914-last-week-in-the-federal-circuit-september-7-11-another-arthrex-follow-on.html" target="_blank">here</a>, and <a href="https://federalcircuitry.mofo.com/topics/200320-do-we-already-know-the-federal-circuits-final-answer-in-arthrex.html" target="_blank">here</a>). As a short recap: last October in Arthrex, Inc. v. Smith & Nephew, Inc. the Federal Circuit held that the America Invents Act violated the Appointments Clause of the U.S. Constitution by giving the Secretary of Commerce, and not the President, authority to appoint the administrative patent judges who decide inter partes reviews. But the Federal Circuit blunted the effect of that holding by granting only a limited remedy—remand for a new hearing and a new decision from a new panel of judges—and by limiting who was entitled to that remedy—to only those who had received a final written decision from the Board before the Federal Circuit’s decision and had properly preserved an Appointments Clause challenge. The Federal Circuit has since extended Arthrex’s reach to other types of proceedings before the Patent Trial and Appeal Board while continuing to limit the remedy and the parties entitled to it.The Supreme Court has now agreed to consider both parts of the Federal Circuit’s decision based on two questions presented (Supreme Court lingo for the issues it will consider in a case):<ol start="1"><li>Whether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the President with the Senate’s advice and consent, or “inferior Officers” whose appointment Congress has permissibly vested in a department head.</li></ol> <ol start="2"><li>Whether, if administrative patent judges are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. 7513(a) to those judges.</li></ol>The Supreme Court’s decision to review the Federal Circuit’s decision shouldn’t come as a major surprise and probably shouldn’t be taken as indicating how the case will come out. Although the success rate for certiorari petitions is extremely low, cases in which a federal appellate court strikes down all or part of a federal statute are much more likely to attract the Justices’ attention. Add on the fact that the Federal Circuit has exclusive jurisdiction over patent cases (so there’s no opportunity for a circuit split or further development in other courts) and that the Solicitor General of the United States was one of the petitioners (the SG has a much better success rate than other litigants) and you have a recipe for a strong chance of Supreme Court review. (The SG also asked the Supreme Court to review whether parties needed to raise their constitutional challenge in the PTAB first, but the Court declined to review that question presented.)Given the issues the Supreme Court has agreed to hear, the effect of the Court’s eventual decision on patent law could be relatively ho hum or far reaching. If the Court reverses the Federal Circuit on the first question, finding no Appointments Clause violation at all, it will largely be business as usual for Patent Office proceedings. The PTAB will continue to oversee and decide the same cases it does today, albeit the administrative patent judges would once again be protected under the Administrative Procedure Act from at-will removals. Cases remanded under Arthrex might be redecided by a new PTAB panel or perhaps could be returned to the original panel, which could reinstate its original Final Written Decision. If the latter, the Federal Circuit might end up getting back a bunch of cases that Arthrex had effectively taken off its docket.If instead the Supreme Court affirms the Federal Circuit on both issues, the result would also probably be business as usual. The window for Arthrex-affected decisions given the Federal Circuit’s limited remedy is largely closed at this point, with most affected cases already remanded to the Patent Office (which has effectively stayed them) or stayed at the Federal Circuit by agreement of the parties. Those case would proceed but likely no new cases (or very few new cases) would be affected.The most interesting bucket would be if the Supreme Court agrees with the Federal Circuit that there was an Appointments Clause violation but disagrees on the remedy. At the Federal Circuit, the patent owners argued that only Congress can fix the statute, which could mean an end to many AIA-created Patent Office proceedings until Congress adopts a fix (or the President, with advice and consent of the Senate, appoints PTAB judges). If the Supreme Court agrees, that could affect far more cases than Arthrex has depending on whether parties preserved an Appointments Clause challenge (although normal rules of finality would likely prevent reopening past cases). Of course, the Supreme Court could adopt a completely different remedy altogether, which might have a broad or narrow reach based on what the Court’s decision says.Arthrex likely will be argued in early 2021, and it should be decided by July 2021.

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Supreme Court to Review Arthrex: Big Deal or Ho Hum?

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

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Over the past several months, we’ve looked at what Federal Circuit cases the Supreme Court has and hasn’t reviewed, and how often the Supreme Court agrees with 

Supreme Court to Review Arthrex: Big Deal or Ho Hum?

Last week was court week, and as we noted in our <a target="_blank" href="201008-federal-circuitry-brief-insights-october-8-2020.html">video insights</a>, the Federal Circuit was very busy hearing arguments (not many were cancelled). Given that, it is perhaps no surprise that there weren’t many precedential opinions. 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: 1Non-precedential opinions: 9Rule 36: 5Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1602.opinion.10-8-2020_1666448.pdf" target="_blank">Ecoservices, LLC v. Certified Aviation Services</a>, No. 19-1602 (184 days).Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1878.opinion.10-6-2020_1664931.pdf" target="_blank">Exmark Manufacturing Company v. Briggs & Stratton Corp.</a>, No. 19-1878 (154 days).Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-2244.opinion.10-7-2020_1665798.pdf" target="_blank">AntennaSys, Inc. v. AQYR Technologies, Inc.</a>, No. 2019-2244 (Oct. 7, 2020).Panel: Judges O’Malley, Bryson, and Reyna, with Judge O’Malley writing the opinion.You should read this case if: you have a patent-owner joinder issue (or you’re the sort of person who slows down to look at an accident on the other side of the road).This case has all the hallmarks of a law school exam. The plaintiff-appellant patent owner briefed this appeal as a straightforward claim construction dispute—in district court, it had received an unfavorable claim construction ruling and then effectively conceded non‑infringement so it could appeal. The Federal Circuit thought there were antecedent questions that needed to be answered first, but weren’t. Judge O’Malley’s opinion for the Court starts by saying, “[t]here is little more frustrating for a district court judge than to have the parties jointly lead you down a wrong, and possibly unnecessary, path. That is what occurred here.” (Once a district court judge herself, she may know a thing or two about that.)In its simplest form, this case involves plaintiff patent owner AntennaSys suing for patent infringement. But the case is far from that simple: AntennaSys did not own the patent alone. It had only a ½ interest, with one of the defendants (Windmill) originally owning the other ½ interest. And Windmill (not AntennaSys) originally possessed the exclusive rights in the patent under a license, so long as it met certain sales requirements (which it did not). The license required Windmill to create an LLC (GBS Positioner) to hold Windmill’s patent and license interests. Given that AntennaSys ended up in a dispute with Windmill, things obviously didn’t work out. AntennaSys sued Windmill’s wholly owned subsidiary, AQYR, for infringement of the patent that Windmill (or perhaps GBS Positioner) partially owned. And AntennaSys also raised state law claims against Windmill based on Windmill’s alleged failure to pay royalties.If you’re confused, maybe this will clear things up:<ul><li>AntennaSys is the plaintiff, has a ½ patent interest, and is suing AQYR for infringement and Windmill for failure to pay royalties.</li><li>AQYR is a defendant owned by Windmill.</li><li>Windmill is a defendant and has (or had) a ½ patent interest.</li><li>GBS Positioner is not in the lawsuit, but maybe has Windmill’s ½ patent interest.</li></ul>Or maybe not.To unravel things, the Federal Circuit recited some basic principles: under 35 U.S.C. § 262, patent co‑owners are essentially at each other’s mercy. One co-owner can extinguish another co‑owner’s ability to seek infringement damages by granting a license. And an action for patent infringement must join as plaintiffs all co-owners (subject to a couple exceptions). Finally, the Court noted that a non-consenting co-owner can never be involuntarily joined in an infringement action (although on this point, Judge O’Malley stated that she disagreed with this rule but was bound by Federal Circuit precedent).The problem, the Court noted, was that these issues were threshold considerations (before you get to claim construction and infringement) and were not developed by the parties in the district court, and they were potentially intertwined with other issues. So the Court decided its best course was to let the district court deal with them in the first instance on remand. For several paragraphs, the Court noted some of these issues, which included:<ul><li>Did Windmill waive its right as a co-owner not to join the suit against its subsidiary AQYR?</li><li>Did AQYR have a license (express or implied) from Windmill to practice the patent as a defense to infringement?</li><li>What role does GBS Positioner play? And if GBS Positioner owns Windmill’s interest then why wasn’t GBS Positioner an indispensable party to the litigation?</li></ul>Finally, the Court noted that if plaintiff’s infringement claim ends up being dismissed on remand, then the district court would lack subject matter jurisdiction over the state-law royalty claims. Applying settled law, the Court rejected plaintiff’s argument that whenever a state-court cause of action requires a court to engage in claim construction, the cause of action necessarily arises under the Patent Act. The Court noted that, if that were enough to support federal subject matter jurisdiction, “we would find jurisdiction in any case implicating a patent law issue.”

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Last Week in the Federal Circuit (October 5-9): A Tangled Knot of Patent Ownership and Required Parties

Last Week in the Federal Circuit (October 5-9): A Tangled Knot of Patent Ownership and Required Parties

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In this week’s case, the Federal Circuit tries to unravel a tangled knot of patent ownership and required parties. Or rather, the Federal Circuit identifies som

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Federal Circuitry: Brief Insights (October 8, 2020)


It’s court week at the Federal Circuit, so we decided to take a brief look at what cases had their arguments cancelled in October, and how that compares to pre

Federal Circuitry: Brief Insights (October 8, 2020)

The Supreme Court is abuzz, kicking off a new term this morning and announcing several cert grants last week.  Things have been calmer across town at the Federal Circuit—which, unlike the Supreme Court, has been working all summer.  The Federal Circuit issued only three precedential opinions last week and accounted for none of the recent cert grants.  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: 3Rule 36: 0Longest pending opinion from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1133.opinion.9-28-2020_1659873.pdf" target="_blank">Biogen MA Inc. v. EMD Serono, Inc</a>., No. 19-1133 (206 days)Shortest pending opinion from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-2367.opinion.9-28-2020_1659915.pdf" target="_blank">Mote v. Wilkie</a>, No. 19-2367 (55 days)Case of the week:  <a href="http://www.cafc.uscourts.gov/opinions-orders/18-1976.opinion.10-2-2020_1663180.pdf " target="_blank">Biogen MA Inc. v. EMD Serono, Inc.</a>, No. 19-1133 (Sep. 28, 2020)Panel:  Judges Newman, Linn, and Hughes, with Judge Linn writing the opinion.You should read this case if:  you have a novelty challenge to a “product by process” claim.The Federal Circuit has a rule for “product by process” claims: An old product is not patentable even if it is made by a new process.  For example, a manmade version of a naturally occurring protein is not a patentable composition.  But what if the manmade protein is used in a method of treatment?  Is a method of treatment novel if it uses an old product made by a new process?  In our case of the week, the district court said “yes” but the Federal Circuit says “no.”Biogen owns a patent for a method of treating conditions like multiple sclerosis with a recombinant (lab-produced) version of a protein called interferon-beta.  This method, Biogen says, has advantages over using naturally occurring interferon-beta (for one, the natural version is scarce).  Biogen accused EMD Serono and Pfizer of infringing the patent with the sale of Rebif, a recombinant interferon-beta drug used to treat multiple sclerosis. The jury found the claims anticipated because using naturally occurring interferon-beta to treat viral diseases was known in the prior art.  The district court, however, disagreed and granted judgment as a matter of law.  The prior art, the district court reasoned, did not address the use of lab-made interferon-beta.  And the product-by-process doctrine, in the district court’s view, governs only claims to a product, not claims to a method of treatment.The Federal Circuit reversed.  The only difference between the claimed invention and the prior art was the use of interferon-beta produced in a lab rather than in the human body.  And under the product-by-process doctrine, patentability turns on the product, not the process.  So in the Federal Circuit’s view, the “key” to the anticipation inquiry is that the “recombinant product is identical to the prior art product.”Although composition and method-of-treatment claims are often analyzed differently, the Federal Circuit saw no reason to do so here.  The court saw this method-of-treatment claim as containing a “nested” product-by-process limitation.  Burying a product-by-process limitation within a claim “does not change the proper construction of the product-by-process limitation itself.”  The upshot: An “old method of administration of an old product made by a new process is not novel and cannot be patented.”The court went on to reject Biogen’s arguments that even under a product-by-process analysis, the products were not identical.  In Biogen’s view, recombinant and native interferon-beta are identical only if they have matching three-dimensional shapes—which the jury had insufficient evidence to find.  The court, however, saw no basis in the claims, specification, or jury instructions to focus on three-dimensional structure.  That case-specific resolution leaves open to future patentees to argue that recombinant proteins are not identical to their native counterparts if their three-dimensional shapes differ.

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Last Week in the Federal Circuit (September 28 – October 2): Product-by-Process Methods of Treatment

Last Week in the Federal Circuit (September 28 – October 2):  Product-by-Process Methods of Treatment

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100% artificial or 100% natural?  It makes 0% difference to the Federal Circuit in our case of the week.

How well do Federal Circuit decisions hold up at the Supreme Court? And which Federal Circuit judges have their votes most often affirmed? With the new Supreme Court term around the corner, we dove into a decade’s worth of data to find out. The bottom line: the Federal Circuit holds its own at the Supreme Court.The Federal Circuit in the Supreme Court. The Federal Circuit’s relationship with the Supreme Court is unique. Unlike other courts of appeals, the Federal Circuit’s jurisdiction is defined exclusively by subject matter, not geography.[1] That means the usual rationale for Supreme Court review—resolution of a conflict between circuits—is often absent in cases decided by the Federal Circuit.Typically operating without the benefit of a circuit split, lawyers seeking review of Federal Circuit decisions frequently emphasize the importance of the issue and the gravity of the court of appeals’ supposed error. Such efforts are increasingly successful. As Adam Feldman has <a href="https://www.scotusblog.com/2018/12/empirical-scotus-the-heightened-importance-of-the-federal-circuit/">shown</a>, the proportion of the Supreme Court’s merits docket taken up by Federal Circuit cases has steadily increased since that circuit’s creation in 1982.Given its unique status, does the Federal Circuit fare worse than other circuits at the Supreme Court? After all, if the main rationale for reviewing Federal Circuit decisions is potential error correction (rather than resolution of a circuit split), one might think the reversal rate would be relatively high. But that is not so. In fact, the Federal Circuit’s success rate in the Supreme Court is slightly above average.Since October Term 2010, the Supreme Court affirmed 30.5% of the time when reviewing decisions of the various federal courts of appeals. In the 45 Federal Circuit decisions reviewed during the same period, the Supreme Court affirmed 31.1% of the time.What if we rank the circuits from most affirmed to most reversed over the same 10-year period? There are 13 circuits, so the median circuit is seventh. Where does the Federal Circuit rank? Seventh. Again, right in the middle of the pack. (Thanks to SCOTUSblog’s <a href="https://www.scotusblog.com/reference/stat-pack/">Stat Pack</a> for these numbers.)<div class="embedded-entry redactor-component block-entry" type="entry" data-sys-entry-uid="blt7e12c87688b2a833" 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/blta964808aa0db2f9c/62f5ab250f15291330337401/sc-chart-1.png?format=auto&amp;quality=60" alt="Chart"></div></div>How do the numbers look if we examine only patent cases? The Federal Circuit’s jurisdiction is specialized and eclectic—it hears appeals on government contracts, veterans’ benefits, takings claims, and other subjects. But the Circuit’s patent cases are of intense interest to many technology and life sciences companies, and are of increasing interest to the Supreme Court as well.Of the 45 Federal Circuit decisions reviewed by the Supreme Court during our study period, 31 were patent cases. How does the Federal Circuit compare to other circuits if we examine results in only those cases? The Supreme Court affirmed 32.3% of the time in the Federal Circuit’s patent cases. That’s slightly higher than the Federal Circuit’s affirmance rate across all cases but would still place it seventh among the circuits.So what of the perception that the Supreme Court grants review from the Federal Circuit to reverse? The data suggest that, whatever the Supreme Court may intend when it grants, that’s not how it plays out—or, at least, no more so than for other courts of appeals.Federal Circuit Judges in the Supreme Court. We also looked at how the votes of individual judges held up at the Supreme Court.Quick note on methodology. To make these calculations, we scored each case from the Federal Circuit reviewed by the Supreme Court over the last 10 years as an “agree” or “disagree” for relevant Federal Circuit judges. We scored as “agree”: being in the majority of a panel or en banc decision that was affirmed; dissenting from a panel or en banc decision that was reversed; or dissenting from denial of en banc review of a panel decision that was reversed. Mirror image actions were “disagree”: being in the majority of a panel or en banc decision that was reversed; dissenting from a panel or en banc decision that was affirmed; or dissenting from denial of en banc review of a panel decision that was affirmed.In a few cases, we looked past the actual decision under review and assigned “agree” or “disagree” based on the previous Federal Circuit decision that established the precedent binding the subsequent panel. So, for example, last Term in Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court reversed the Federal Circuit and held that the Patent Trial and Appeal Board’s IPR time-bar determinations are nonappealable. In assigning judges to the “agree” and “disagree” categories based on that decision, we looked to the Federal Circuit judges’ votes in Wi-Fi One, LLC v. Broadcom Corp. (en banc), rather than the decisions under direct review. Those decisions merely adhered to Wi-Fi One’s resolution of the relevant issue. In cases like that, it seems more accurate to attach significance to the votes of judges on the precedent-setting panel (or en banc court), not those of the later panel bound to follow the earlier decision.Finally, these results are subject to significant caveats, which we discuss below.On to the results. If we restrict the pool of Federal Circuit judges to only those who were active throughout the study period, thus excluding senior judges who sit on fewer cases and judges who joined the court after 2010, the judge with the highest “agree” percentage is Judge O’Malley, at 58.8%. She’s followed closely by Judges Newman and Moore, tied at 52%.<div class="embedded-entry redactor-component block-entry" type="entry" data-sys-entry-uid="blt7a196eae4cf1c3a9" 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/blt2ab970eb8ac94a93/62f5ab4b5c954177895b0b86/sc-chart-2.png?format=auto&amp;quality=60" alt="Chart"></div></div>If we widen the lens to include both senior judges and judges who joined the court during the study period, we get a new top three (albeit based on a smaller set of cases): Judge Mayer at 75%, Judge Hughes at 70%, and Judge Stoll at 60%.<div class="embedded-entry redactor-component block-entry" type="entry" data-sys-entry-uid="bltafeb8e4b61adf9dc" 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/blt26c4437d1735588a/62f5ab784b29b83d6a5cee1f/sc-chart-3.png?format=auto&amp;quality=60" alt="Chart"></div></div>Caveats. It would be a mistake to read too much into this judge-specific data. Looking only at cases reviewed by the Supreme Court leaves out the vast majority of circuit decisions—those where certiorari was denied or never sought. That means the lion’s share of a judge’s work is not reflected in our scoring. Also, a judge’s practice of noting their views on denial of en banc review also impacts their score. As we discussed in one of our previous <a href="/topics/Agreeing-to-Disagree-en-Banc-Style--How-Often-Do-Judges-Dissent-From-Denial-of-Rehearing-En-Banc" target="_self">posts</a>, Federal Circuit judges vary widely in whether they note such dissents. And judges might believe a panel decision is wrong yet still vote against en banc rehearing because, for example, they think en banc review is not a good use of the Court’s institutional resources. But they would not get “credit” in our scoring for agreeing with the Supreme Court if it eventually grants certiorari and reverses. Also, in some cases, the Federal Circuit applies another circuit’s precedent in whole or in part, yet our methodology includes such cases in the “agree”/“disagree” tally. E.g., Romag Fasteners, Inc. v. Fossil, Inc., 140 S. Ct. 1492 (2020).Finally, we intentionally labeled our categories with the nonjudgmental words “agree” and “disagree.” Some have argued that the generalist Supreme Court should be more deferential to the Federal Circuit on patent law questions. See, e.g., <a href="https://repository.law.umich.edu/articles/1207/">Rebecca S. Eisenberg, The Supreme Court and the Federal Circuit: Visitation and Custody of Patent Law, 106 Mich. L. Rev. First Impressions 28 (2007)</a>. So, at least some of the time, the fact that the Supreme Court disagrees with the views of a Federal Circuit judge with deep expertise in patent law may be an example of Justice Jackson’s quip about the Supreme Court: “We are not final because we are infallible, but we are infallible only because we are final.”Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship.[1] The D.C. Circuit’s jurisdiction is a geographic/subject-matter hybrid—it hears appeals from the District of Columbia and reviews certain agency proceedings.

How the Federal Circuit (and Its Judges) Fare at the Supreme Court

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

Joseph R. Palmore

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

Joseph Palmore

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How the Federal Circuit (and Its Judges) Fare at the Supreme Court

High Court Orders Rethink Of $9.7M Award After TransUnion

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How well do Federal Circuit decisions hold up at the Supreme Court? And which Federal Circuit judges have their votes most often affirmed? With the new Supreme Court term around the corner, we dove into a decade’s worth of data to find out.

How well do Federal Circuit decisions hold up at the Supreme Court? And which Federal Circuit judges have their votes most often affirmed? With the new Supreme Court term around the corner, we dove into a decade’s worth of data to find out

The Federal Circuit had a fairly busy week as summer officially came to a close. It issued six written decisions last week, three precedential. 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: 3Rule 36: 0Longest pending opinion from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1035.opinion.9-24-2020_1658548.pdf" target="_blank">John Bean Technologies Corp. v. Morris & Associates, Inc.</a>, No. 20-1035 (145 days)Shortest pending opinion from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-2130.opinion.9-24-2020_1658501.pdf" target="_blank">Shea v. US</a>, No. 19-2130 (100 days).Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/18-2338.opinion.9-24-2020_1658534.pdf">Network-1 Technologies, Inc. v. Hewlett-Packard Co.</a>, No. 18-2238 (Sep. 24, 2020)Panel: Chief Judge Prost and Judges Newman and Bryson, with Chief Judge Prost writing the opinion.You should read these cases if: you have a district court case involving IPR estoppel under 35 U.S.C. § 315(e).This week’s case of the week addresses several issues, including two claim constructions, harmless error when a jury returns a general verdict, statutory estoppel, and invalidity for allegedly broadening claims during a reexamination. But we’re going to focus on just the statutory estoppel issue, so you’ll have to read the decision for the rest.As relevant here, Network-1 Technologies owns a patent for power-over-Ethernet technology. It sued HP and others for infringement. One of the defendants petitioned for IPR of Network-1’s patent and the PTAB instituted review based on two references. HP then filed the first of two petitions requesting joinder to the already-instituted IPR. That first petition asked the Board to add new unpatentability grounds beyond those that the PTAB had already instituted. The Board denied HP’s first request. HP then filed a second petition requesting joinder. That petition raised only identical grounds to the already-instituted IPR. Although 35 U.S.C. § 315(b) time-barred HP from seeking its own independent IPR, the Board allowed HP to join the already-instituted IPR under 35 U.S.C. § 315(c). The PTAB eventually upheld the challenged claims’ patentability, which the Federal Circuit affirmed without opinion under Rule 36.Back in the district court, the parties eventually went to trial on infringement and HP’s invalidity defense. The jury found that HP did not infringe any asserted claim and that HP had shown that all asserted claims are invalid. But the district court granted Network-1’s JMOL motion on invalidity. It held that 35 U.S.C. § 315(e) estopped HP from raising certain obviousness challenges because of HP’s involvement in the IPR. Although the obviousness grounds were based on different references from those in the IPR, the district court concluded that HP reasonably could have raised the obviousness grounds in the IPR.HP appealed that ruling and the Federal Circuit reversed (technically, HP cross-appealed and the invalidity issue mattered because the Federal Circuit vacated and remanded the non-infringement ruling). The Federal Circuit focused on whether HP “reasonably could have raised” additional grounds as a joined party to an existing IPR. Relying on the recent decision in Facebook, Inc. v. Windy City Innovations, LLC (which we discuss <a href="https://federalcircuitry.mofo.com/topics/200908-last-week-in-the-federal-circuit-august-31-september-4-same-party-joinder-still-not-thryv-ing.html">here</a>), the Court explained that “the joinder provision does not permit a joining party to bring into the proceeding new grounds that were not already instituted. Rather, it may only join the already-instituted proceeding as a party.” That was enough to defeat estoppel on the facts here: “Because a joining party cannot bring with it grounds other than those already instituted, that party is not statutorily estopped from raising other invalidity grounds.” Despite reversing the district court’s invalidity JMOL, the Court did not reinstate the jury’s verdict but remanded because the district court had not addressed Network-1’s alternative motion for a new trial on invalidity.The Federal Circuit’s estoppel ruling here seems similar to its ruling (pre-SAS) in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1116.Opinion.3-21-2016.1.PDF" target="_blank">Shaw Industries Group v. Automated Creel Systems, Inc.</a> There, the Court denied a mandamus petition seeking to force the PTAB to review a non-instituted alternative invalidity ground. The Federal Circuit reasoned in part that statutory estoppel under Section 315(e) would not bar the petitioner from raising its invalidity ground in another proceeding—because the PTAB had refused to institute on the alternative ground, that ground was not one that was raised or reasonably could have been raised. In both Shaw and Network-1, the Court seems to have ruled that when a rule, statute, or PTO practice prevent a petitioner from raising a ground, the statutory estoppel bar will not apply to that ground. One interesting possible effect from Network-1 may be that statutory estoppel applies differently to different parties in the same IPR proceeding—an original petitioner who had freedom to choose the grounds for review may be subject to a broader estoppel than parties who join later and are limited to the already-instituted grounds.

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Last Week in the Federal Circuit (September 21-25): Joinder and Statutory Estoppel

Last Week in the Federal Circuit (August 31-September 4): Same-Party Joinder Still Not Thryv-ing

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Joined an IPR after institution?  What’s the scope of statutory estoppel after a final decision for someone like you?  The Federal Circuit gives some clarity on

Last Week in the Federal Circuit (September 21-25): Joinder and Statutory Estoppel

Last week Federal Circuitry discussed injunctions and stays pending appeal (or mandamus), and, at the end of the week, an interesting mandamus <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-144.ORDER.9-18-2020_1655080.pdf" target="_blank">order</a> addressing a challenge to venue in the Eastern District of Texas was released. In the mandamus petition, the petitioner also sought a stay of the district court proceedings, which was denied as moot when mandamus was denied. That denial means that parties seeking stays pending appellate proceedings now have a 9% success rate. Of course, one could quibble that the latest order shouldn’t count as a true stay denial, as the Court didn’t even need to reach the issue. But we can leave that esoteric debate for another day. Take a look below at our quick take on injunctions and stays pending appeal, and our longer post about them <a href="https://federalcircuitry.mofo.com/topics/200917-the-hail-mary-seeking-an-injunction-or-stay-pending-appeal.html" target="_blank">here</a> (also check out our post about the mandamus order <a href="https://federalcircuitry.mofo.com/topics/last-week-in-the-federal-circuit-september-14-18-a-tale-of-two-mandamus-petitions.html" target="_blank">here</a>).<div style="max-width: 90%;width: 90%;"><div class="videoWrapper"><iframe src="https://www.youtube-nocookie.com/embed/KKq67asf1Aw?rel=0" frameborder="0" allow="accelerometer; autoplay; encrypted-media; gyroscope; picture-in-picture" allowfullscreen="1" title="Brief Insights from Brian Matsui" title="iframe"></iframe></div></div>

Federal Circuitry: Brief Insights (September 25, 2020)

Last week Federal Circuitry discussed injunctions and stays pending appeal (or mandamus), and, at the end of the week, an interesting mandamus order addressing 

Federal Circuitry: Brief Insights (September 25, 2020)

Now that we’re just over two weeks out from arguments in the Federal Circuit’s September sitting, it’s time for our monthly oral argument recap.  After taking Thursday and Friday off during its August session, the Court was back to hearing arguments every day during September court week, with a total of 10 panels.Two statistics from the September sitting stood out to us.  First, as we previously <a href="https://federalcircuitry.mofo.com/topics/Observations-on-Cancelled-Argument-Cases--Appellees-Always-Win-Right--Mostly.html" target="_blank">mentioned</a>, the Court canceled argument in only 22% of its September cases.  That’s lower than any previous month since the Court went “remote”—e.g., 36% in <a href="https://federalcircuitry.mofo.com/topics/200619-oral-argument-recap-june-oral-argument-recap.html" target="_blank">June</a>, 55% in <a href="https://federalcircuitry.mofo.com/topics/200724-july-oral-argument-recap.html" target="_blank">July</a>, and 46% in <a href="https://federalcircuitry.mofo.com/topics/200821-august-oral-argument-recap.html" target="_blank">August</a>.  (Disclosure:  One of our cases was among those submitted on the briefs without argument in September.)Second, the Court issued Rule 36 summary affirmances in a whopping 61% of its September argued cases, including 60% of argued district court cases and 67% of argued PTAB cases.  That’s much higher than the Ruloe 36 figures from June (29%), July (29%), and August (23%).  And it’s even higher than the Rule 36 rate from the pre-pandemic days when the Court heard oral argument in almost every counseled case.  According to our data, only 38% of all cases decided between November and March were disposed of under Rule 36.  The numbers were higher for district court cases (42%) and PTAB cases (58%), but still lower than the corresponding figures from this September.Why did the Court cancel fewer arguments and issue more Rule 36 affirmances this month?  Your guess is as good as ours.  It will be interesting to see whether these trends continue in future months or whether September turns out to be an anomaly.  Remote arguments will continue in October (and perhaps beyond).  The Court has already canceled argument in 7 of its October cases.  But since more cases were initially scheduled for argument in October, and some panels may not have made their cancellation decisions yet, it’s probably too soon to compare October’s numbers to September’s.Here are some additional statistics from the Court’s September sitting:Total cases: 28 arguments (and 8 counseled cases submitted on the briefs)Oldest case: Free Stream Media Corp. v. Alphonso Inc., No. 19-1506 (docketed Feb. 4, 2019; 576 days from docketing to argument)Quickest case: Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA, No. 20-1723 (docketed Apr. 21, 2020; 134 days from docketing to argument)PTAB cases: 6 arguments (and 3 cases submitted on the briefs)District court cases: 15 arguments (and 2 cases submitted on the briefs)Rule 36 affirmances: 17 (all in argued cases; 9 from district court, 4 from the PTAB, 2 from the CFC, and 2 from the CIT)Number of argument days by judge:<ul><li>Prost: 3</li><li>Newman: 3</li><li>Mayer: 0</li><li>Plager: 0</li><li>Lourie: 0</li><li>Clevenger: 1</li><li>Schall: 1</li><li>Bryson: 0</li><li>Linn: 2</li><li>Dyk: 3</li><li>Moore: 1</li><li>O’Malley: 4</li><li>Reyna: 4</li><li>Wallach: 0</li><li>Taranto: 3</li><li>Chen: 2</li><li>Hughes: 2</li><li>Stoll: 2</li></ul><div>Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship.</div>

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September Oral Argument Recap

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We are just over two weeks out from arguments in the Federal Circuit’s September sitting.  As usual, we provide some statistics from the Court’s argument sessio