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-338496522{padding: 0 0 2350px;}</style></div>

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

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

Recently in the Federal Circuit: More on Indefiniteness in IPRs

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

Recently in the Federal Circuit: Broadening Claims in IPRs

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>

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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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

September Oral Argument Recap

Oral Argument Recap

While we’ll all remember last week because of Justice Ruth Bader Ginsburg’s passing, things were relatively quiet at the Federal Circuit. The Court issued just two written decisions in regular cases, two on mandamus petitions, and a handful of Rule 36 affirmances. 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: 1, plus two non-precedential orders on mandamus petitionsRule 36: 4Longest and shortest pending case from argument: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1534.OPINION.9-15-2020_1652582.pdf">Ramirez v. DHS</a>, No. 19-1534 (Sept. 15, 2020) (221 days) (all other cases were submitted on the briefs or affirmed by Rule 36 judgment).Cases of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-140.ORDER.9-15-2020_1652640.pdf" target="_blank">In re HP Inc.</a>, No. 20-140 (Sep. 15, 2020); <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-144.ORDER.9-18-2020_1655080.pdf" target="_blank">In re Google LLC</a>, No. 20-144 (Sep. 18, 2020)Panel: In re HP—Judges Newman, Lourie, and Hughes, with an unsigned per curiam opinion; In re Google—Judges Reyna, Wallach, and Chen, with Judge Reyna writing the opinion.You should read these cases if: you’re seeking mandamus on venue grounds.Given the light week at the Federal Circuit (just one precedential decision in a case from the MSPB), we decided to focus on two orders involving mandamus petitions on venue grounds. The Court granted one petition and denied the other.The grant was in HP, in which HP and its codefendants had moved to transfer venue from the Eastern District of Texas to the Northern District of California under 28 U.S.C. § 1404(a). They argued that HP employees with relevant knowledge were located in California, not Texas, and that only the California district court could compel third parties with relevant information to disclose that information. They also argued that the California court was already familiar with the technology because it had overseen a prior case involving one of the asserted patents.Yet the Texas district court (Judge Mazzant presiding) denied the transfer motion. It reasoned in part that, although some witnesses and physical evidence was in California, more were in Taiwan making Texas and California equally inconvenient. The district court also reasoned that it had already gained familiarity with the case and issues in deciding the defendants’ personal jurisdiction challenge, which it held weighed against transfer.The Federal Circuit held that HP was entitled to mandamus. It applied the standard mandamus factors—the petitioner must show it has “a clear and indisputable legal right” to relief, it lacks “any other method of obtaining relief,” and the “writ is appropriate under the circumstances.” But the Court said that “[i]n the transfer context, these requirements coalesce into one, because the possibility of an appeal after judgment is not an adequate remedy and mandamus is deemed an appropriate vehicle to correct patently erroneous transfer determinations.”Applying Fifth Circuit law on the factors for a Section 1404(a) transfer, the Court held that the district “court’s decision lies far outside the boundaries of a reasonable exercise of discretion.” In considering the location of evidence and witnesses, the district court wrongly considered evidence and witnesses in Taiwan even though Fifth Circuit law commands courts to compare only those in either the transferee or transferor forum. The district court also erred in weighing against transfer its familiarity with the case gained while deciding personal jurisdiction because motions to transfer must be judged “based on the situation which existed when suit was instituted.” These and other errors convinced the Federal Circuit to grant mandamus.The Court denied mandamus three days later in Google. Although the issue there was again venue, Google based its challenge on improper venue under 28 U.S.C. § 1400(b) rather than convenience grounds. The plaintiff had argued venue was proper in the Eastern District of Texas (Judge Gilstrap presiding) because Google had an agreement with a third party “to warehouse, refurbish, repair, and ship Google hardware products” from the third party’s Texas facility. Google argued that was insufficient to show an agency relationship creating a "regular and established place of business." Although the Federal Circuit commented that “Google raises viable arguments” and that the Court was “concerned that the district court did not move more quickly to resolve Google’s motion,” it still denied the petition. Without explaining, it concluded that Google failed to show a “clear and indisputable” right to relief and that “Google can obtain meaningful review of the district court’s venue ruling after final judgment.”Although the Court's reliance in Google on the availability of later review seems at odds with its apparent blanket statement in HP about the unavailability of review after judgment, the better reading is that HP’s statement must be read in context. The Court likely meant that convenience transfer motions are effectively unreviewable on appeal because of the high bar to showing prejudice from the lack of transfer. In contrast, a properly preserved lack-of-venue challenge is not subject to harmless-error analysis, making it reviewable on appeal after a trial. The irony is that, although lack of venue is non-discretionary and so seems like a stronger challenge than convenience, that strength makes it a harder issue to raise via mandamus, at least because it raises the bar for showing later review is unavailable.Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship.

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 (September 14-18): A Tale Of Two Mandamus Petitions

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

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Two mandamus petitions walk into a bar and … well, if there’s a good joke in there, we couldn’t find it. But we do think there’s some interesting comparisons to

Last Week in the Federal Circuit

At Federal Circuitry, sometimes we have simple ideas that prove not so simple. What we expect will be a few hours of data collection, number crunching, and analysis actually turns into far more work. This post is one of those instances. A few weeks ago, I had what others would now describe as the not-so-bright idea of seeing how movants fared in Federal Rule of Appellate Procedure 8 (or FRAP 8) motions in the Federal Circuit. I thought this might be “interesting” and “useful.” As readers know, FRAP 8 permits parties to seek an injunction or stay pending appeal. These motions are typically filed shortly after an appeal is docketed and are usually decided in short per curiam orders before briefs are filed. Oftentimes, the movant gets temporary relief while the motion is decided. To get relief pending the entire appeal, movants must show a likelihood of success on appeal, some immediate irreparable harm, that the balance of hardships favors the movant, and that the public interest would be served (or at least not harmed) by the interim relief. These motions are somewhat “exotic” in the sense that they don’t happen all that often. But they’re also important; sometimes interim relief is a critical part of making an appeal really “worth it”—such as to prevent the launch of a competing product or to prevent the disclosure of confidential information. In other words, sometimes there’s a bell that just can’t be unrung.Since we track substantive orders and other court data, I thought that looking at this data wouldn’t be a big lift. And because I wanted a somewhat decent sample size, I figured we should go back at least five years. Many hours later of having to look through orders and the underlying motions (because many orders themselves are non-specific), MoFo’s appellate paralegal Chad Borgman and I parsed through the 60 or so FRAP 8 motions we found over the past five years. (Did we miss one or two? Possibly. We found that, other than brute force PACER searches, there’s no easy way to collect this data.)What did we find? As expected, the odds are stacked against the movant. Movants get some relief only 16.7% of the time (10 out of 60 motions).<div class="embedded-entry redactor-component block-entry" type="entry" data-sys-entry-uid="blt488f2da372e8c0eb" 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/bltc77af0a7109cdcc5/62f5aaa1e71af410b83c2ac5/hailmary-1.png?format=auto&amp;quality=60" alt="Chart"></div></div>That was not surprising. After all, if the district court orders an injunction (such as to prevent ongoing infringement or to stop the launch of a competing drug product), the court of appeals isn’t likely to second guess the trial court’s determination before the appeal is even briefed, let alone argued.The next question is whether movants fare better in some kinds of appeals as opposed to others. Because we’re dealing with smaller sample sizes once we parse the data, the answer was a little less clear. Looking at the cases, I created six buckets: (1) patent injunctions/stays; (2) government contract cases; (3) motions to stay proceedings; (4) motions to prevent the disclosure/use of sensitive information; (5) pro se motions—typically government employees—all of which were denied; and (6) “other”—five cases that didn’t really fit into any categories, such as the amount of a supersedeas bond or a case involving VA regulations. We’ll discuss the first four categories.For the bread-and-butter patent docket, a movant’s overall success rate wasn’t all that different. Alleged infringers or patent owners sought injunctions or stays pending appeal 26 times. Their success rate: 15.4%. Nor did it seem to matter—from a pure numbers standpoint—whether the patent owner or alleged infringer was seeking relief under FRAP 8. Both alleged infringers and patent owners each obtained relief 15.4% of the time (13 motions, 2 granted). I also wondered if the success rate was higher for life sciences cases—not so much. It was 13.3%. But the sample size (15 motions) was so small that it’s hard to read too much into things. And—digging a little deeper—if anything, our small sample pointed in the opposite direction from what I would have expected. When a patent owner sought relief under FRAP 8 in a life sciences case, they obtained relief just 8.3% of the time.Compared to patent cases, we found fewer government contracts cases where a party sought a stay or injunction pending appeal. In these cases, a government contractor generally asks the Federal Circuit to prevent a rival contractor from performing under the contract or to prohibit the government from making a new award. To state the obvious, the lesson in these cases is similar to that in patent cases: you really want to win below, and, if you need interim relief from the Federal Circuit, you’re generally going to be out of luck. We found seven instances where a government contractor sought interim relief from the Federal Circuit. The number of times they appeared to get interim relief pending appeal: maybe one. Five times the government contractor was denied relief outright. One time, the Court expedited the briefing and argument (under a schedule agreed to by all the parties), which appeared to make the interim relief less necessary. And another time, partial relief was granted after oral argument. If we round up, that means interim relief is granted 14.3% of the time. But, looking at the cases, it kind of felt less than that. None of this suggests that no case would warrant an injunction pending appeal; the Court just hasn’t seen one recently.Equally grim is when parties seek to stay proceedings—such as to stay trial court proceedings pending a mandamus petition. When broadly looking at motions to stay trial court proceedings, we found 10 cases, and only one was granted. Now perhaps I’m being overly negative, because in several of these cases the need for relief pending appeal (or mandamus) effectively became moot—the Court denied the stay at the same time it denied the mandamus.So does anyone consistently win? In fact, yes: parties trying to prevent the disclosure or use of highly confidential, trade secret, or privileged information. We found four cases where this issue arose. And, from a pure numbers perspective, the moving party obtained interim relief in three—a 75% success rate. But really, the movants got the interim relief they needed in all four cases. In the case where the Court denied the FRAP 8 motion as moot, the Court simultaneously (and quickly) granted the mandamus petition to prevent the use of the confidential information. That seems like a win. Of course, if one wanted to be nitpicky, it could be pointed out that in a different case, the movant really got little more than a temporary stay that was dissolved when mandamus was denied. Even so, that was still interim relief during the pendency of the entire—albeit short—appellate proceedings.Just to recap, here’s a bar chart of the success rate for the various FRAP 8 motions:<div class="embedded-entry redactor-component block-entry" type="entry" data-sys-entry-uid="bltb4de28f5429db488" 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/bltc2bd20376652333a/62f5aaf0361754115f1e9b42/hailmary-2.png?format=auto&amp;quality=60" alt="Chart"></div></div>Sometime in the future, Federal Circuitry will revisit this data, as we’ll continue to track FRAP 8 motions and keep looking for any new or interesting trends.

The Hail Mary: Seeking an Injunction or Stay Pending Appeal

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The Hail Mary: Seeking an Injunction or Stay Pending Appeal

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At Federal Circuitry, sometimes we have simple ideas that prove not so simple. What we expect will be a few hours of data collection, number crunching, and analysis actually turns into far more work. This post is one of those instances

Federal Circuit Insights

Maybe it was the end of summer and the start of fall, or the kids (kind of) going back to school. But whatever it was, last week the Court issued only one precedential decision, in a veteran’s benefits case. All said, the Court released 15 decisions, although 6 were Rule 36 summary affirmances in cases argued during the September sitting. And remarkably, just 1 of the 9 opinions was from an argued case. Other than the Arthrex remand we examine below, all the decisions were affirmances; that’s perhaps less remarkable, given that appellees do particularly well when argument is cancelled (as we’ve <a target="_blank" href="https://federalcircuitry.mofo.com/topics/Observations-on-Cancelled-Argument-Cases--Appellees-Always-Win-Right--Mostly.html">previously</a> discussed). Given the slim pickings, we’re going to go non-precedential this week. 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: 8Rule 36: 6 (all in argued cases)Longest and shortest pending case from argument (i.e., the only case this week decided after argument): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2116.OPINION.9-11-2020_1650980.pdf" target="_blank">Batcher v. Wilkie</a>, No. 19-2116 (102 days)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2111.OPINION.9-9-2020_1649522.pdf" target="_blank">Snyders Heart Valve LLC v. St. Jude Medical, LLC</a>, No. 19-2111 (Sept. 9, 2020) (non-precedential)Panel: Judges Newman, O’Malley, and Taranto, with the opinion issued per curiam.You should read this case if: You have a PTAB appeal involving an Arthrex issue.Federal Circuitry readers are no doubt familiar with Arthrex, which we’ve written about in several previous posts, <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>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 quick reminder, last October, the Federal Circuit <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-2140.Opinion.10-31-2019.pdf" target="_blank">held</a> that the administrative patent judges who decide inter partes reviews were unconstitutionally appointed principal officers. To remedy that violation, the Court severed the portion of the Patent Act restricting those judges’ removal and remanded for a new hearing before a constitutionally appointed PTAB panel. Since then, the Federal Circuit has vacated many IPR final written decisions issued before Arthrex and remanded them for another hearing before a new panel of PTAB judges.In our case of the week, the Federal Circuit rejected one patentee’s argument that the “unique circumstances” of its case required greater relief—outright dismissal of the IPR rather than vacatur and remand for a new hearing. The Patent Office’s current Director, Andre Iancu, had represented the IPR petitioner in district court litigation involving the challenged patent before his appointment as Director. He thus was recused from the IPR. The Board held all challenged claims unpatentable.On appeal (which included full briefing), the patent owner argued that the PTAB judges who decided the IPR were unconstitutionally appointed under Arthrex. But it argued that the standard Arthrex remedy would be inadequate—and the IPR should be dismissed rather than a new hearing held—because no properly appointed PTAB panel could be convened on remand. In particular, the patent owner argued that the Director’s conflict should be imputed to all Patent Office employees, as they could be biased against the patent owner due to “their loyalty to their boss, Director Iancu.”The Federal Circuit disagreed. It noted that the PTO’s Deputy Director has statutory authority to assume the Director’s responsibilities in case of the Director’s “incapacity,” which includes a conflict requiring recusal. The Court concluded that the Deputy Director’s involvement “sufficiently removes any potential taint of the Director’s conflict.” And it saw no reason why “the Director’s lack of participation otherwise impacts the Arthrex remedy analysis.” Thus, the Court held that the patent owner was “entitled to the same relief given to the Arthrex appellant and no more”: vacatur of the Board’s decision and remand for a hearing before a properly appointed panel.Of course, the Federal Circuit’s decision may not be the final say on the matter. As we previously <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">mentioned</a>, there are now multiple petitions for certiorari challenging different aspects of Arthrex. Some of those petitions contend that Arthrex’s remedy did not cure the constitutional defect and that PTAB judges are still unconstitutionally appointed principal officers, even without removal protections. We may not have to wait long to see whether the Supreme Court will grant review: several Arthrex-related petitions are scheduled for consideration on September 29, at the first conference of the Supreme Court’s upcoming Term.Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship.

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Last Week in the Federal Circuit (September 7-11): Another Arthrex Follow-on

Last Week in the Federal Circuit (September 7-11): Another Arthrex Follow-on

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In our case of the week, the Court issued an Arthrex remand but held that the PTO Director’s involvement in related litigation before he became Director did not

Last week was September Court week, marking the unofficial end of summer for Federal Circuit practitioners. The Court issued a total of 25 decisions, including 8 Rule 36 summary affirmances in cases argued last week, as well as some opinions in September submitted cases and older cases. As you’ll <a target="_blank" href="https://federalcircuitry.mofo.com/topics/Observations-on-Cancelled-Argument-Cases--Appellees-Always-Win-Right--Mostly.html">recall</a>, the Court submitted fewer cases on the briefs this session, which probably led to the higher number of Rule 36s. 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: 11Rule 36: 8 (all in argued cases)Longest pending case from argument: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1400.OPINION.9-4-2020_1647920.pdf">Facebook, Inc. v. Windy City Innovations, LLC</a>, No. 18-1400 (394 days) (opinion modified after petition for rehearing)Shortest pending case from argument (non-Rule 36): <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1568.OPINION.9-2-2020_1646627.pdf">Google LLC v. Blackberry Ltd.</a>, No. 19-1568 (30 days)Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1400.OPINION.9-4-2020_1647920.pdf">Facebook, Inc. v. Windy City Innovations, LLC</a>, No. 18-1400 (issued Mar. 18, 2020; modified Sept. 4, 2020)Panel: Chief Judge Prost and Judges Plager and O’Malley, with Chief Judge Prost writing the opinion, and all three judges together filing “additional views.”You should read this case if: You have a matter involving an IPR joinder issue.As we mentioned in our <a target="_blank" href="https://federalcircuitry.mofo.com/topics/200904-orders-of-interest-roundup.html">previous post</a>, the Federal Circuit has been responding to the Supreme Court’s recent decision in Thryv, Inc. v. Click-to-Call Technologies, LP. That case held that the Patent Trial and Appeal Board’s determinations about whether an IPR petition is time-barred are not subject to judicial review. In our case of the week, the Federal Circuit modified a pre-Thryv opinion to explain that Thryv did not deprive it of jurisdiction to review the IPR joinder decision it had addressed.A brief statutory overview: 35 U.S.C. § 315(b) provides that an IPR may not be instituted if the petition is filed more than 1 year after the petitioner is served with a complaint alleging infringement of the challenged patent. But it specifies that this time limitation “shall not apply to a request for joinder under subsection (c).” Section 315(c), in turn, provides that after an IPR has been instituted, the Director (or the Board, to whom the Director has delegated authority), “in his or her discretion, may join as a party to that [IPR] any person who properly files a petition . . . that the Director . . . determines warrants the institution of an” IPR. And § 314(d) provides that “[t]he determination by the Director whether to institute an [IPR] under this section shall be final and nonappealable.”Next, a brief recap for readers who missed the earlier iteration of the decision: the plaintiff sued for patent infringement, but before the one-year deadline to file an IPR neared, the plaintiff had not yet specified which claims it was asserting. On the last day of the one-year window, the defendant filed IPR petitions challenging some (but not all) claims of the asserted patents, which the Board instituted. Several months later, the plaintiff identified its asserted claims. The defendant then filed two more IPR petitions challenging additional claims and asked the Board to join those proceedings to the already-instituted IPRs under § 315(c). The Board agreed, citing a precedential Board opinion interpreting § 315(c) to permit same-party joinder, and added the newly challenged claims to the existing proceedings. The Board eventually held some challenged claims unpatentable but upheld other claims. As relevant here, the plaintiff cross-appealed the Board’s joinder decision.The Court began with the “threshold issue” on which the defendant had sought rehearing and the Court had requested supplemental briefing after Thryv: whether it had jurisdiction to review the Board’s joinder decision. Answer: yes. The Court summarized Thryv as holding that decisions “closely related to” the Board’s “decision whether to institute” an IPR are nonappealable under § 314(d), but that decisions about “the manner in which the agency’s review proceeds once instituted” fall outside § 314(d)’s review bar.The Court went on to explain that joinder under § 315(c) requires “two different decisions.” First, the Director must determine whether the joinder applicant’s IPR petition “warrants” institution under § 314. The Court explained that § 314(d) bars review of this first decision, whether for timeliness or for the petitioner’s likelihood of success on the merits. Second, the Director must exercise his discretion to decide whether to “join as a party” the joinder applicant. This determination, the Court reasoned, is a “separate and subsequent decision” to the institution decision; it affects how an already-instituted IPR proceeds rather than the institution of an IPR. Thus, § 314(d) does not bar review of this second decision. Since the cross-appeal challenged whether the Board exceeded its statutory authority in making this latter, reviewable decision, the Court concluded that it had jurisdiction.The rest of the reissued opinion reiterated the Court’s pre-Thryv decision. The Court held that § 315(c) does not authorize joinder of a person to a proceeding in which that person is already a party. It primarily relied on § 315(c)’s text, which permits the Director to “join as a party to [an IPR] any person who” meets certain threshold requirements. The Court reasoned that the phrase “join as a party” could not be read as referring to persons who were already parties to the proceeding.The Court also held that § 315(c) does not permit joinder of new issues, such as new claims or new grounds. The Court noted that § 315(c) by its terms only authorizes joinder of a person “as a party” to an already instituted IPR, and the existing IPR “is governed by its own petition and is confined to the claims and grounds challenged in that petition.” Thus, the Court explained, § 315(c) “does not permit the joined party, by virtue of the joinder decision alone, to bring new issues from a second proceeding into the existing proceeding.” The Court also pointed out that § 315(d) specifically contemplates “consolidation” of two proceedings. It reasoned that “[c]onstruing § 315(c) to permit joinder of proceedings, and all the new issues therein, would render superfluous the reference to consolidation in § 315(d).”Because the Court determined that “the clear and unambiguous language of § 315(c)” compelled these statutory constructions, it concluded that it need not defer to the Board’s contrary interpretation. But in “additional views” following the opinion for the Court, all three panel members explained that they would reach the same result even if the statute were ambiguous. (Such “additional views” joined by all three judges are pretty unusual, though not unheard of; see, e.g., <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1559.Opinion.6-14-2019.pdf">this opinion</a> last year from Judges Dyk, Wallach, and Hughes.) They explained that the Board’s interpretation should not receive Chevron deference because the AIA does not expressly delegate authority to either the Director or the Board to undertake statutory interpretation through precedential Board opinions. And they also declined to give the Board’s interpretation Skidmore deference because, in their view, that interpretation was unpersuasive and inconsistent with the statute’s plain text.With the modification to the panel’s decision, the Court denied the defendant’s petition for rehearing en banc. So any further review will have to await the Supreme Court.Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship.

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

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

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In our case of the week, the Court reissued an earlier opinion about same-party joinder and added that an intervening Supreme Court case didn’t make the joinder

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 eye in the past couple weeks.Thryv and orders to show cause – As readers know, the Supreme Court’s decision in Thryv, Inc. v. Click-to-Call Technologies, L.P. seemed to reaffirm the strength of the prohibition against judicial review of the PTO Director’s determination whether to institute an IPR. The Federal Circuit looks to be responding by taking early action in cases where an appellant appears to be appealing from an institution decision. In two recent cases (see <a target="_blank" href="https://media2.mofo.com/v3/assets/blt5775cc69c999c255/bltef2f6909d425a16f/62731684220ab5285f519071/200817-cisco-osc.pdf">here</a> and <a target="_blank" href="https://media2.mofo.com/v3/assets/blt5775cc69c999c255/bltbc00205c02c43077/627316895f7b601eaaebcfba/200827-show-cause-click-to-call.pdf">here</a>) the Court issued orders to show cause why appeals shouldn’t be dismissed for lack of jurisdiction based on the bar against judicial review and Supreme Court and Federal Circuit precedent interpreting it (including Thryv). In both cases, the orders issued sua sponte, though they may have been prompted by the appellants’ docketing statements.Order denying attorney fees under Rule 38 – The Federal Circuit <a target="_blank" href="https://media2.mofo.com/v3/assets/blt5775cc69c999c255/bltdf2c5b9fc11e8399/627316894d9f8929712901bb/200826-cross-engineering-attorney-fees.pdf">denied</a> a motion for attorney fees under Federal Rule of Appellate Procedure 38. That rule allows appellate courts to sanction parties for bringing “frivolous” appeals, a high bar. In the recent order, which followed a mandamus denial, the Court found that the mandamus petitioner hadn’t “raised issues that are beyond the reasonable contemplation of fair-minded people” nor “dealt” unfairly with the Court or “misrepresented the law or facts.” More broadly, attorney fees motions on appeal rarely seem to succeed. From a quick search, I could only find three instances in the last ten years where the Federal Circuit granted such fees. That’s not to say the rule has no teeth. In one of the cases where the Court granted fees, it held the sanctioned party’s counsel jointly and severally liable for the fees because of counsel’s “misconduct in arguing the appeal.” Walker v. Health Int’l Corp., 845 F.3d 1148, 1157 (Fed. Cir. 2017). So although counsel may want to think twice about whether a motion for fees is warranted, to state the obvious, counsel should think even harder about whether they’re being candid with the Court or making arguments that border on frivolous.Order deferring on constitutional challenges to PTAB – The Federal Circuit <a target="_blank" href="https://media2.mofo.com/v3/assets/blt5775cc69c999c255/blt2882c332456472a8/6273168a4886af2aa2be109a/200902-new-vision-gaming-order.pdf">denied</a> a motion to decide a request for remand under Arthrex before the parties fully briefed the appeal. The appellant there filed an opening brief focused primarily on constitutional challenges to the PTAB’s authority, including arguing that Arthrex required a remand. The appellee responded by filing a motion asking the Federal Circuit to decide the Arthrex issue immediately since a remand under Arthrex could moot the need to address other issues. But as it often does, the Federal Circuit declined to decide the issue at the motions stage and instead directed the appellee “to raise its arguments in its response brief.” As regular Federal Circuit practitioners know, motions panels will often defer dispositive issues to the merits panel assigned to the case unless the right to relief is clear. That practice, combined with Rule 27’s requirement that parties generally file motions for dispositive relief before the opening appeal brief, may have led to the result here (though the order doesn’t explain).Order denying motion for oral argument as moot – As readers know, we’ve tracked (see <a href="https://federalcircuitry.mofo.com/topics/200730-order-of-interest-motion-oral-argument.html" target="_blank">here</a>) the success of requests to reinstate oral argument where the request is based on providing junior diverse attorneys an opportunity to argue. In the latest case involving such a request, rather than wait for the court to cancel and then ask for reinstatement, the appellant submitted a preemptive <a target="_blank" href="https://media2.mofo.com/v3/assets/blt5775cc69c999c255/blt8957f6463ec2b994/6273168b0cffdf1eb1369da0/200721-google-motion-oral-argument.pdf">motion</a> asking that argument be allowed because it would be the first Federal Circuit argument for a junior attorney. This week the Federal Circuit <a href="https://media2.mofo.com/v3/assets/blt5775cc69c999c255/blta35747162533c92c/6273168bb5ad5f2863c595b4/200901-google-oral-argument.pdf" target="_blank">denied</a> the motion, but only because the panel had already determined to hold oral argument so the request was “moot.” The order’s wording makes it sound like the choice to hold oral argument was made independent of the appellant’s request—we’ve previously explored what that might mean for the panel makeup and appeal outcome <a href="https://federalcircuitry.mofo.com/topics/Observations-on-Cancelled-Argument-Cases--Appellees-Always-Win-Right--Mostly.html" target="_blank">here</a>, <a href="https://federalcircuitry.mofo.com/topics/200807-are-some-federal-circuit-judges-more-likely-to-decide-a-case-without-oral-argument.html" target="_blank">here</a>, and <a href="https://federalcircuitry.mofo.com/topics/200706-fun-with-numbers-from-the-federal-circuits-first-three-months-of-telephonic-arguments.html" target="_blank">here</a>. (And good luck to my former co-clerk with her first Federal Circuit argument!)

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Orders of Interest Roundup

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In a roundup of recent orders, we look at how the Federal Circuit is responding to Thryv, how often the Court grants attorney fees under Rule 38, and more.

Orders of Interest Roundup

Substantive Orders Update

Last week the summer was winding down and the Federal Circuit was gearing up for its September argument session. But the Court still found time to hand down a number of decisions—17 in total. 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: 9Non-precedential opinions: 8Rule 36: 0Longest pending case from argument: <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-1527.opinion.8-27-2020_1643949.pdf">Baxalta Inc. v. Genentech, Inc.</a>, No. 19-1527 (206 days)Shortest pending case from argument (non-Rule 36): Tie between <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-2131.opinion.8-28-2020_1644569.pdf">OMG, Inc. v. United States</a>, No. 19-2131; <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-2226.opinion.8-28-2020_1644587.pdf">Midwest Fastener Corp. v. United States</a>, No. 19-2226; and <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-2403.opinion.8-28-2020_1644609.pdf">Simpson Strong-Tie Company v. United States</a>, No. 19-2403 (all 24 days)Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-2015.opinion.8-28-2020_1644541.pdf">Egenera, Inc. v. Cisco Systems, Inc.</a>, No. 19-2015 (Aug. 28, 2020)Panel: Chief Judge Prost and Judges Reyna and Stoll, with Chief Judge Prost writing the opinion.You should read this case if: You have a matter involving means-plus-function claiming, correction of inventorship, or judicial estoppel.Our case of the week would make a great law school exam fact pattern, since it involves several interlocking (and interesting) issues running the patent-law gamut—from claim construction to statutory interpretation to estoppel.Egenera owns a patent covering a virtual network that can be quickly reconfigured as computing power needs change. An outside network may use different protocols from the virtual network, so there must be some way to modify outbound messages to be compatible with the external network. Thus, the claims recite a control node with “logic to modify said received messages to transmit said modified messages to the external communication network” (emphasis added). All the issues on appeal can be traced back to this “logic to modify” term.Egenera sued Cisco for patent infringement, and Cisco requested an inter partes review of the asserted patent. Egenera responded by petitioning the PTO to remove one of the listed inventors, Peter Schulter, as an inventor. In the Court’s words, it was “apparent that at least part of Egenera’s motivation” was to help Egenera swear behind a prior-art reference in the IPR: Mr. Schulter’s status as an inventor would have undermined Egenera’s asserted conception date, which preceded the start of Mr. Schulter’s employment there. While the inventorship petition was pending, the Board declined to institute Cisco’s IPR. It assumed that the asserted reference was prior art but concluded that Cisco had not established a reasonable likelihood of prevailing on the merits. The PTO subsequently granted Egenera’s petition and removed Mr. Schulter’s name from the patent.Back in district court, Cisco argued for the first time that that the “logic to modify” limitation should be construed as a means-plus-function term under § 112(f). The district court agreed and determined that the corresponding structure in the specification was a certain “tripartite structure.” Based on that construction, Cisco contended that the claims were invalid for improper inventorship under pre-AIA § 102(f), as Mr. Schulter allegedly invented the tripartite structure, but the patent no longer listed him as an inventor. Egenera responded by arguing that, if Mr. Schulter was an inventor, the patent’s inventorship should be corrected under § 256(b), which provides that “[t]he error of omitting inventors . . . shall not invalidate the patent” if the court can correct the list of inventors instead.After a bench trial on inventorship, the district court found that Mr. Schulter had conceived the tripartite structure and thus was an inventor. And it concluded that Egenera was judicially estopped from invoking § 256(b) to restore Mr. Schulter’s inventorship. Thus, it held the patent invalid. Egenera appealed the claim construction and the application of judicial estoppel.The Federal Circuit affirmed the claim construction but overturned the judicial-estoppel determination. To start, the Court held that the district court correctly construed “logic to modify” as a means-plus-function term. As our readers likely know, after the Court’s 2015 en banc decision in Williamson v. Citrix Online, a claim term without the word “means” is presumed not to be means-plus-function. But that presumption can be overcome if the claim term “fails to recite sufficiently definite structure,” as is the case for generic terms or abstractions such as “mechanism,” “element,” and “device.” The Court held that presumption was rebutted here. Even assuming that “logic” connotes software, firmware, or circuitry, as Egenera had argued, the Court concluded the term was still just a “black box” that did not provide sufficient structure for performing the associated modification function. And it rejected Egenera’s argument that “logic” is structural because it is part of the “control node,” reasoning that “[m]ere inclusion of a limitation within a structure does not automatically render the limitation itself sufficiently structural.”But the Court went on to hold that the district court erred in applying judicial estoppel to prevent correction of inventorship and thus invalidate Egenera’s patent. As a threshold matter, the Court rejected Cisco’s contention that inventorship could not be corrected, even absent judicial estoppel, because Egenera’s initial removal of Mr. Schulter was a “tactical ploy” and not an “error” within the meaning of § 256(b). “‘Error’ is simply the incorrect listing of inventors,” the Court explained, and includes not only “unintentional inaccuracy” but also “considered acts” and even “deceptive intention.” And Mr. Schulter’s omission was “error” because, under the district court’s claim construction and findings at trial, he was an inventor.On the merits of judicial estoppel, the Court concluded that the district court’s analysis of all three relevant factors was legally erroneous, and it vacated the invalidity judgment premised on the judicial-estoppel determination.First, the Court determined that Egenera had not advanced “clearly inconsistent” or “mutually exclusive” positions before the PTO and the district court. When Egenera petitioned the PTO to remove Mr. Schulter’s name, the district court had not yet determined that “logic to modify” was a means-plus-function term. Indeed, the Court observed, “it may well be that Mr. Schulter would not be an inventor” were that term not construed as means-plus-function, as Egenera had contended. So “at least due to the intervening claim construction,” Egenera’s successive requests for correction of inventorship were not premised on “mutually exclusive” positions.Second, the Court determined that Egenera had not “succeed[ed] in persuading a court or court-like tribunal to accept its” earlier position. It noted that the PTO examines a request for correction of inventorship “only for the presence of supporting statements and the required fee” and “does not consider the substantive adequacy of the petition.” Thus, the Court held, a § 256 petition, “without more,” does not count as “persuasion” of a “court” for judicial-estoppel purposes. But the Court emphasized that this holding was “narrow”: it acknowledged that positions taken before an administrative tribunal can give rise to judicial estoppel in some circumstances. And it left open the possibility that judicial estoppel could apply to statements made during “substantive prosecution, ex parte reexamination, or other quasi-adjudicatory proceedings,” and that other theories of estoppel could apply based on even “ministerial filings” with the PTO.Third, the Court concluded that “Egenera would gain no unfair advantage, and Cisco would suffer no unfair prejudice, if judicial estoppel were not applied.” Had Egenera succeeded in swearing behind the prior art based on its earlier § 256 petition, the Court stated, “[t]hings might be different.” There would be “clear” prejudice and inconsistency in the potential for two decisions based on contradictory inventorship statuses. But the Court pointed out that Egenera’s earlier position did not end up affecting the IPR, as the Board denied institution even without considering Egenera’s priority arguments.Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship.

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Last Week in the Federal Circuit (August 24-28): No Judicial Estoppel from Inventorship About-Face

Last Week in the Federal Circuit (August 24-28): No Judicial Estoppel from Inventorship About-Face

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Our case of the week would make a great law school exam fact pattern, since it involves interlocking and interesting issues running the patent-law gamut—from me

Next week is Court week.  Readers may remember that, after the Court released the September calendar, we <a href="https://federalcircuitry.mofo.com/topics/200722-september-calendar-released-expect-the-submission-trend-to-continue.html">predicted</a> that the submission trend would continue.  Were we right?  Sort of. Cases were submitted (including one of our cases, as appellee).  But far fewer cases were submitted for next week’s arguments than any of the Court’s previous telephonic sittings.  All told, the Court cancelled oral argument in just eight cases out of the thirty-six originally scheduled for argument.  Both the number of cases and the cancellation percentage (22%) were lower than any previous month since the Federal Circuit went “remote.” Once again, PTAB cases were the relative losers for argument—three of the nine PTAB cases (33%) had arguments cancelled, compared to two of the seventeen district court cases (12%).  But that 33% PTAB cancellation statistic is still much lower than the 77% figure in <a href="https://federalcircuitry.mofo.com/topics/200724-july-oral-argument-recap.html">July</a> and the 55% figure in <a href="https://federalcircuitry.mofo.com/topics/200821-august-oral-argument-recap.html">August</a>. <div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/blt8d44f17466fc3a43/62731683deee7329767e7668/arguedcases.png?format=auto&amp;quality=60" alt="Argued cases"/></div>We don’t know the reason why so few cases had cancelled arguments for September.  It could just be the mix of cases and panels in this particular month.  Or it could be consistent with our co-editor Seth Lloyd’s earlier <a href="https://federalcircuitry.mofo.com/topics/200706-fun-with-numbers-from-the-federal-circuits-first-three-months-of-telephonic-arguments.html">observation</a> that fewer cases being submitted might reflect the Court becoming “more comfortable with telephonic arguments over time” and “drift[ing] back to its usual practice of hearing argument in most cases where both parties are represented by counsel.”  Regardless, as remote arguments will continue in October, we will continue to look for trends.In addition to looking at how many arguments were cancelled, we decided to take another look at how appellees did when an argument was cancelled.  As we noted before, appellees do well (<a href="https://federalcircuitry.mofo.com/topics/200714-who-wins-who-loses.html">in general</a>) and particularly so when argument is <a href="https://federalcircuitry.mofo.com/topics/200706-fun-with-numbers-from-the-federal-circuits-first-three-months-of-telephonic-arguments.html">cancelled</a>.  But because the affirmance rate is not 100%, appellees are clearly losing some cases solely on the papers. As advocates, we became curious if anything could be discerned from those losses.  After all, some circuits are known to reverse or vacate decisions without argument (take the Sixth Circuit, for example), but many others are far more likely to hold argument when an appeal might lead to such a result.  Holding argument when the judgment below might be disturbed gives the appellee the opportunity to address any concerns the court might have and to respond to arguments the appellant might have refined in its reply.Hoping to find some answers, we looked beyond the data and took a deeper dive into the 12 cases in which the Court cancelled oral argument and did not affirm since the Federal Circuit started telephonic oral arguments.  But since Federal Circuitry takes a data-driven approach, here are some statistics first:<ul><li>Overall affirmance rate:  70.9%</li><li>Overall district court affirmance rate:  66.0%</li><li>Overall PTAB affirmance rate:  78.8%</li><li>Cancelled argument affirmance rate (to date):  88.2% (15 not decided)</li><li>Cancelled argument district court affirmance rate:  88.5% (4 not decided)</li><li>Cancelled argument PTAB affirmance rate:  88.1% (6 not decided)</li></ul>One thing that jumps out from these statistics is that the affirmance rate is pretty consistent across district court and PTAB appeals when oral arguments are cancelled.  That’s a contrast to the overall affirmance rates for all cases, where the PTAB is affirmed at a much greater rate.  Also, the 88% cancelled argument affirmance rate after five months of telephonic arguments is slightly lower than the 92% affirmance rate we <a href="https://federalcircuitry.mofo.com/topics/200706-fun-with-numbers-from-the-federal-circuits-first-three-months-of-telephonic-arguments.html">calculated</a> after just the first three months.  Our co-editor Seth wondered whether the then-undecided cases “may bring the affirmance average closer to the historical average,” since “delayed decisions may be more likely to involve some relief for the appellant.”  That appears to have happened to some extent—some of those cases have since been decided and did bring down the affirmance rate, but only by a bit.Diving a bit deeper into the cases themselves, we learned that several of these appellee “losses” had unique circumstances or were not losses at all.  Two were straight vacate and remands, and the third was similar to one.  <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1956.opinion.7-28-2020_1626283.pdf" target="_blank">One</a> involved an Arthrex remand, so while the appellee “lost,” that result was preordained and oral argument couldn’t have changed that outcome.  Another was a <a href="https://media2.mofo.com/v3/assets/blt5775cc69c999c255/blte0bc0f00531878ed/627316840cffdf1eb1369d9c/200721-court-of-appeals.pdf" target="_blank">per curiam</a> vacate and remand for the TTAB to decide the effect of the Supreme Court’s Booking.com decision, without substantively addressing any issues.  And in a <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1838.opinion.6-17-2020_1605112.pdf" target="_blank">third</a> appeal, the Court vacated and remanded in a patent owner’s IPR appeal because the PTAB failed to consider secondary considerations evidence “[f]or reasons analogous to those expressed” in an earlier appeal between the same two parties.  In that case, the appellee had acknowledged that the PTAB’s treatment of secondary considerations was similar in both IPRs.Two other cases are, for all practical purposes, wins for the appellees.  In <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1933.opinion.6-15-2020_1603407.pdf" target="_blank">Inserso</a>, the government was the appellee in a Court of Federal Claims appeal; the key takeaway for our purposes is this line:  “We agree that judgment in favor of the government is appropriate, but on a different ground.”  In other words, it’s hard to say the appellee didn’t win, because the Federal Circuit simply instructed the Court of Federal Claims to enter judgment (again) in the appellee’s favor.  Similarly, in <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1557.opinion.5-20-2020_1590998.pdf" target="_blank">McRO</a>, the appellees did not really lose anything and appeared to get exactly what they wanted.  The Federal Circuit affirmed a district court’s grant of summary judgment of non-infringement for the defendants-appellees, and it vacated and remanded on counterclaims of invalidity.  Notably, after cancelling argument but before submitting the case, the Federal Circuit asked the parties to respond to written questions about how to address invalidity given non-infringement.  In responding to those questions, the defendants signaled a willingness to withdraw their counterclaims anyway.Of course, that leaves seven additional cases in which the appellees did apparently “lose”—five patent, one Court of Federal Claims, and one veteran’s.  It’s a bit harder to explain away the absence of argument without looking at the nitty gritty details.  Even doing so, we didn’t find much of a pattern; it may be that the panels just viewed them as straightforward cases.  Three of the patent cases involved incorrect claim constructions; one involved the PTAB’s failure to explain its reasoning; the last one involved a more nuanced issue on pre-suit damages (in a precedential opinion no less).  Interestingly, the Court of Federal Claims and veteran’s appeals were both precedential opinions. Overall, that means that out of the five precedential decisions in which the Court cancelled argument and did not affirm, three were non-IP appeals.  In fact, all three non-IP appeals with cancelled arguments and non-affirmances were precedential decisions.  Regardless, the key takeaway seems to be that when oral argument is cancelled, it’s very likely good news for the appellee.  But don’t entirely count those chickens before they hatch.Some parting tidbits:<ul><li>Judges O’Malley and Stoll each authored three of the eleven “signed” decisions, and Judge Taranto authored two.  So those three judges authored 72.7% of those decisions.</li><li>Only one case had a dissent, by Judge Reyna; see our earlier <a href="https://federalcircuitry.mofo.com/topics/200729-agreeing-to-disagree-how-often-do-judges-dissent.html">analysis</a> on Judge Reyna being a prolific dissenter.</li><li>Judge Lourie was on five of the twelve cases; see our earlier <a href="https://federalcircuitry.mofo.com/topics/200807-are-some-federal-circuit-judges-more-likely-to-decide-a-case-without-oral-argument.html">analysis</a> on Judge Lourie being one of the more likely judges to be on a panel cancelling oral argument.</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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Observations on Cancelled Argument Cases: Appellees Always Win, Right? (Mostly)

Fun with Numbers from the Federal Circuit’s First Three Months of Telephonic Arguments

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Next week is Court week.  Readers may remember that, after the Court released the September calendar, we predicted that the submission trend would continue.  We

Observations on Cancelled Argument Cases: Appellees Always Win, Right? (Mostly)

Last week, the Court did not have many precedential decisions as Washington, D.C., COVID‑19 or not, was in its usual August slowdown. Unlike the previous two weeks where we touched upon non-patent issues, we return (kind of, sort of) to patent law. So below we give our usual week’s statistics and case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 6Non-precedential opinions: 3Rule 36: 0Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1555.OPINION.8-17-2020_1637235.pdf" target="_blank">Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co.</a>, No. 17-1555 (Aug. 17, 2020) (805) (after vacate and remand from the Supreme Court)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1667.OPINION.8-21-2020_1640559.pdf" target="_blank">Burkhart v. Wilkie</a>, No. 19-1667 (Aug. 21, 2020) (80)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2118.OPINION.8-20-2020_1639752.pdf" target="_blank">Security People, Inc. v. Iancu</a>, No. 19-2118 (Aug. 20, 2020)Panel: Judges Lourie, Wallach, and Hughes, with Judge Hughes authoring the opinionRead this case if: you’re trying to be creative in setting aside a PTAB final written decision from an IPR.Our return to patent law is a little tangential this week. There’s no discussion of 101, 102, 103, 112, or infringement. We make no mention of damages, fees, or inequitable conduct. We instead address a patent owner’s district court Administrative Procedure Act (APA) challenge to a PTAB final written decision cancelling its patent claims in an IPR.By now you’ve heard this story before. Patent owner (Security People) sues accused infringer. Accused infringer challenges patent in IPR. PTAB finds patent claims unpatentable. The Federal Circuit affirms in a Rule 36. And the Supreme Court denies a petition for a writ of certiorari. Usually our story ends there (if not before the filing of a cert. petition), but in last week’s case, things took a bit of a turn.Undeterred by the Federal Circuit’s affirmance of the PTAB’s decision to cancel its claims, Security People brought an APA action against the PTO in district court. It asserted that the IPR cancelling its patent claims violated its constitutional rights. Unfortunately for Security People, its goal of prevailing in a lofty constitutional challenge went unrealized. The district court dismissed the suit for lack of subject matter jurisdiction. It held that because the AIA confers exclusive jurisdiction for the Federal Circuit to review IPR decisions Congress precluded district court collateral review of those same decisions. And the district court explained that the Federal Circuit could have addressed Security People’s constitutional challenge on the direct appeal from the PTAB’s decision (of course, that would have required Security People to raise such a challenge).On appeal, the Federal Circuit brushed aside Security People’s argument that the PTAB could not decide the constitutional issues. Even if the PTAB could not, the Federal Circuit held that it could have on direct appeal from the PTAB. The Court explained that there’s nothing unusual about a court reviewing the decision of an administrative agency to consider a constitutional challenge that the agency concluded the agency could not decide. Nor did the possibility of disputed factual questions tilt the analysis in favor of district court review. The Federal Circuit noted that it could take judicial notice of any necessary facts and the PTAB could resolve factual disputes even if it could not decide the ultimate constitutional question.The Federal Circuit also rejected Security People’s suggestion that it could only raise a constitutional challenge after the Court had affirmed the PTAB’s final written decision and the PTO had issued the certificate cancelling the patent. The Court explained that this “assertion misapprehends the law defining when an agency action becomes final for judicial review.” For IPRs, the Court held that the “PTO’s decision-making process in an IPR is complete after issuance of the final written decision.” And even though judicial review may set aside that agency action, that possibility has no effect on finality. The Court held: “a judicially mandated outcome occurring because of judicial review intrinsically is not agency decision-making.” Nor did the absence of the PTO’s certificate cancelling the patent matter. “Issuing the certificate of cancellation is a non-discretionary formality: the PTO is statutorily compelled to ‘publish a certificate canceling any claim of the patent finally determined to be unpatentable’ in a final written decision.” (quoting 35 U.S.C. § 318(b).) (As an aside, the Court’s statements regarding finality and the purely ministerial function of the PTO issuing a certificate cancelling a patent could have relevance when parties dispute the effect of a final written decision in parallel proceedings, such as those before the ITC. But that’s perhaps a discussion for another case, or another day.)“More generally,” the Court agreed with the district court that the Federal Circuit’s exclusive review of PTAB final written decisions precluded district courts from exercising jurisdiction over APA challenges to the constitutionality of such decisions. Not only did Congress provide the Federal Circuit with exclusive jurisdiction, it also “carefully considered the availability of judicial review in the AIA, opting to foreclose all judicial review of certain PTAB decision in IPRs.” And for the specific constitutional challenge that Security People raised, the Court held that it would have been fully capable of providing meaningful review had that challenge been raised in the appeal from the PTAB’s final written decision. Given that, the APA does not authorize “a collateral attack on an agency decision for which [a party] has already had the opportunity for comprehensive review.”

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Last Week in the Federal Circuit (August 17-21): Can Patent Owners Set Aside Adverse PTAB Decisions in District Court APA Challenges? (Nope)

Last Week in the Federal Circuit (August 17-21): Can Patent Owners Set Aside Adverse PTAB Decisions in District Court APA Challenges? (Nope)

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If you were planning to use an APA challenge in district court as an alternative way to attack an unfavorable PTAB decision, you may need to rethink your strate

We are two weeks out from arguments in the Federal Circuit’s August sitting, so it is time for our monthly oral argument recap. As it has done for the past several years, the Court heard arguments on only three days in August, with a total of six panels.The Court canceled oral argument in 11 of the 24 cases (about 46%) originally scheduled for argument in August. That’s a somewhat lower cancellation rate than in July (55%), but a greater proportion of cancelled arguments than in June (35%). Another notable statistic: in August, the Court cancelled oral argument in about half its cases from both the PTAB and district courts. That marks a departure from the trend in previous months of telephonic hearings, in which the Court cancelled argument more often in PTAB appeals than in district-court appeals (as we pointed out <a target="_blank" href="https://federalcircuitry.mofo.com/topics/200724-july-oral-argument-recap.html">here</a>). Also of note, 5 of the Court’s 13 August arguments (about 38%) were in non-patent cases. That’s roughly in line with the 41% non-patent arguments figure from July but slightly higher than the 31% figure from June. Of course, the smaller sample size in August makes it a bit more difficult to attribute significance to these differences.Here are some additional statistics from the Court’s August sitting:Total cases: 13 arguments (and 11 counseled cases submitted on the briefs)Oldest case: Google LLC v. Blackberry Ltd., No. 19-1568 (docketed Feb. 21, 2019; 529 days from docketing to argument)Quickest case: Simpson Strong-Tie Company v. United States, No. 19-2403 (docketed Sept. 17, 2019; 322 days from docketing to argument)PTAB cases: 5 arguments (and 6 cases submitted on the briefs)District court cases: 3 arguments (and 3 cases submitted on the briefs)Rule 36 affirmances: 3 (all in argued cases from the PTAB)Number of argument days by judge:<ul><li>Prost: 2</li><li>Newman: 0</li><li>Mayer: 0</li><li>Plager: 0</li><li>Lourie: 2</li><li>Clevenger: 0</li><li>Schall: 0</li><li>Bryson: 1</li><li>Linn: 0</li><li>Dyk: 0</li><li>Moore: 2</li><li>O’Malley: 3</li><li>Reyna: 2</li><li>Wallach: 1</li><li>Taranto: 1</li><li>Chen: 2</li><li>Hughes: 0</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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August Oral Argument Recap

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Excerpt: We are two weeks out from arguments in the Federal Circuit’s August sitting. As usual, we provide some statistics from the Court’s argument session and