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

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

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Partner

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

Brian Matsui

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

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

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

Seth Lloyd

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

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

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

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What Makes a Case Exceptional?

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

Recently in the Federal Circuit: More on Indefiniteness in IPRs

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

Recently in the Federal Circuit: Broadening Claims in IPRs

We are two weeks out from arguments in the Federal Circuit’s July sitting. As usual during the summer months, the Court heard somewhat fewer cases in July than during a typical sitting. The Court continued its COVID-19-era practice of submitting some cases on the briefs and holding oral argument by telephone in the remaining cases. In July, the Court canceled oral argument in 21 of the 38 cases (about 55%) originally scheduled for argument. As we’ve <a href="https://federalcircuitry.mofo.com/topics/200722-september-calendar-released-expect-the-submission-trend-to-continue.html" target="_blank">previously</a> observed, that marks a reversal of the trend from the first three months of telephonic arguments, when the percentage of cases in which the Court canceled argument declined each month—from 64% in April to 54% in May and 35% in June.Another notable trend is that the Court continues to cancel argument more often in appeals from the Patent Trial and Appeal Board than in appeals from district courts. For instance, in May, the Court canceled argument in 75% of its cases from the PTAB but only 47% of its cases from district courts. And in June, the Court canceled argument in 50% of its PTAB cases but only 29% of its district court cases. Likewise, in July, the Court canceled argument in 77% of its cases from the PTAB but only in 33% of its cases originating in district court. Perhaps this disparity can be attributed to the fact that many issues in PTAB appeals are reviewed for substantial evidence, a standard highly deferential to the agency’s decision and unfavorable for appellants. Thus, there may be fewer close cases from the PTAB where oral argument would help the Federal Circuit judges. By contrast, district court cases involve the entire spectrum of patent-law issues and are arguably more likely to raise novel legal issues that warrant oral argument.Here are some additional statistics from the Court’s July sitting:Total cases: 17 arguments (and 21 counseled cases submitted on the briefs)Quickest case: Land Shark Shredding, LLC v. United States, Nos. 20-1230, 20-1231 (docketed Dec. 10, 2019; 211 days from docketing to argument)PTAB cases: 3 arguments (and 10 cases submitted on the briefs)District court cases: 6 arguments (and 3 cases submitted on the briefs)Rule 36 affirmances: 5 (all in argued cases)Number of argument days by judge:<ul><li>Prost: 4</li><li>Newman: 3</li><li>Mayer: 0</li><li>Plager: 0</li><li>Lourie: 2</li><li>Clevenger: 1</li><li>Schall: 1</li><li>Bryson: 1</li><li>Linn: 1</li><li>Dyk: 1</li><li>Moore: 2</li><li>O’Malley: 4</li><li>Reyna: 2</li><li>Wallach: 0</li><li>Taranto: 0</li><li>Chen: 3</li><li>Hughes: 3</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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July Oral Argument Recap

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We are two weeks out from arguments in the Federal Circuit’s July sitting. As usual during the summer months, the Court heard somewhat fewer cases in July than 

July Oral Argument Recap

Oral Argument Recap

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September Calendar Released: Expect the Submission Trend to Continue

September Calendar Released: Expect the Submission Trend to Continue

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Yesterday, the Federal Circuit released its calendar for its September sitting, setting oral argument for 40 appeals. So if you were waiting for a case to be se

Federal Circuit Insights

Last week was a busy week at the Federal Circuit, as is often the case after an argument sitting. It issued 19 decisions total, some in cases from the Court’s July sitting and others in older cases. As usual, we provide last week’s 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: 2Longest pending case from argument: Simmons v. Wilkie, No. 19-1519 (102 days from argument to decision)Shortest pending case from argument (non-Rule 36): BookIT Oy v. Bank of America Corporation, No. 19-2142 (42 days from argument to decision)Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2050.OPINION.7-14-2020_1618430.pdf">Dana-Farber Cancer Institute, Inc. v. Ono Pharmaceutical Co., Ltd.</a>, No. 19-2050 (July 14, 2020)Panel: Judges Newman, Lourie, and Stoll, with Judge Lourie writing the opinion.You should read this case if: You have a matter involving an inventorship dispute.Patent inventorship disputes often involve interesting stories and important technologies. Our case of the week this week is no exception.The three inventors in this case—Drs. Tasuku Honjo, Gordon Freeman, and Clive Wood—conducted groundbreaking research in the field of cancer treatment. They discovered PD-1, a receptor on T cells (a type of white blood cell), and PD-L1 and PD-L2, its associated ligands. Healthy cells express PD-L1 ligands, which bind to T cells’ PD-1 receptors and stop the T cells from attacking the healthy cells. But some tumors also express PD-L1/L2 ligands, protecting them from T cells as well. The patents in this case claim methods of using antibodies to block that receptor-ligand interaction, stimulating the immune response against those tumor cells.A bit more background on the researchers’ collaboration: Dr. Honjo discovered the PD-1 receptor in the early 1990s. He began working with Drs. Freeman and Wood in 1998 to study the possible use of the PD-1/PD-L1 pathway in treating cancer. In 1999, Drs. Freeman and Wood filed a provisional patent application relating to activating or blocking the PD-1/PD-L1 pathway to modulate the immune response, but they did not list Dr. Honjo as an inventor. All three researchers published an article in October 2000 documenting their discoveries and stating that some tumors may use PD-L1 to inhibit an immune response. Several weeks later, Dr. Honjo, without Drs. Freeman and Wood, conducted in vivo experiments in mice studying tumors expressing PD-L1. Dr. Honjo filed a patent application based on the results of those experiments. The patents in this case all claim priority from that application. Dr. Honjo eventually shared the 2018 Nobel Prize in Physiology or Medicine based in part on the discoveries that led to that application; in his acceptance speech, he credited Dr. Freeman as a major collaborator in his work.Dana-Farber, Dr. Freeman’s employer, brought suit in 2015, alleging that Drs. Freeman and Wood should be added as inventors on Dr. Honjo’s patents. The district court agreed, concluding that several of their contributions—including their discovery of the PD-L1 ligand and Dr. Wood’s discovery that PD-1/PD-L1 binding inhibits the immune response—were significant to the inventions’ conception. Ono, the assignee of Dr. Honjo’s rights in the patents, appealed.The Federal Circuit affirmed. It rejected Ono’s various challenges to the district court’s legal analysis, declining to adopt the categorical rules that Ono proposed.First, Ono argued that Drs. Freeman and Wood’s work did not qualify them as joint inventors because they did not participate in the in vivo experiments that directly led to the patented inventions. The Federal Circuit rejected this “unnecessarily heightened inventorship standard.” It explained that “joint inventors need not contribute to all aspects of a conception.” In the Federal Circuit’s view, their “overall contributions throughout their collaboration with Dr. Honjo” sufficed to make them joint inventors.Second, Ono asserted that Drs. Freeman and Wood’s contributions could not have been significant because Dr. Honjo’s patents issued over their 1999 provisional application. The Federal Circuit disagreed, observing that “joint inventorship does not depend on whether a claimed invention is novel or nonobvious over a particular researcher’s contribution.” Rather, “[c]ollaboration and concerted effort are what result in joint inventorship.”Third, Ono pointed out that Drs. Freeman and Wood’s contributions were published before the conception of the patented inventions. It asked the Federal Circuit to hold categorically that research made public before the date of conception, and thus in the prior art, cannot qualify as a significant contribution. The Court declined to adopt such a rule. It acknowledged that merely providing information about the state of the prior art does not make one a joint inventor. But the Court saw “no principled reason to discount genuine contributions made by collaborators” merely because “portions of that work were published prior to conception for the benefit of the public.”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 (July 13-17): A Nobel Prize-Worthy Inventorship Dispute

Last Week in the Federal Circuit (July 13-17): A Nobel Prize-Worthy Inventorship Dispute

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Last week was a busy week at the Federal Circuit, as is often the case after an argument sitting. It issued 19 decisions total, some in cases from the Court’s J

Last Week in the Federal Circuit

Since we began tracking cases late last year, we have been thinking about some of the common perceptions we sometimes hear about the Federal Circuit. For example, people sometimes say that patent owners do very well on appeal (although we hear the opposite too). Is that true? We took a look at the data to see. Since November, in decisions where the patent owner is an appellant and there is no cross-appeal, the Court affirms 79% of the time. Now, some readers may be thinking that the PTAB plays a big part of this high affirmance (loss) rate for patent owner appellants, and that’s certainly true. Taking just PTAB appeals by patent owners, the affirmance rate jumps to 86%. Yet stripping those PTAB appeals out makes the affirmance rate 71%. In other words, the patent owner is still losing 7 out of 10 times on appeal.Of course, for the perception to be a misperception, non-patent owners would have to be doing better. They are. Overall, non-patent owner appeals have a 54% affirmance rate, a 60% affirmance rate just taking PTAB appeals, and a 41% affirmance rate when PTAB appeals are removed. That last stat means that the non-patent owner appellant is getting some relief almost 6 out of 10 times in non-PTAB appeals.Statistics like these certainly don’t predict outcomes in future cases. And while we have a robust amount of data going back to November, the more you parse it the smaller the sample size becomes. We’ll keep looking at stats like these as the data set grows, and you can use our statistics pages to see what trends you might find on your own.

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Who Wins, Who Loses

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Since we began tracking cases late last year, we have been thinking about some of the common perceptions we sometimes hear about the Federal Circuit. For exampl

Who Wins, Who Loses

Last week, the Supreme Court closed the book on its October 2019 Term, issuing its final opinions after the Fourth of July holiday. For all the notable features of this term—including the Court’s first-ever telephonic arguments, numerous questions from Justice Thomas, and many high profile cases (almost all of which had the Chief Justice in the majority)—the Federal Circuit had a relatively quiet term at the Supreme Court. Yes, the Supreme Court reviewed four cases from the Federal Circuit (reversing or vacating in three), but none appears to have had a profound effect on practice before the Federal Circuit, particularly with respect to its bread-and-butter patent docket.Take, for example, <a href="https://www.supremecourt.gov/opinions/19pdf/18-801_o758.pdf" target="_blank">Peter v. NantKwest Inc.</a>: there, the Supreme Court reaffirmed the bedrock “American rule” that litigants must pay their own way with respect to attorney’s fees, unless some statute or contract provides otherwise. The Court rejected the Patent Office’s aggressive statutory interpretation argument that “expenses” included “attorney’s fees.” This never seemed like a close case—more of a layup. And indeed the Supreme Court was unanimous in its decision affirming the Federal Circuit. It was the second opinion from an argued case handed down this term (typically, the first several opinions are from some of the most straightforward cases on the docket).Not to diminish the other decisions this term, but there was no case that came close to the likes of Alice, KSR, eBay, Teva, Oil States, or Cuozzo. To be sure, <a href="https://www.supremecourt.gov/opinions/19pdf/18-916_new_g3bi.pdf" target="_blank">Thryv, Inc. v. Click-to-Call Technologies, LP</a> became a Cuozzo-lite follow-on—addressing whether the one-year time bar to file a petition for inter partes review after being served with a complaint was judicially reviewable (35 U.S.C. § 315(b)). The Court reiterated its holding in Cuozzo: that when Section 314(d) bars appeals of a decision whether to institute an inter partes review, that bar includes “matters closely tied to the application and interpretation of statutes related to the institution decision.” Applying that same holding, it held that Section 315(b)’s time bar “is integral to, indeed a condition of, institution” and thus final and not appealable under Section 314(d).Outside of patents, the Supreme Court addressed willful infringement in the trademark context in <a href="https://www.supremecourt.gov/opinions/19pdf/18-1233_5he6.pdf" target="_blank">Romag Fasteners, Inc. v. Fossil, Inc.</a> The Court concluded that—based on the text of the Lanham Act—a plaintiff need not prove willfulness to recover lost profits for false or misleading uses of a mark. By concluding that willfulness was no prerequisite to lost profits, the Supreme Court side-stepped the more significant issue as to what willfulness meant, which could have had implications far outside the Lanham Act. (As an aside, although Romag is a loss in the Federal Circuit’s win-loss column, that’s hardly fair: the Federal Circuit was applying Second Circuit law on the trademark issue reviewed by the Supreme Court.) And in its fourth and final case from the Federal Circuit, the Supreme Court held that the government had to reimburse health insurers that suffered losses when offering policies on exchanges under the Affordable Care Act in <a href="https://www.supremecourt.gov/opinions/19pdf/18-1023_m64o.pdf" target="_blank">Maine Community Health Options v. United States</a>.If anything, the cases the Supreme Court chose not to hear were in some ways more profound than the cases it actually heard. We know the Supreme Court took a very hard look at several 101 decisions when it Called for the Views of the Solicitor General (CVSG) in two cases. In Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc., the Court CVSG’d the question of whether methods of using drugs to treat medical conditions are patent eligible under Section 101. The <a href="https://www.supremecourt.gov/DocketPDF/18/18-817/124768/20191206151701002_18-817%20-%20Hikma%20-%20CVSG%20-%20v28.pdf" target="_blank">Solicitor General’s brief</a> agreed that the particular patent claims at issue are patent eligible, but noted that the Federal Circuit’s ruling “implicates important and recurring questions on which the [Supreme] Court’s recent Section 101 decisions have fostered substantial uncertainty.” The Solicitor General stated that the Supreme Court’s Mayo decision has “sent conflicting signals.” And he explained that the “confusion created by [the Supreme] Court’s recent Section 101 precedents warrants review in an appropriate case.” Although the Solicitor General suggested Hikma was not the right vehicle for review, he identified another more appropriate case that was already pending before the Supreme Court: Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, No. 19-430. Given that the Supreme Court usually grants review when the Solicitor General, after being CVSG’d, recommends it, conventional wisdom suggested that Athena would be the next blockbuster 101 case. But, for reasons we can’t know, the Court ended up denying review in both Hikma and Athena.That leaves HP Inc. v. Berkheimer, which suffered the same fate on the same day as Hikma and Athena. The question presented in Berkheimer was “[w]hether patent-eligibility is a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of the art at the time of the patent.” When the Federal Circuit issued its Berkheimer decision, many practitioners began to wonder if 101 challenges were going to be more difficult to make on a motion to dismiss. In its CVSG <a href="https://www.supremecourt.gov/DocketPDF/18/18-415/124825/20191206211755583_18-415%20-%20HP%20v.%20Berkheimer.pdf" target="_blank">Berkheimer brief</a>, the Solicitor General reiterated the point he made in his Hikma brief: “The Court should grant review in an appropriate case to clarify the substantive Section 101 standards.” Once those standards were resolved, he explained, the Court could “then address any ancillary issues that remain”—which would presumably include whether patent eligibility is a question of law or fact. Most likely, once the Supreme Court decided to deny review in Hikma and Athena, there was no reason to grant review of the “ancillary” issue raised in Berkheimer.The Solicitor General’s Berkheimer brief offered one interesting tidbit. He cautioned against review in Berkheimer based, at least in part, on its subject matter. He noted that the claims were directed to “the software-system context.” And he suggested that other, “more familiar types of innovations—such as industrial processes or methods of medical treatment”—might be easier for the Supreme Court to distinguish between patent eligible and ineligible subject matter. To hammer the point home, he said: “courts (and this Court in particular) have less experience addressing such questions in the context of software systems.” Interestingly, the Federal Circuit has been considering for some time now a pending rehearing/en banc petition in American Axle & Manufacturing v. Neapco Holdings, a case in which a divided Federal Circuit panel struck down on 101 grounds patent claims to a method of manufacturing driveline propeller shafts. Depending on what happens at the Federal Circuit, perhaps a case like that involving the mechanical arts (a la KSR) could be a better vehicle for the Supreme Court to address these issues. Or perhaps, after having recently addressed 101 several times already, the Supreme Court just wants to take itself out of that business.So that’s a wrap for the October 2019 Supreme Court Term. We will have to wait and see if next year brings more excitement in reviewing Federal Circuit decisions. Just remember to unmute your telephone line and avoid flushing the toilet.

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Supreme Court Review: Sometimes What Is Not Decided Matters More Than What Is

Supreme Court Review: Sometimes What Is Not Decided Matters More Than What Is

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Last week, the Supreme Court closed the book on its October 2019 Term, issuing its final opinions after the Fourth of July holiday. For all the notable features

Although this was the week of the July argument sitting, that didn’t slow the Court down in issuing decisions with seventeen total. 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: 3, plus 1 precedential orderNon-precedential opinions: 11Rule 36: 3Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1048.OPINION.7-8-2020_1615429.pdf" target="_blank">Fitbit, Inc. v. Valencell, Inc.</a>, No. 19-1048 (309 days from argument to decision)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2308.OPINION.7-10-2020_1616762.pdf" target="_blank">J.S.T. Corporation v. ITC</a>, No. 19-2308 (4 days from argument to decision)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2349.ORDER.7-7-2020_1614897.pdf" target="_blank">In re Boloro Global Ltd.</a>, No. 19-2349 (July 7, 2020)Panel: Judges Lourie, Dyk, and Reyna, with Judge Dyk writing the opinion.Read this case if: you’re involved in a PTAB appeal by a patent applicant.This week we’re looking at a new precedential order extending Arthrex to PTAB decisions by initial patent applicants. As you likely know since you’re reading this blog (and as we explained <a href="https://federalcircuitry.mofo.com/topics/200320-do-we-already-know-the-federal-circuits-final-answer-in-arthrex.html" target="_blank">here</a>), last Halloween the Federal Circuit held that the administrative patent judges who decide inter partes reviews were unconstitutionally appointed principal officers. To remedy that, the Court severed the portion of the Patent Act restricting those judges’ removal. Since then, the Federal Circuit has vacated many IPR final written decisions decided before the Court’s Arthrex decision and remanded them for a new hearing before a new panel of PTAB judges.But unlike Arthrex, Boloro involved a patent applicant (rather than patent owner) appealing a PTAB decision from an initial examination. The Court held that was a distinction without a difference under Arthrex and VirnetX Inc. v. Cisco Systems, Inc., 958 F.3d 1333 (Fed. Cir. 2020). VirnetX extended Arthrex to decisions by PTAB judges in inter partes reexaminations based partly on the fact that the same PTAB judges decide IPRs and those reexaminations. 958 F.3d at 1335-36. Yet VirnetX appeared to leave open whether Arthrex should extend “to all Board proceedings.” IdBoloro now holds that Arthrex also extends to initial examination proceedings. In response to the Court’s request for supplemental briefing, the Director had conceded that under Arthrex and VirnetX PTAB judges “were principal officers for purposes of all governmental functions of their office.” Given that concession, the Court held that the same remedy of a new hearing before a new panel of PTAB judges should apply. Even though the Director argued that he had far greater control over Board proceedings involving patent applicants, the Court saw “no principled reason to depart here from the resulting remedy applied in Arthrex and VirnetX.” The Court reached this conclusion based on the motion briefing and responses to two court requests for supplemental briefing; there was no merits briefing or argument.Boloro likely will have only limited effect for now, because the Federal Circuit has limited Arthrex’s reach to PTAB final written decisions issued before October 31, 2019, and cases where the appellant sufficiently preserved on appeal an Appointments Clause challenge. Yet the Federal Circuit may not have the final word—there are now multiple petitions for certiorari challenging different aspects of Arthrex. Some of those petitions argue that the Federal Circuit’s Arthrex ruling could not cure the Appointments Clause problem. Depending on what happens at the Supreme Court, Boloro could become far more significant (or be effectively overruled).

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

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

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Although this was the week of the July argument sitting, that didn’t slow the Court down in issuing decisions with seventeen total. Below we give our usual week

It was a short week in the Federal Circuit with the Fourth of July holiday as the Federal Circuit ramps up for the July argument sitting. All said, there were only 10 decisions by the Court. As usual, we provide last week’s statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 5Non-precedential opinions: 5Rule 36: 0Longest pending case from argument: Sharpe v. Secretary of Health and Human Services, No. 19-1951 (120 days from argument to decision)Shortest pending case from argument (non-Rule 36): Tie between CardioNet, LLC v. InfoBionic, Inc., No. 20-1018 and Braemar Manufacturing, LLC v. The Scottcare Corporation, No. 19-2263 (27 days from argument to decision)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-2087.opinion.7-1-2020_1612569.pdf" target="_blank">Electronic Communication Technologies, LLC v. ShoppersChoice.com LLC</a>, No. 19-2087 (July 1, 2020)Panel: Chief Judge Prost and Judges Dyk and Wallach, with Judge Wallach writing the opinion.Read this case if: you have an exceptional case motion against a previously litigious plaintiff.In this case, a patent plaintiff could not escape its long record of past litigation conduct. Patentee Electronic Communication Technologies (ECT) had a habit of filing patent infringement lawsuits seeking “low-value ‘license fees’” to force settlements. In fact, from 2011-2015, ECT had sued at least 150 defendants alleging infringement of various claims within the same patent family. When ECT sued ShoppersChoice on claims in that patent family (and lost on 101 grounds), ShoppersChoice sought attorney’s fees.  The district court denied fees finding the case not exceptional.The Federal Circuit held that the district court abused its discretion. Quoting Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014), the Federal Circuit explained that an “‘exceptional’ case is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” For starters, the Federal Circuit held that the district court clearly erred by failing to address ECT’s past litigation conduct. In particular, the Federal Circuit highlighted the sheer number of lawsuits ECT had filed and threated to file, including “ECT’s demand for a low-value settlement—ranging from $15,000 to $30,000—and subsequent steps—such as failure to proceed in litigation past claim construction hearings” in other cases. The Court suggested that this conduct “indicates the use of litigation to achieve a quick settlement with no intention of testing the strength of the patent or its allegations of infringement.” In addition, the Federal Circuit emphasized a decision by another district court in a different lawsuit that awarded fees against ECT. The Court explained that ruling recited ECT’s pattern of unreasonable litigation conduct and found that “no reasonable patent litigant” would have believed the asserted claim was viable. Lastly, although not critical to its decision, the Court noted that the district court applied the incorrect attorney’s fees statute—15 U.S.C. § 1117 in the Lanham Act rather than 35 U.S.C. § 285 in the Patent Act. The Federal Circuit told the district court to apply the right statute on remand.

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Last Week in the Federal Circuit (June 29-July 2): Patent Plaintiff Can’t Escape Past

Last Week in the Federal Circuit (June 29-July 2): Patent Plaintiff Can’t Escape Past

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It was a short week in the Federal Circuit with the Fourth of July holiday as the Federal Circuit ramps up for the July argument sitting. All said, there were o

Patent - Attorney Fees

With the start of the Federal Circuit’s July oral arguments, we thought it made sense to look back at the Court’s first three months of telephonic hearings (April, May, and June). What do those sittings show about how the COVID pandemic is affecting the Court? Does the Court’s choice to cancel (or keep) arguments indicate something about its view of the merits? Are there any trends worth keeping an eye on? We answer these questions and more below.Breakdown of argued casesFrom April through June, the Federal Circuit initially scheduled oral argument in 164 cases but then canceled argument and submitted on the briefs in 84, just over half. Yet as shown below, the canceled arguments were not distributed evenly across each month. Instead, the percentage of cases in which the Court canceled a scheduled argument declined each month—in April, the Court canceled argument in 34 cases and heard telephonic arguments in 19, but by June those numbers basically flipped, with the Court canceling argument in just 19 cases and hearing telephonic arguments in 35.<div class="embedded-entry redactor-component block-entry" type="entry" data-sys-entry-uid="blte32cbfa0d50f89ed" 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/bltc8dbd884cbda55ca/6273ee507198441d81b3be95/200706-telephone-arguments-graph-1.jpg?format=auto&amp;quality=60" alt="Chart"></div></div>Note: “Submitted cases” excludes cases where the Court never scheduled oral argument (which usually occurs when one party appears pro se).One possible reason for this trend is that judges, clerks, and court staff have become more comfortable with telephonic arguments over time. That may be leading the Court gradually to drift back to its usual practice of hearing argument in most cases where both parties are represented by counsel.Case outcomes for submitted and argued casesAt least so far, the Court’s choice to cancel argument strongly correlates with a likely complete loss for the appellant (e.g., an outright affirmance, dismissal for lack of jurisdiction, etc.). Based on MoFo’s tracking of Federal Circuit outcomes, since November 2019 the appellant has suffered a complete loss about 73% of the time. But for cases where the Court canceled scheduled arguments in April, May, or June of this year, that percentage jumps to more than 92%, as illustrated below (for cases decided as of July 1, 2020).<div class="embedded-entry redactor-component block-entry" type="entry" data-sys-entry-uid="blt470ae1df6a50baa6" 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/blt3cb2eaeac1a6dbcc/6273ee514886af2aa2be2755/200706-telephone-arguments-graph-2.jpg?format=auto&amp;quality=60" alt="Chart"></div></div>The numbers from submitted cases are perhaps unsurprising but may not yet tell the whole story. It might be expected that cases in which the Court cancels oral argument and issues a quick decision tilt overwhelmingly against the appellant. The Court’s choice to cancel argument suggests the judges saw the outcome as clear, and it may be quicker for the Court to issue an affirmance than to grant relief because in affirming the Court is maintaining the status quo. But that also suggests the strong correlation between canceled arguments and affirmance may be short-lived. There are still many undecided cases from these months. It’s reasonable to think those undecided cases may bring the affirmance average closer to the historical average—delayed decisions may be more likely to involve some relief for the appellant, because it may take more time to explain why a judgment is wrong, especially where the Court needs to give guidance for a remand.It’s harder to draw inferences about argued cases, in part because more of those remain undecided. For argued cases from April, May, or June’s sitting, appellants have suffered a complete loss in 75% of cases decided as of July 1, 2020, right around the historical average. Almost three-fourths of those losses (19/26) have been affirmances without opinion under Federal Circuit Rule 36.That may suggest that the judges keep different cases for argument for different reasons. In some cases, the judges may keep argument because a case’s outcome is unclear and they have questions. In other cases, the outcome may be clear, but the judges prefer to hold argument and issue a Rule 36 affirmance rather than skip argument and draft a short opinion. Of course, there are other reasons judges may keep cases for argument, and those reasons likely vary from judge to judge. Also, the Court has issued Rule 36 affirmances in two cases that were submitted without argument, so at least for some judges hearing argument in a case is not necessarily a prerequisite for affirming without an opinion.Case timingThe switch to telephonic arguments raises several timing issues. First, the Court continues to issue its notice that a case has been scheduled for oral argument roughly six weeks in advance. The Court appears to issue those notices in all cases that would have had oral argument under the pre-pandemic practice.Second, over the next few weeks after the initial notice, the clerk’s office issues notices for those cases where the Court has canceled oral argument; the office often seems to issue cancellation notices on the same day for cases scheduled before the same argument panel. In general, the office seems to issue the last of the notices to cancel argument at least two weeks before the scheduled argument week.Third, the Court continues to issue timely decisions following an argument or submission date. Especially for cases submitted without argument, decisions can often come quickly. As shown in the chart below, many decisions issue within a week or two of the scheduled submission date. That suggests some judges and clerks may be using the time they would have needed for oral argument preparation to instead prepare draft opinions that are ready for release on or shortly after the scheduled submission date.<div class="embedded-entry redactor-component block-entry" type="entry" data-sys-entry-uid="blt8c24a32432af8810" 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/blta60d3d3dd37ec400/6273ee51deee7329767e90e2/200706-telephone-arguments-graph-3.jpg?format=auto&amp;quality=60" alt="Chart"></div></div>Finally, the move to telephonic hearings does seem to have affected argument timing. For one, argument sessions often begin a few minutes before the scheduled 10 a.m. Eastern Time start. And—at least anecdotally from participating in and listening to multiple telephonic hearings—telephonic hearings also seem less likely to go over time than in-person hearings. Regardless of whether your case is the first or last of the session, if you have a telephonic hearing it’s important to advise your clients and co-counsel to be on the line early so they don’t miss the beginning of the argument.

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

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

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With the start of the Federal Circuit’s July oral arguments, we thought it made sense to look back at the Court’s first three months of telephonic hearings (April, May, and June). What do those sittings show about how the COVID pandemic is affecting the Court? 

Last week the Federal Circuit issued 7 decisions, including cases addressing Article III standing and the role of common sense in obviousness analyses. We provide last week’s statistics and our case of the week, which focuses on the recurring issue of when a claim’s preamble limits its scope.Precedential opinions: 5Non-precedential opinions: 1Rule 36: 1Longest pending case from argument: Avalos v. Dep’t of Housing and Urban Development, No. 19-1118 (206 days from argument to decision)Shortest pending case from argument (non-Rule 36): SolarWorld Americas, Inc. v. United States, No. 19-1591 (79 days from argument to decision)Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-1622.opinion.6-25-2020_1609475.pdf">Shoes by Firebug LLC v. Stride Rite Children’s Group, LLC</a>, No. 19-1622 (June 25, 2020)Panel: Judges Lourie, Moore, and O’Malley, with Judge Lourie writing the opinion.You should read this case if: you have a matter involving a dispute about whether a claim preamble is limiting.As the Federal Circuit often observes, there is no “litmus test” to determine whether a claim’s preamble limits its scope. The absence of such a bright-line rule led to this dispute about a particularly “bright” invention: light-up shoes.Firebug owns patents directed to illumination systems in footwear. It sued Stride Rite, a competitor in the children’s footwear market, alleging that Stride Rite infringed two of Firebug’s patents. In response, Stride Rite petitioned for inter partes review of those patents, asserting that the challenged claims were unpatentable for obviousness over prior-art references disclosing light-up shoes. The Board determined that the claim preambles in both patents were not limiting. It went on to hold all challenged claims unpatentable as obvious. Firebug appealed.The Federal Circuit disagreed with part of the Board’s claim-preamble analysis but ultimately affirmed the Board’s decisions. The Court reiterated its rule that “a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.”The preambles of both patents in the appeal recited “[a]n internally illuminated textile footwear,” but the limitations following the preambles differed. In one patent, the claim body included “a footwear” that “comprises a sole and an upper.” As to that patent, the Court agreed with the Board that the preamble was not limiting, since the claim body recited a structurally complete invention. But in the other patent, the claim body referred to “footwear” only in describing the configuration of the illumination system—“the illumination system being housed within the footwear.” Thus, the Court disagreed with the Board and determined that the preamble in that patent was limiting, since the claim body’s structural limitations relied on the “footwear” recited in the preamble. Nonetheless, the Court concluded that the Board’s error was harmless, as the Board’s findings supported obviousness under the correct claim construction.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 (June 22-26): Light-up shoes and limiting preambles

Last Week in the Federal Circuit (June 22-26): Light-up shoes and limiting preambles

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Last week the Federal Circuit issued 7 decisions, including cases addressing Article III standing and the role of common sense in obviousness analyses. We provi

Patent - Claim Construction

Federal Circuitry tracks important unreported orders and highlights those that may be of interest to practitioners before the Court.Case:  Kaszuba v. Iancu, No. 20-1208Originating tribunal:  Trademark Trial and Appeal BoardDates:  May 5, 2020; June 19, 2020Panel:  Lourie, Dyk, Reyna (per curiam)Result:  Appeal dismissed; appeal later reinstated and summarily affirmed insteadThese recent orders in Kaszuba v. Iancu caught our eye because they involve a motions panel sua sponte reversing its own prior order and addressing an interesting statutory question about causes of action to appeal from the TTAB under 15 U.S.C. § 1071(a)(1).Appellant Kaszuba owns a registered word mark to “COYOTE MOTORCYCLES.”  But he failed to file a required declaration and renewal application by the deadline.  Kazuba blamed this failure on problems with the PTO’s electronic filing system, which prevented him from filing until after the midnight Eastern Time cutoff.  After the PTO cancelled his registration, he petitioned the Director to reinstate it, arguing that the PTO discriminates against those outside the Eastern Time Zone.  The Director dismissed his petition, and Kaszuba appealed.On appeal, the PTO filed a notice that it was not filing a certified list because it believed that the Court lacked jurisdiction over the appeal.  As one ground for that, the PTO argued that 15 U.S.C. § 1071(a)(1), in relevant part, authorizes only “a registrant who has filed an affidavit” or “an applicant for renewal” to appeal, but Kaszuba never successfully filed an affidavit or renewal application.  Presumably in response to that, the Court issued a show cause order directing Kaszuba to explain the basis for the Court’s jurisdiction.After briefing on the show cause order, a motions panel ordered the appeal dismissed.  The panel’s order explained that the issue was not one of jurisdiction—which goes to court power to hear a case—but one of cause of action—which goes to whether a particular plaintiff can invoke a court’s power.  The order concluded that Kaszuba lacked a cause of action because the ordinary meaning of “an applicant for renewal” in Section 1071(a)(1) excludes a person “who merely attempted or prospectively wants to file an application.”Yet that was not the end of the appeal.  Roughly six weeks after dismissing the appeal but before the mandate issued, the same motions panel issued two new orders, apparently sua sponte.  One order vacated the prior order and reinstated the appeal, and the other summarily affirmed (rather than dismissed) the appeal.The new summary affirmance order, critically, interpreted Section 1701(a)(1) differently and concluded that Kaszuba did have a cause of action.  This time, the Court held that the statutory term “applicant for renewal” is “broad enough to encompass someone who formally applied as well as someone who was in the process of completing the renewal application but was unlawfully denied the opportunity to file it.”  Because Kaszuba alleged that included him, he had a cause of action and could appeal.  In the end, though, the Court saw no merit to Kaszuba’s appeal and so summarily disposed of the case without any briefing beyond the show cause order.One interesting question about this case is what led to the sua sponte change.  One possibility is that a colleague within the Court raised an issue about the original order, leading the panel to reconsider.  Because the original dismissal order was nonprecedential, the clerk’s office likely issued it under the Court’s internal operating proceedings without circulating it to the entire Court.  Fed. Circuit IOP #10.5.  That means the first chance other judges would have to consider the panel’s interpretation of 15 U.S.C. § 1071(a)(1) was after the order issued.  It’s thus possible one or more judges could have approached the panel after the order issued.  Although we’ll likely never know because such deliberations are not public, if that did happen here it would be part of a great tradition of collegiality at the Federal Circuit.

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Order of interest – Sua sponte panel reversal and causes of action to appeal from the TTAB

Order of interest – Sua sponte panel reversal and causes of action to appeal from the TTAB

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Federal Circuitry tracks important unreported orders and highlights those that may be of interest to practitioners before the Court.
Case:  Kaszuba v. Iancu, No