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 nationwide. 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 five 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 14 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 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.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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Of Counsel

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-839223549{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

A new year means new Federal Circuit decisions to analyze. Our case of the week recounts an interesting saga of companies copying each other’s patent applications to provoke an interference. And if that’s not enough to grab your attention, the case provides some insight into the kinds of evidence that litigants can use to corroborate inventor testimony.Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/21-2372.OPINION.1-6-2023_2058943.pdf" target="_blank">Dionex Softron GmbH v. Agilent Technologies, Inc.</a>, No. 21-2372Panel: Judges Reyna, Chen, and Stark, with Judge Stark writing the opinionYou should read this case if: you have a matter involving corroboration of inventor testimonyThis week’s case involves what the Federal Circuit deemed “an unusual history.” Agilent and Dionex both sought to patent liquid chromatography systems. Agilent copied the claims in Dionex’s patent application in an unsuccessful bid to provoke an interference. Then Agilent amended its claims, Dionex copied those claims, and an interference was finally declared. (The America Invents Act, which was enacted more than a decade ago, eliminated interference proceedings. But certain patents claiming pre-AIA inventions may still be subject to interferences.) The Patent Trial and Appeal Board found that Agilent proved conception and actual reduction to practice before Dionex’s earliest alleged conception date. The Board thus awarded priority to Agilent and denied Dionex’s claims.The Federal Circuit affirmed. The Court decided several issues, including claim construction and written description, but we’ll focus on its discussion of corroboration and reduction to practice.As a reminder, actual reduction to practice occurs when the inventor creates an embodiment of the claimed invention (or interference count). An inventor’s testimony “must be corroborated by independent evidence.” In determining whether an inventor’s testimony has been adequately corroborated, each case “must be decided on its own facts.”Here, the Board’s corroboration finding was based on (1) testimony from other Agilent employees who worked near the inventor and saw a successful prototype of the invention and (2) a document depicting that prototype.The Federal Circuit rejected Dionex’s argument that the coworkers’ testimony was insufficient because they did not know the prototype’s specific configuration. The coworkers “may not have known every detail, but such omniscience is unnecessary under the rule of reason.” It sufficed that they “understood enough to know that the prototype performed all steps of the count.”Nor was the Board required to discount the prototype document because it had a “last modified” date after Agilent’s purported reduction to practice. The document was created more than a year before the reduction-to-practice date, and the Board reasonably credited testimony that the document depicted a prototype meeting all the claim limitations by the relevant date.The Court also concluded that the Board was not required to draw a negative inference against Agilent based on a lack of co-inventor testimony and the absence of other documentary evidence. According to the Court, “[t]here is no per se requirement to infer that the testimony of an inventor who fails to testify would be harmful to the position of his co-inventor.” The Board permissibly accepted Agilent’s explanation that testimony from the co-inventor (who was retired) would have been cumulative of and inferior to the inventor’s testimony.Further, the Court explained that the Board need not “draw a negative interference whenever a party fails to present some types of documentary evidence an opposing party insists must exist.” The Board was not required to accept Dionex’s assertion that Agilent must have created additional documents under “industry norms.” Nor was the Board required to conclude that any such “missing” documents would undermine Agilent’s other evidence.OTHER WEEKLY STATSPrecedential opinions: 3Non-precedential opinions: 2Rule 36: 0Longest pending case from argument: Dionex Softron GmbH v. Agilent Technologies, Inc., Nos. <a href="https://cafc.uscourts.gov/opinions-orders/21-1794.OPINION.1-6-2023_2058970.pdf">21-1794</a>, <a href="https://cafc.uscourts.gov/opinions-orders/21-2372.OPINION.1-6-2023_2058943.pdf" target="_blank">21-2372</a> (183 days) (companion cases)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/22-1318.OPINION.1-3-2023_2056398.pdf" target="_blank">Tippmann Engineering, LLC v. Innovative Refrigeration Systems, Inc.</a>, No. 22-1318 (60 days)

Last Week In The Federal Circuit (January 3 – January 6): Corroboration Station

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Last Week In The Federal Circuit (January 3 – January 6): Corroboration Station

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A new year means new Federal Circuit decisions to analyze. Our case of the week recounts an interesting saga of companies copying each other’s patent applications to provoke an interference. 

Last Week in the Federal Circuit

Some of you may remember the Federal Circuit’s <a href="https://cafc.uscourts.gov/opinions-orders/16-1599.opinion.5-9-2017.1.pdf" target="_blank">decision </a>from a few (actually 5!) years ago holding that patent owner statements made in an IPR proceeding may “support a finding of prosecution disclaimer during claim construction.” That decision left unresolved an important question—whether disclaimer statements apply in the same IPR proceeding in which they’re made. Can a patent owner disclaim coverage of some portion of its claims in an IPR to obtain a narrowed claim construction and avoid the prior art? In this week’s case of the week, the Federal Circuit answers that question with a clear “no.” Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/20-2262.OPINION.11-16-2022_2034079.pdf" target="_blank">CUPP Computing AS v. Trend Micro Inc.</a>, No. 20-2262Panel: Judges Dyk, Taranto, and Stark, with Judge Dyk writing the opinionYou should read this case if: you have a matter involving disclaimer during an inter partes reviewThis week’s case features an IPR challenge to three patents claiming a better way to protect mobile devices from malware. The claims recite a mobile device with two processors: a “mobile device processor” that must be “different than [a] mobile security system processor.” The patent owner argued that “different” means the claims require a “separate and remote” security system processor, that is, that the security system processor cannot be part of the mobile device. That was a tough argument using standard claim construction tools. For one, the patents included a preferred embodiment with a mobile security system “incorporated within the mobile device.” The prosecution history also gave the patent owner no help. The patent owner argued it had disclaimed security processors that were part of the mobile device when distinguishing its claims from the prior art during the original prosecution. But the panel concluded that the alleged disclaimer was ambiguous and so insufficient to clear the high bar needed for a disclaimer.That left the patent owner’s argument that disclaimer statements made in the current IPR should have required the Board to accept the patent owner’s claim construction. During the IPR, the patent owner had expressly disavowed that its claims cover a security system processor embedded in a mobile device. But the Federal Circuit held the Board “could ignore this disavowal in construing the claims.” The Court explained that “the Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.” After all, the point of an IPR is for the Patent Office to “revisit” the claims it granted. Allowing patent owners to “shapeshift their claims through argument in an IPR” to cover something different from the original scope would defeat that purpose. Plus, Congress already gave patent owners a different tool to narrow their claims during an IPR—amend them under 35 U.S.C. § 316. Allowing within-an-IPR disclaimer “would render that process unnecessary.” And it would bypass important guardrails that apply for only amended claims. For example, the Board may review amended claims—but not non-amended ones—for other patentability requirements like § 101 ineligibility. The takeaway: patent owner comments in an IPR may alter claim scope only in later proceedings. In the IPR itself, patent owners will have to use other claim construction tools, or amendment, to secure their preferred claim scope.OTHER WEEKLY STATSPrecedential opinions: 4Non-precedential opinions: 9Rule 36: 1Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1321.OPINION.11-14-2022_2032484.pdf" target="_blank">American National v. Sleep Number Corporation</a>, No. 21-1321 (158 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/22-1033.OPINION.11-16-2022_2034130.pdf" target="_blank">Blazer v. Best Bee Brothers LLC</a>, No. 22-1033 (14 days)

Last Week In The Federal Circuit (November 14-18): No Disclaimer For You!

Seth Lloyd, a member of Morrison Foerster’s Appellate and Supreme Court practice, has been counsel in more than a hundred appeals in federal and state courts nationwide.

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Last Week In The Federal Circuit (November 14-18): No Disclaimer For You!

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Some of you may remember the Federal Circuit’s decision from a few (actually 5!) years ago holding that patent owner statements made in an IPR proceeding may “support a finding of prosecution disclaimer during claim construction.” 

Claim construction disputes often include arguments based on patents in the same family or materials incorporated by reference. Our case of the week discusses both categories of sources—and illustrates some limits on their use in claim construction.Case of the (recent) week: <a href="https://cafc.uscourts.gov/opinions-orders/21-2093.OPINION.11-1-2022_2027205.pdf" target="_blank">Finjan LLC v. ESET, LLC</a>, No. 21-2093Panel: Judges Prost, Reyna, and Taranto, with Judge Reyna writing the opinionYou should read this case if: you have a matter involving claim construction arguments based on related patents or incorporation by referenceThis week’s case involves a family of patents related to detecting computer viruses in downloaded files. In particular, the claims at issue all recite a security profile or policy for a “Downloadable.” Of the four asserted patents, two lacked any express definition of “Downloadable,” and two defined “Downloadable” as “an executable application program[]” downloaded from another computer. But all four asserted patents incorporated by reference a parent patent that defined “Downloadable” as “a small executable . . . application program.”Based on that incorporation by reference, the district court construed “Downloadable” in the asserted patents as similarly limited to “small” executable application programs.The Federal Circuit reversed. It acknowledged that “[i]ncorporation by reference of a patent renders the entire contents of that patent’s disclosure a part of the host patent.” But the Court emphasized that “incorporation by reference does not convert the invention of the incorporated patent into the invention of the host patent.” Rather, an incorporation by reference must be read in light of the host patent’s disclosure “to determine what impact, if any, a patent incorporated by reference will have on construction of the host patent claims.”Applying those principles, the Court rejected the district court’s use of the incorporated patents’ “Downloadable” definition to limit the asserted claims. It observed that the asserted patents “purposely delete[d]” the “restrictive” definition in the parent patents. And it noted that the only examples of “Downloadables” in the parent patents were small programs (applets). By contrast, the example “Downloadables” in the asserted patents were not so limited—they also included larger files such as scripts. The Court thus saw no inconsistency in giving “Downloadable” a broader scope in the asserted patents than in the incorporated parent patents.In sum, based on “the context provided by” the asserted patents, the Court concluded that “Downloadable” in the asserted claims “should not be restricted to ‘small’ executable application programs.”OTHER WEEKLY STATSPrecedential opinions: 3Non-precedential opinions: 8Rule 36: 3Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2093.OPINION.11-1-2022_2027205.pdf" target="_blank">Finjan LLC v. ESET, LLC</a>, No. 21-2093 (182 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1498.OPINION.11-4-2022_2029026.pdf" target="_blank">Uniloc 2017 LLC v. Google LLC</a>, No. 21-1498, and <a href="https://cafc.uscourts.gov/opinions-orders/21-1555.OPINION.11-4-2022_2029051.pdf" target="_blank">Uniloc USA, Inc. v. Motorola Mobility LLC</a>, No. 21-1555 (59 days) (companion cases)

Last Week In The Federal Circuit (October 31 – November 4): Keeping It In The (Patent) Family

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Last Week In The Federal Circuit (October 31 – November 4): Keeping It In The (Patent) Family

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Claim construction disputes often include arguments based on patents in the same family or materials incorporated by reference. 

Now that we’re nearing the end of 2022 (crazy, right?), we thought we’d update our data on when Federal Circuit judges sit. We looked at this in early 2021 (<a href="https://federalcircuitry.mofo.com/topics/When-Do-Federal-Circuit-Judges-Sit">When Do Federal Circuit Judges Sit?</a>), and we’ve twice looked at data on how often the judges sit (<a href="https://federalcircuitry.mofo.com/topics/how-often-do-federal-circuit-judges-sit-2022" target="_self">How Often Do Federal Circuit Judges Sit 2022?</a>and <a href="https://federalcircuitry.mofo.com/topics/how-often-do-federal-circuit-judges-sit" target="_self">How Often Do Federal Circuit Judges Sit?</a>).As a reminder, we’re looking at when Federal Circuit judges sit for oral argument. We count each oral argument panel a judge sits on. But we exclude panels that hear just one case, sometimes called plus panels because they’re often identified on the schedule with a plus (like Panel D+). One-case panels can happen for a variety of reason, such as for the rare oral argument on a motion or when a case comes back after a remand (so some portion of the original panel is reconvened).Based on that criteria, the chart below shows the total panel days sat each month across all judges (active and senior) through August 2022. Since this is totaling the sittings across all judges, each typical panel in a month adds three to a month’s total (one unit for each judge who sat on the panel).<div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/bltef680b5f6dbd6933/6362b996fd32d07c578ddec3/221102-blog-post-graph.PNG?format=auto&amp;quality=60" alt="blog post graph"/></div>As we previously found, the chart confirms that the Federal Circuit tends to sit less frequently in the summer, especially in July and August. But the chart shows something new since our last look—although panel sittings continued at a relatively steady pace throughout the many pandemic-related shutdowns in 2020 and 2021, 2022 has been different. Every month in 2022 so far has consistently had the fewest number of judge sittings in our data compared to previous years. And the drop in sittings is fairly significant, often around two-thirds the number of judge sittings in a given month relative to pre-pandemic numbers. These results match what many readers probably had already anecdotally noticed. Although in past years, in non-summer months the Federal Circuit tended to have three oral argument panels per day during argument week, this year the Court has consistently had only two panels per day.The results also line up with our recent observations about how quickly the Federal Circuit is scheduling oral arguments (<a href="https://federalcircuitry.mofo.com/topics/will-your-appeal-have-argument-soon-part-ii">Will Your Appeal Have Argument Soon? Part II</a>). Since back in 2021, the Federal Circuit had been scheduling oral argument fairly quickly once briefing ended. That seemed to be because the Court had worked through any backlog of cases and because the number of new appeals had dipped. The drop in judge sittings per month in 2022 seems to be a delayed result of the same thing. But as we also observed, in more recent months, the time to schedule oral argument has significantly increased. That may mean that the number of appeals is picking back up, which could translate to a return to the previous norm of three panels per day during argument week. If that happens, you can be sure as always that it’ll show up in our data.

When Do Federal Circuit Judges Sit (2022)?

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When Do Federal Circuit Judges Sit (2022)?

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Now that we’re nearing the end of 2022 (crazy, right?), we thought we’d update our data on when Federal Circuit judges sit.

Federal Circuit Insights

Now that the Court is open to the public—not just for arguing counsel but for anyone to watch arguments and visit the Court—I thought it was time to take a look at argument timing again.Back in April 2021, I first looked because it seemed that cases were getting scheduled for argument more quickly (see post <a href="https://federalcircuitry.mofo.com/topics/will-your-appeal-have-argument-soon">here</a>). My perception was a reality, as cases were in fact being scheduled quicker when I compared argument timing year to year. And that was confirmed by judges who have noted in speeches that there is no backlog and cases are being set two to three months after the reply brief.Fast forward to today, that no longer seems to be the case. Appeals you might expect to be calendared haven’t been calendared yet. So that begs the question:are things slowing down? I decided to take a look again. And at least over the past three sittings, they are.Just taking district court and PTAB cases, the median time from appendix filing to argument for October was 172 days, for November 169 days, and for December 185 days. (I used the median, rather than the average, in order to account for outliers that might skew the results, such as expedited cases or comeback cases that might require some of the original panel.) By comparison, if we look at the first three sittings of the year, things were quicker: January 2022 was 122 days, February 2022 was 134 days, and March 2022 was 132 days. Going even further back, when I looked back in April 2021, the numbers for all appeals were even faster: 100 days for March 2021, 88 days for April 2021, and 81 days for May 2021.After we pulled the data, my co-editor Sam Goldstein wondered, maybe the Court always slows down at the end of the year. So I grumbled, and appellate paralegal Mia Harris and I took a look at the same months last year. As the chart below illustrates, the results were mostly the same. It’s taking longer and the end of the year isn’t an outlier from the beginning of the year:<div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/bltc2292b767dadbf40/635ffc811fb4e757e1111897/appealcharts2.jpg?format=auto&amp;quality=60" alt="District Court and PTAB Appeals chart"/></div>What, of course, does this all mean? I think if you currently have an appeal fully briefed and waiting for argument, it may take closer to six months than three months for argument. In fact, it doesn’t seem like it has been three months for some time. While we didn’t do the calculation every month, it seems that things were quicker in the early part of 2021 than they were a year ago, or certainly now. Whether this continues, who knows? If anything, the Court has shown it’s quite efficient and effective in getting cases to argument, so we very well could get back to the quicker pace in early 2021. That said, there’s one thing to keep in mind. From January 7, 2017 to March 3, 2022, the MSPB had no quorum and could issue no final decisions; now that a quorum exists and the MSPB can issue those decisions, it remains to be seen if there will be a flood of decisions subject to Federal Circuit review.

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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Will Your Appeal Have Argument Soon? Part II

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Now that the Court is open to the public—not just for arguing counsel but for anyone to watch arguments and visit the Court—I thought it was time to take a look at argument timing again.

Will Your Appeal Have Argument Soon? Part II

As we’ve <a href="https://federalcircuitry.mofo.com/topics/another-term-another-section-101-cvsg">noted</a>, the Supreme Court is once again considering whether to take up patent eligibility: it recently CVSGed two more Section 101 cases. While we wait for the government’s views, the Federal Circuit will continue resolving Section 101 disputes, likely including some close cases resulting in split decisions. Our case of the week is one such case—the panel members disagreed on whether some claims passed muster under the Mayo/Alice test.Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/21-2350.OPINION.10-17-2022_2019539.pdf">IBM v. Zillow Group, Inc</a>., No. 21-2350Panel: Judges Reyna, Hughes, and Stoll, with Judge Hughes writing the opinion and Judge Stoll dissenting in partYou should read this case if: you have a matter involving patent eligibility, particularly in the field of data visualizationThis week’s case involves two patents related to graphical display technology. The first patent (the ’789 patent) covers methods for “coordinated geospatial and list-based mapping.” In the claimed methods, a user draws a shape on a map to select that area. The system then “synchronizes” the map with an associated list by displaying data in the list corresponding only to the selected area. (Think drawing a square on a map, resulting in a list showing restaurants only within that square.)The second patent (the ’389 patent) claims methods of displaying objects on a map in visually distinct layers. By adjusting attributes like color and opacity, objects in one layer are brought to the front of the display and emphasized, while objects in other layers are sent to the back of the display and deemphasized.The district court granted the accused infringer’s Rule 12(c) motion for judgment on the pleadings, holding all asserted claims from both patents invalid under Section 101.A partly divided Federal Circuit panel affirmed. Writing for the majority, Judge Hughes agreed with the district court that all claims at issue claimed ineligible subject matter.On the ’789 patent, at Alice step one, the majority held that the claims were directed to the abstract idea of “limiting and coordinating the display of information based on a user selection.” The claims recite abstract steps: presenting a map, having a user select a portion of that map, and displaying a more limited data set to the user based on that selection. The majority explained that the claimed methods merely used a computer to automate those steps, and thus were not “an improvement specific to computing.”At Alice step two, the majority concluded that the claims contain nothing that transforms the abstract idea into a patentable application. The patentee had alleged that the “synchronized display” and “user determined shape” limitations were inventive, unconventional concepts. But according to the majority, those allegations were not sufficiently “plausible and specific” to defeat a Rule 12 motion. The majority reasoned that those limitations used functional language at a high level of generality and provided no “specific technical solution beyond simply using generic computer concepts in a conventional way.”As for the ’389 patent, the majority held at Alice step one that the claims were directed to the abstract idea of “organizing and displaying visual information.” The claims organize sets of visual information into layers and then present those layers on a generic device display. The majority stressed that just automating that process on a computer is not “an improvement in any computing technology.” Indeed, the majority noted that the same process of organizing and displaying visual information by varying color and shading “has long been done by cartographers creating paper maps.”Moving onto the second Alice step, the majority concluded that the claims contained no inventive concept. Similar to its step one analysis, the majority explained that the claims use generic computer components to perform certain functions “without describing how any of those functions are performed.” And, again, the majority noted that the claimed steps “could be done using paper and ink and have long been done by cartographers.”Judge Stoll dissented in part. She agreed with the majority that all ’789 patent claims and most ’389 patent claims were ineligible under Section 101. But she parted course on two dependent claims of the ’389 patent, which add limitations reciting “rearranging logic to rearrange the displayed layers” and “re-matching logic to re-match one or more objects to a different layer.” The patentee’s complaint and an attached expert declaration alleged that those limitations provided inventive solutions to the problem of overly cluttered computer displays. In Judge Stoll’s view, these allegations plausibly established that the dependent claims were “directed to a technical improvement in how a user interacts with a computer via the graphical user interface.” By failing to accept those allegations as true, the district court improperly held the dependent claims ineligible at the pleading stage.OTHER WEEKLY STATSPrecedential opinions: 1Non-precedential opinions: 3Rule 36: 0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2350.OPINION.10-17-2022_2019539.pdf">IBM v. Zillow Group, Inc</a>., No. 21-2350 (132 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2039.OPINION.10-20-2022_2021742.pdf">Microsoft Corporation v. Uniloc 2017 LLC</a>, No. 21-2039 (44 days)

Last Week In The Federal Circuit (October 17 – October 21): Mapping The Section 101 Landscape

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Last Week In The Federal Circuit (October 17 – October 21): Mapping The Section 101 Landscape

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As we’ve noted, the Supreme Court is once again considering whether to take up patent eligibility: it recently CVSGed two more Section 101 cases. 

The Supreme Court term has started, and the Court once again seems to be dipping its toes in the water with more CVSGs in 101 cases. Maybe this time the Court will take the plunge. For our case of the week—our highly subjective selection based on whatever case piqued our interest—we look at a case of international intrigue that discusses important principles of judicial review and an agency’s inherent authority to reconsider its own decisions. Precedential opinions: 2 Non-precedential opinions: 5 Rule 36: 2 Longest pending case from argument:<a href="https://cafc.uscourts.gov/opinions-orders/21-2086.OPINION.10-13-2022_2017803.pdf">Hekmati v. United States</a>, No. 21-2086 (247 days) Shortest (non-Rule 36) pending case from argument:<a href="https://cafc.uscourts.gov/opinions-orders/21-2228.OPINION.10-13-2022_2017814.pdf">Weisner v. Google LLC</a>, No. 21-2228 (128 days) Case of the (recent) week:<a href="https://cafc.uscourts.gov/opinions-orders/21-2086.OPINION.10-13-2022_2017803.pdf">Hekmati v. United States</a>, No. 21-2086 Panel: Judges Lourie, Bryson, and Cunningham, with Judge Cunningham writing the opinion You should read this case if: you’re interested in bars to judicial review and an agency’s inherent reconsideration authority (or you just want to read an interesting case that doesn’t involve 101)The facts of the case read a bit like a spy novel for lawyers, or at least special masters. Amir Hekmati, a veteran and then government contractor stationed in Afghanistan, was detained in a trip to Iran—where he allegedly intended to visit family. Over the next four years, the Iranian government imprisoned and tortured Hekmati until the United States could secure his release in a prisoner exchange. Upon his return to the United States, Hekmati sued and obtained a default judgment against the Iranian government for $63.5 million. With that default judgment, he then applied for compensation from the United States Victims of State Sponsored Terrorism Fund established by the Justice for United States Victims of State Sponsored Terrorism Act, which provides money to citizens who obtain judgments against foreign states designated as state sponsors of terrorism. The special master approved the claim.Despite the approval, Hekmati received no money. After being told that the Department of Justice intended to seek reconsideration of the Fund’s approval of the claim, Hekmati sued in the Court of Federal Claims. And shortly thereafter, the special master reversed course and denied Hekmati’s claim, saying that his application contained material omissions and false statements. What were those omissions and falsities? Hekmati allegedly hadn’t actually gone to Iran to visit family; he had gone “‘to sell classified U.S. national security information to the government in Iran.’” As to Hekmati’s suit in the Court of Federal Claims? The court dismissed it for lack of subject matter jurisdiction.So did the Court on appeal get to look into the intrigue of whether Hekmati tried to sell state secrets to Iran? Nope. It said that the Justice for United States Victims of State Sponsored Terrorism Act precludes judicial review of claims like Hekmati’s. The Court noted the strong presumption for judicial review when construing statutes, but it noted that this presumption can be overcome by clear and convincing indications drawn from the text, history, and structure of the statute. Here, the Court found such a clear statement. That Act includes specific language stating that “decisions made by the Special Master with regard to compensation from the Fund” are “final” and “not subject to . . . judicial review.”Hekmati tried to sidestep this language by arguing that he wasn’t challenging the special master’s decision to deny him funds but was instead raising a broader challenge to the Fund’s administration to enforce the Act. But the Court noted that to decide that challenge would necessarily require judicial review of whether the decision regarding compensation was correct—something plainly barred by the Act.Hekmati also argued that the Court should review whether the special master’s decision to reconsider an award was itself procedurally proper. The Court acknowledged that nothing in the Act expressly provided a basis for the special master to reconsider decisions. Nonetheless, it concluded that administrative agencies generally have inherent authority to reconsider their decisions—and (since we have to mention patent law somewhere) the Court noted that it previously held that the PTAB has inherent authority to reconsider its decisions to institute IPRs. Of course, the Court noted the general limits on an agency’s ability to inherently reconsider its decision—including whether the inherent authority would be contrary to the statute, whether the statute sets forth specific procedures for reconsideration, whether the agency gave notice, and whether reconsideration occurred within a reasonable period of time. Hekmati challenged only the last limit, arguing that the reconsideration did not occur soon enough. But the Court brushed aside that argument, noting that the interest in finality was outweighed by the public interest in protecting the integrity of the proceeding based on new evidence of fraud. And having concluded that reconsideration was permitted, the Court said it could not review the result of the reconsideration decision.

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Last Week In The Federal Circuit (October 10 – October 14): Intrigue, Espionage, Judicial Review, and Administrative Law

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The Supreme Court term has started, and the Court once again seems to be dipping its toes in the water with more CVSGs in 101 cases. Maybe this time the Court will take the plunge. For our case of the week—our highly subjective selection based on whatever case piqued our interest—we look at a case of international intrigue that discusses important principles of judicial review and an agency’s inherent authority to reconsider its own decisions.

Last Week In The Federal Circuit (October 10 – October 14): Intrigue, Espionage, Judicial Review, and Administrative Law

Unlike obviousness, the test for anticipation in patent law is generally pretty simple—does the prior art disclose the same thing as the challenged patent claims. But as our latest case of the week shows, that simple test can sometimes involve subtle, and more complicated, issues.Case of the (recent) week: <a href="https://cafc.uscourts.gov/opinions-orders/21-2121.OPINION.9-29-2022_2010851.pdf">Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.</a>, No. 21-2121Panel: Judges Lourie, Reyna, and Stoll, with Judge Lourie writing the opinionYou should read this case if: you have a matter involving anticipation of a species when the prior art discloses a genusIn this week’s case, the patentee obtained a patent to a chemical formula that can be used for treating non-insulin-dependent diabetes. The fancy name for the claimed chemical is a sitagliptin dihydrogenphosphate salt with a 1:1 stoichiometry. If that’s all gibberish to you, the relevant point to know is that the claimed compound can be formed from sitagliptin and phosphoric acid. And the relevant prior art in the case discloses sitagliptin and “pharmaceutically acceptable salts thereof,” while also identifying phosphoric acid as a preferred acid for forming such a salt. Open and shut invalidity, right? The Board thought not and the Federal Circuit affirmed. The Federal Circuit reasoned that the prior art discloses sitagliptin only as part of a class of 33 compounds related to possible diabetes treatment. Yet nothing in the art “directs a skilled artisan to sitagliptin from among the 33 listed” compounds. The prior art similarly teaches phosphoric acid for salt formation only as part of a group of 8 potential acids. But again, nothing in the art “singles out phosphoric acid or any phosphate salt.” Plus, the art’s description of salts “comes 44 pages earlier in the specification” before the description of sitagliptin. These facts were enough to support the Board’s finding that the art did not expressly disclose the claimed chemical.The Federal Circuit similarly saw sufficient evidence to support the Board’s finding of no-inherent anticipation. The challenger relied on precedent holding that disclosing a class could anticipate individual species within the class when a skilled artisan may “at once envisage each member of the limited class.” The Federal Circuit rejected that argument because the challenger in this case had failed to show the prior art discloses a “limited” class. The Court pointed to unrebutted testimony that the combination of 33 potential compounds and 8 potential acids for forming salts amounted to a class of “957 salts, some of which may not exist.” That class size “is a far cry from the 20 compounds ‘envisaged’ by the narrow genus” in the relevant precedent. The Court explained that it “cannot provide a specific number defining a ‘limited class’” because the number “depends on the ‘class.’” But on the facts in this case, it held that the Board’s no-anticipation conclusion was reasonable.OTHER WEEKLY STATSPrecedential opinions: 0Non-precedential opinions: 8Rule 36: 4Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2184.RULE_36_JUDGMENT.10-5-2022_2014028.pdf">Novozymes North America, Inc. v. Danisco US Inc</a>., No. 21-2184 (173 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2088.OPINION.10-7-2022_2015416.pdf">Penley v. McDonough</a>, No. 21-2088 (3 days)

Last Week In The Federal Circuit (October 3 – October 7): Genus/Species Meets Inherent Anticipation

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Last Week In The Federal Circuit (October 3 – October 7): Genus/Species Meets Inherent Anticipation

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Unlike obviousness, the test for anticipation in patent law is generally pretty simple—does the prior art disclose the same thing as the challenged patent claims. But as our latest case of the week shows, that simple test can sometimes involve subtle, and more complicated, issues.

Last week marked the start of the Supreme Court’s October 2022 Term. That meant another “long conference” order list acting on most of the petitions that had accumulated over the summer. The Court did not grant any new cases from the Federal Circuit. But it called for the views of the Solicitor General in two such cases—one of which may give our readers a sense of déjà vu. We’ve discussed the CVSG process in more detail in a <a href="https://federalcircuitry.mofo.com/topics/Federal-Circuitry-Jan-11-2022-A-CVSG-on-Claim-Construction-Procedures-and-Jury-Trial-Rights.html">previous</a> post.One CVSG came in <a href="https://www.supremecourt.gov/docket/docketfiles/html/public/21-1281.html">Interactive Wearables, LLC v. Polar Electro Oy</a>. The petition there asks the Court to consider questions including:1. What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step one of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?2. Is patent eligibility (at each step of the Court’s two-step framework) 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 art at the time of the patent?Sound familiar? If so, that’s because those questions are nearly word-for-word identical to the questions presented in American Axle. As our readers may <a href="https://federalcircuitry.mofo.com/topics/supreme-court-refuses-again-to-jump-back-into-the-101-fray">recall</a>, in American Axle, a split Federal Circuit panel held a manufacturing-method claim ineligible under Section 101. The Federal Circuit denied en banc rehearing by a 6-6 vote. The Supreme Court then CVSGed the case. The Solicitor General recommended granting review, noting that the Supreme Court’s existing Mayo/Alice patent-eligibility framework “has given rise to substantial uncertainty.” But in an anticlimactic end to the saga, the Court nonetheless denied the petition.Compared to American Axle, Interactive Wearables seems to be an unlikely candidate for review. In American Axle, there were strong dissents at the panel and rehearing stages. In Interactive Wearables, the Federal Circuit panel summarily affirmed under Rule 36, and there were no noted dissents from the denial of rehearing. And American Axle involved a method for manufacturing automobile parts; as the government’s CVSG brief noted, “such industrial techniques have long been viewed as the paradigmatic examples” of patentable inventions. Interactive Wearables, by contrast, involves a “wearable content player” with what the district court described as “generic computer components.” Those sorts of claims can raise greater eligibility concerns.So what could explain the CVSG in Interactive Wearables just a few months after the American Axle cert denial? Perhaps the Justices had second (or third) thoughts about declining to enter the Section 101 fray. Or perhaps it had something to do with Justice Jackson replacing Justice Breyer in the interim. It will be interesting to see whether the Solicitor General recommends a grant again in Interactive Wearables—and, either way, whether the petition meets the same fate as American Axle.The other CVSGed Federal Circuit case was <a href="https://www.supremecourt.gov/docket/docketfiles/html/public/22-37.html">Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline LLC</a>. Some quick background: the Hatch-Waxman Act lets generic drug manufacturers market their products with a so-called “skinny label” that “carves out” uses covered by the brand manufacturer’s patents. In Teva, a jury found the generic manufacturer liable for induced infringement despite its use of such a carve-out. The brand manufacturer had argued that other parts of the generic’s label and the generic company’s marketing materials still encouraged physicians to prescribe the drug for infringing uses. A divided Federal Circuit panel upheld the jury’s verdict, and the Federal Circuit denied en banc rehearing over the dissent of three judges.The generic manufacturer is now asking the Supreme Court to step in. The question presented in its petition is:If a generic drug’s FDA-approved label carves out all of the language that the brand manufacturer has identified as covering its patented uses, can the generic manufacturer be held liable on a theory that its label still intentionally encourages infringement of those carved-out uses?There is no formal deadline for the CVSG briefs in these cases. But based on past practice, the briefs could come by next spring, in time for the Supreme Court to consider the petitions before it recesses at the end of June 2023.

Another Term, Another Section 101 CVSG

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Another Term, Another Section 101 CVSG

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Last week marked the start of the Supreme Court’s October 2022 Term. That meant another “long conference” order list acting on most of the petitions that had accumulated over the summer. 

Patent Term Adjustment (PTA) is additional patent term for U.S. patents to compensate for delay in issuance. The statute (35 U.S.C. § 154(b)) provides three bases for PTA: delayed response by the USPTO (“A delay”), failure to issue a patent within three years (“B delay”), and delay due to appeal (“C delay”). For C delay, patent term is extended for “appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability.”Read the <a href="https://lifesciences.mofo.com/topics/sawing-through-patent-term-the-federal-circuit-s-recent-decision-in-sawstop" target="_self">full blog post</a>.

Sawing Through Patent Term—the Federal Circuit’s Recent Decision In Sawstop

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Mehran Arjomand is chair of the firm's Patent Trial and Appeal Board Practice and heads the firm's technology patent practice. Mr. Arjomand began his legal career as a litigator. After five years, he 

Mehran Arjomand

Mehran Arjomand is chair of the firm's Patent Trial and Appeal Board Practice and heads the firm's technology patent practice. Mr. Arjomand began his legal career as a litigator. After five years, he joined Morrison & Foerster, where he developed a strong foundation in USPTO prosecution and procedure. With his combined litigation and prosecution experience, he is able to counsel clients on end-to-end strategies—from patent creation to patent challenges.

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Dr. Meghan Poon counsels clients on patent preparation and prosecution, portfolio strategy, and IP due diligence in the areas of biotechnology and biologics. She has significant experience in diverse technologies including antibodies, cell therapies, gene therapies, diagnostics, and gene-edited plants. 

Meghan McLean Poon Ph.D.

Dr. Meghan Poon counsels clients on patent preparation and prosecution, portfolio strategy, and IP due diligence in the areas of biotechnology and biologics. She has significant experience in diverse technologies including antibodies, cell therapies, gene therapies, diagnostics, and gene-edited plants.

Meghan Poon

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Sawing Through Patent Term—the Federal Circuit’s Recent Decision In Sawstop

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Patent Term Adjustment (PTA) is additional patent term for U.S. patents to compensate for delay in issuance.