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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Federal Circuitry

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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Brings together legal insights and in-depth analyses on trends and complex issues shaping the global technology industry.

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Federal Circuitry is a data-driven Federal Circuit blog, covering federal circuit statistics, pending & past petitions, order tracking, and more.

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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

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.

Federal Circuit Insights

Usually in American courts, parties get one chance to litigate a single legal claim. Courts enforce that principle in a variety of ways – at the back end, through rules like claim and issue preclusion; and at the front end, through rules like the duplicative-litigation doctrine. This week’s case of the week looks at that front-end enforcement.Case of the (recent) week: <a href="https://cafc.uscourts.gov/opinions-orders/21-1967.OPINION.9-7-2022_2000513.pdf" target="_blank">Arendi S.A.R.L. v. LG Electronics Inc.</a>, No. 21-1967Panel: Judges Prost, Chen, and Stoll, with Judge Post writing the opinionYou should read this case if: you have a case potentially implicating the duplicative-litigation doctrineArendi sued LG (among others) in the District of Delaware for allegedly infringing several patents. Delaware’s local rules required Arendi to produce a claim chart “relating each accused product to the asserted claims each product allegedly infringes.” Although Arendi’s infringement allegations involved hundreds of LG products, it produced a chart for only one LG product labeled as “exemplary.” As litigation proceeded, LG repeatedly warned Arendi that it believed Arendi’s chart failed to comply with local rules. When Arendi later served an expert report that made specific allegations about more than the single product identified in the chart, LG succeeded in having the district court strike the relevant portions of Arendi’s expert report. Arendi then filed a second complaint against LG based on the same products and one of the same patents. The district court granted LG’s motion to dismiss that complaint as duplicative, and Arendi appealed the dismissal.The Federal Circuit affirmed. It applied Third Circuit law to the issue of a district court’s power to administer its docket, including to conserve resources by preventing duplicative litigation. The Court explained that the Third Circuit applies the duplicative-litigation doctrine when two separate actions involve “the same subject matter at the same time in the same court against the same defendant.” Whether patent actions involve the same subject matter may depend on (1) “the overlap of the products accused” in the two actions; and (2) “the overlap of the patents in both suits.” Arendi conceded that it had asserted the same patents in both suits. And the Court rejected Arendi’s argument that there was no overlap in accused products. Arendi’s infringement disclosures in the first action identified the same products accused in the second action. Arendi also served interrogatories and received discovery related to those products in the first action. Although the district court had granted LG’s motion to strike portions of Arendi’s expert report addressing those products, that grant was not because those products had not been accused in the first action. Rather, the grant was because “Arendi had failed to fulfill its discovery obligations with respect to those products.” Although the Federal Circuit affirmed the dismissal of Arendi’s second complaint as duplicative, the Court noted that the fight may not be over entirely. Arendi still had the option of renewing a motion to supplement its chart in the first action. The Court left it to the district court to decide any such request, with the outcome of course potentially appealable to the Federal Circuit following final judgment in that action.OTHER WEEKLY STATSPrecedential opinions: 5Non-precedential opinions: 10Rule 36: 2Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1355.OPINION.9-8-2022_2001054.pdf" target="_blank">Apple Inc. v. MPH Technologies Oy</a>, Nos. 21-1355, 21-1356 (275 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1967.OPINION.9-7-2022_2000513.pdf" target="_blank">Arendi S.A.R.L. v. LG Electronics Inc</a>., No. 21-1967 (37 days)

Last Week In The Federal Circuit (September 6 – September 9): Repeating Litigation, Again

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

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Last Week In The Federal Circuit (September 6 – September 9): Repeating Litigation, Again

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Usually in American courts, parties get one chance to litigate a single legal claim. Courts enforce that principle in a variety of ways – at the back end, through rules like claim and issue preclusion; and at the front end, through rules like the duplicative-litigation doctrine. This week’s case of the week looks at that front-end enforcement.

Last Week in the Federal Circuit

Early last year we took a look at how often Federal Circuit judges sit (see <a href="https://federalcircuitry.mofo.com/topics/how-often-do-federal-circuit-judges-sit" target="_blank">blog post</a>). A lot has happened since then, including two new judges joining the court. Below is an updated chart showing data through the August 2022 sitting:<div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/blt2f73accd1d1516a1/6320a3c06a7f7364973bd0d3/220913-federal-circuitry-blog-graph.jpg?format=auto&amp;quality=60" alt="federal circuitry blog graph"/></div>As a reminder, the chart above shows how many different panel days each judge heard argument across each calendar year (and the first eight months of 2022). We excluded panels convened to hear only one case. That can happen, for example, because of a rare argument on a motion or for plus panels, where one judge of a main panel is replaced for a single case (perhaps because of conflicts or when a case comes back on appeal after a remand).As we noted last year, the data confirm what we often hear – the judges decide many cases a year. But the data also confirm something many regular Federal Circuit practitioners have probably noticed—the number of sittings seems to have dipped in the past year or so. For example, although our data already show the number of sittings for two-thirds of 2022, only Judge Reyna has even passed half the number of sittings this year that he sat last year. Although the data don’t show the reason for this dip, one explanation is that this is a delayed dip from pauses in litigation when the COVID-19 pandemic first hit in 2020.Looking at specific judges, Judge Prost again topped the list for most sittings in 2021, followed by Judge Taranto and then a tie between Chief Judge Moore and Judge Dyk. So far in 2022, Judge Reyna leads all judges. The raw numbers thus suggest you’re more likely to see one of these judges on argument morning.The data also give some details about which senior judges you might find yourself in front of. Judge Clevenger continued to sit the most full panel days of any senior judge in 2021, although he’s been sitting with less frequency so far in 2022. This year, Judges Bryson, Schall, and Mayer have been the most likely senior judges to appear on an argument panel. Judge Plager has not yet sat this year. And Judge Wallach seems to be fully embracing his semi-retired status, having sat just once so far.Check back soon for a follow-up post looking at monthly trends of when judges sit.

How Often Do Federal Circuit Judges Sit 2022?

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How Often Do Federal Circuit Judges Sit 2022?

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Early last year we took a look at how often Federal Circuit judges sit (see blog post). A lot has happened since then, including two new judges joining the court. Below is an updated chart showing data through the August 2022 sitting:

Have you ever wondered what it means when your smartphone or tablet connects to an “LTE” network? Our case of the week dives into that technology—and offers an interesting discussion of functional claim limitations and standard-essential patents.Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/20-1903.OPINION.8-31-2022_1997811.pdf">INVT SPE LLC v. ITC</a>, No. 20-1903Panel: Judges Newman, Taranto, and Chen, with Judge Chen writing the opinionYou should read this case if: you have a matter involving an allegedly standard-essential patent or a dispute about whether a claim requires capability or actual operationINVT owns a patent on a wireless communication system that uses certain coding parameters to improve the quality and speed of data transmission. Broadly speaking, a user device selects coding parameters and transmits them to a base station; the base station transmits a signal to the user device that has been encoded using the parameters chosen by the user device; and the user device decodes the signal using those parameters.INVT brought a complaint at the International Trade Commission against manufacturers of mobile devices that use the LTE (short for “Long-Term Evolution”) wireless communication standard. INVT alleged that the accused devices infringe its patent because the asserted claims are standard-essential, i.e., necessary to practice the LTE standard.The ITC’s administrative law judge found non-infringement based on INVT’s failure to prove that the claims were essential to the LTE standard. In the LTE standard, the user device chooses from only 16 possible parameter combinations, while the base station can select from nearly 3,000 potential combinations. The ALJ found that INVT had presented no evidence that the base station necessarily chooses the same parameters as the user device in systems operating under the LTE standard. The ALJ rejected INVT’s argument that the claims required only that the user device “has the capability to receive data” encoded using the user device’s selected parameters. Based on the claim language—a component “that receives a signal” containing certain data—the ALJ construed the claims as drawn to how an accused device actually operates, not just its capabilities.The Federal Circuit disagreed with the agency’s claim construction but affirmed the ultimate non-infringement finding. The Court surveyed its prior cases distinguishing between two types of apparatus claims: those that “require an infringing device to actually perform and operate according to” the recited function, on one hand, and those where the accused device need only be “capable of operating” in a way that meets the claimed function. Which side of the line a given claim falls on “depends on the claim language.” But the Court stressed that claims need not “adhere to a specific grammatical form” (such as “for performing”) to be drawn to capability.In particular, the Court noted, “computer and software claims typically use functional language to define the invention.” After all, “the recited operative steps” are what differentiates the claimed invention from generic, general-purpose computer hardware. The Court thus has “frequently construed such functional language as not requiring actual performance of those operative steps for infringement purposes.” Consistent with that principle, the Court held that INVT’s asserted claims were directed to capability rather than actual operation—even though they used the present-tense “that receives” rather than language such as “for receiving.”Nonetheless, the Court went on to conclude that INVT had “not shown infringement, even though the claims are drawn to capability.” A device infringes capability-type claims if it is “reasonably capable of performing the claimed functions without significant alterations.” But in “contexts involving software functionality,” the Court stressed, “proof of reasonable capability of performing claimed functions” generally requires “proof that an accused product—when put into operation—in fact executes all of the claimed functions at least some of the time or at least once in the claim-required environment.”Under that test, INVT’s standard-essential infringement theory failed. The Court noted that INVT had produced no evidence that under the LTE standard, “the base station in fact ever sends the user device a data signal that is modulated and encoded using parameters that the user device decided.” For instance, there was no evidence that the base station’s algorithm for choosing a coding parameter could result in the same parameter that the user device had selected. Thus, INVT failed to prove that LTE-compliant devices necessarily have the claimed capability.For similar reasons, the Court held that INVT had not proven infringement under a standard analysis comparing the claims to the accused products. Although the claims themselves recited only the user device, the Court explained, infringement also depended on the base station’s operation. In particular, infringement turned on whether the base station ever sends a signal encoded using the parameters originally chosen by the user device. But INVT’s expert had not even reviewed the “source code governing the operation of the base station’s communication with an accused device.”Finally, the Court observed that the Chenery principle did not preclude it from affirming the agency’s decision despite adopting a different claim construction. Under that administrative-law doctrine, courts generally can only uphold an agency’s decision based on the rationale that the agency actually provided. But the Court explained that the ALJ’s factual findings about the base station’s operation established non-infringement as a matter of law even under the correct claim construction. The Court’s decision thus did not “improperly remove [any] discretionary judgment from the agency to the court.”OTHER WEEKLY STATSPrecedential opinions: 3Non-precedential opinions: 2Rule 36: 0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-1903.OPINION.8-31-2022_1997811.pdf">INVT SPE LLC v. ITC</a>, No. 20-1903 (303 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1903.OPINION.9-1-2022_1998447.pdf">Nike, Inc. v. Adidas AG</a>, No. 21-1903 (31 days)

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Last Week In The Federal Circuit (August 29 – September 2): Capability Claims in the Modern Era

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Have you ever wondered what it means when your smartphone or tablet connects to an “LTE” network? Our case of the week dives into that technology—and offers an interesting discussion of functional claim limitations and standard-essential patents.

Last Week In The Federal Circuit (August 29 – September 2): Capability Claims in the Modern Era

Those that regularly practice before the Court know about Rule 36s. We’ve written about them before. It’s a one-line per curiam decision that generally comes a few days after oral argument:AFFIRMED. See Fed. Cir. R. 36.This post isn’t going to say anything about the merits of Rule 36s. That’s been well discussed many other places. One thing, of course, critics of the practice should keep in mind is how much they like their oral arguments. In many respects, Rule 36s go hand-in-hand with the Court’s practice to hold argument in every case represented by counsel. And with only a few primarily pandemic related exceptions where the Court cancelled a telephonic argument (see post <a href="https://federalcircuitry.mofo.com/topics/Revisiting-Cancelled-Oral-Arguments">here</a>), the Court will issue an opinion when there is no argument. As someone who practices before the Court, this makes sense. You only generally have a sense (maybe strong emphasis on generally) of how judges are thinking about your case when there’s an oral argument, and it’s hard to predict the outcome. But if you’re listening and answering the questions (as you should), you might get the gist of what some judges are homing in on. By contrast, in cases without argument, the opinion speaks for itself.The other positive (or negative, I suppose, depending if you’re on the losing side) is that a Rule 36 comes quickly. In our statistics, Rule 36s come about 6 days after oral argument. That’s incredibly fast, as it means you usually get a decision the week after oral argument when there’s a Rule 36. Usually, when there’s no Rule 36, that means good things for the appellant. Your odds of prevailing significantly increase once you get beyond that Rule 36 period (see our posts <a href="https://federalcircuitry.mofo.com/topics/WHO-WINS-WHO-LOSES--STILL-WORSE-TO-BE-THE-PATENT-OWNER-ON-APPEAL">here</a> and <a href="https://federalcircuitry.mofo.com/topics/Its-Two-Weeks-After-Your-Argument-And-Youve-Heard-Nothing--What-Does-That-Mean">here</a>).This post, however, is one of those don’t count your chickens before they hatch cautionary tales. While you might think you’re always going to get an opinion—be it precedential or nonprecedential—once you’re a few weeks out from oral argument, that’s not 100% the case. Over the past few years we’ve been tracking the Court’s decisions, there have been some anomalies. In fact, we’ve found three Rule 36s that came pretty long after oral argument, where the Rule 36 might have been a surprise to the parties when it happened:<ul><li>Mass Engineered Design, Inc. v. Planar Systems, Inc. (No. 19-1365), 75 days (Judges Lourie, Dyk, Stoll)</li><li>Spigen Korea Co., Ltd. v. iSpeaker Co., Ltd. (No. 19-1292), 137 days (Judges Newman, Lourie, Reyna)</li><li>Biogen, Inc. v. Iancu (No. 19-1364), 376 days (Judges Newman, Moore (before she was Chief Judge), Chen)</li></ul>There’s no way to know why these appeals took so long to Rule 36. Listening to the arguments perhaps suggests that the Court hadn’t yet made up its mind in two of the cases. In Mass Engineered Design (75 days) and Biogen (376 days), the Court did press the appellees on some issues, strongly so in one of the appeals. So as a matter of pure speculation, it could have been a situation where the Court wanted to investigate the issues more only to conclude that there was nothing really to write about. But in the third appeal (Spigen), the Court asked very few questions—and those questions seemed to press the appellant for answers. So it seems impossible to even guess why that appeal took 137 days to Rule 36. Perhaps the only conclusion that can be drawn from these cases is that, even when it has been months from oral argument, there’s still always that chance that your appeal might be Rule 36’d.

Is It Ever Too Late To Be Rule 36’d?

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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Is It Ever Too Late To Be Rule 36’d?

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Those that regularly practice before the Court know about Rule 36s. We’ve written about them before. It’s a one-line per curiam decision that generally comes a few days after oral argument:

Those that regularly practice before the Court know about Rule 36s. We’ve written about them before. It’s a one-line per curiam decision that generally comes a few days after oral argument:Those that regularly practice before the Court know about Rule 36s. We’ve written about them before. It’s a one-line per curiam decision that generally comes a few days after oral argument:

If you don’t appeal an issue from an adverse judgment, are you going to be bound by the decision on that issue in future cases? This can often be an important question to consider when deciding whether and what issues to appeal. But sometimes, the chance to appeal to avoid any possible issue preclusive effect has already passed because of earlier events, as this week’s case of the week illustrates.Case of the (recent) week: <a href="https://cafc.uscourts.gov/opinions-orders/21-2099.OPINION.8-29-2022_1996526.pdf">Best Medical International, Inc. v. Elekta Inc.</a>, No. 21-2099Panel: Judges Hughes, Linn, and Stoll, with Judge Stoll writing the opinionYou should read this case if: you have a matter involving issue preclusionParallel proceedings on the same patent have been commonplace since Congress adopted the America Invents Act more than a decade ago. In this week’s case, those parallel proceedings were both before the Patent Office—patent owner Best Medical faced simultaneous challenges to its cancer radiation treatment patent in an ex parte reexamination and multiple inter partes reviews. The examiner in the reexam rejected claim 1 of the patent for statutory and obviousness-type double patenting. Best Medical responded by canceling claim 1, although instead of filing a statutory disclaimer Best Medical merely chose not to respond to the substance of the examiner’s rejection. After the examiner’s rejection, the Board in the IPRs also addressed claim 1’s patentability. The Board thought that was the proper course because the reexam cancellation of claim 1 was not yet completely final. And on the merits, the Board found that claim 1 was unpatentable for obviousness. It entered a final written decision cancelling that and several other challenged claims.On appeal, the Federal Circuit rejected Best Medical’s argument that the Board had no authority to address claim 1 after the examiner’s rejection in the reexam. Because Best Medical had not filed a statutory disclaimer, the Federal Circuit agreed that the reexam cancellation of claim 1 was not yet final at the time the Board entered its final written decision. Indeed, because of that non-finality, the Federal Circuit reasoned that the Board was obligated to address claim 1 in its final written decision—the Supreme Court’s decision in SAS required the Board to “address every claim the petitioner has challenged” and that was still pending at the time of the Board’s decision.The Federal Circuit also rejected Best Medical’s request to vacate the Board’s decision on claim 1 under the Supreme Court’s decision in United States v. Munsingwear, Inc. Under Munsingwear, appellate courts may vacate decisions that become moot while a case is pending on appeal so that the relevant issues can be preserved for “future litigation.” The Federal Circuit held that Munsingwear was inapplicable because claim 1 was finally cancelled before Best Medical filed its notice of appeal. After the IPR decision but before filing a notice of appeal, Best Medical had appealed the examiner’s rejections in the reexam to the Board but had not appealed the rejection of claim 1, making claim 1’s cancellation final. Because the cancellation of claim 1 became final before Best Medical filed its notice of appeal, “there was no case or controversy regarding claim 1’s patentability at th[e] time” the notice was filed. Best Medical thus lacked standing to appeal to the Federal Circuit on claim 1 or ask for vacatur in the first instance. The Federal Circuit disagreed that a case or controversy existed because the IPR decision on claim 1 could have issue preclusive effects in future litigation. Best Medical pointed to another reexam involving a related patent in which the examiner had stated it was “essentially bound by the Board’s reasoning” in the IPR for certain obviousness issues related to claim 1. The Federal Circuit reasoned that Best Medical would be free to appeal those issues in that other reexam—“we know of no cases that would apply collateral estoppel in these circumstances” involving “non-appealable issues and judgments.” And even were that not so, the Court explained that “the potential for collateral consequences is insufficient, on its own, to confer standing” to appeal.OTHER WEEKLY STATSPrecedential opinions: 2Non-precedential opinions: 2Rule 36: 1Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2099.OPINION.8-29-2022_1996526.pdf">Best Medical International, Inc. v. Elekta Inc.</a>, No. 21-2099 (112 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2113.OPINION.8-23-2022_1994643.pdf">In re: Killian</a>, No. 21-2113 (110 days)

Last Week In The Federal Circuit (August 22 – August 26): To Appeal Or Not To Appeal, That Is The Question

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Last Week In The Federal Circuit (August 22 – August 26): To Appeal Or Not To Appeal, That Is The Question

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If you don’t appeal an issue from an adverse judgment, are you going to be bound by the decision on that issue in future cases? This can often be an important question to consider when deciding whether and what issues to appeal. 

We’re now in the waning days of summer, and the Court’s activity last week somewhat reflected that: two decisions and a few orders. One of those orders was for something you don’t see often: an appeal being dismissed for an appellant missing the deadline to file its opening brief by 11 days. So fair warning: an appellant that doesn’t file an opening brief may have its appeal dismissed. But rather than write about that one-line order, we’re going to discuss instead a case about numbers. Below we provide our usual weekly statistics and a detailed discussion of our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 2Non-precedential opinions: 0Rule 36: 0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/22-1016.OPINION.8-17-2022_1992553.pdf">Click-to-Call Technologies, LP v. Ingenio, Inc</a>., No. 22-1016 (69 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2342.OPINION.8-18-2022_1993064.pdf">Par Pharmaceutical, Inc. v. Eagle Pharmaceuticals, Inc</a>., No. 21-2342 (42 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/21-2342.OPINION.8-18-2022_1993064.pdf">Par Pharmaceutical, Inc. v. Eagle Pharmaceuticals, Inc</a>., No. 21-2342Panel: Chief Judge Moore and Judges Prost and Hughes, with Chief Judge Moore writing the opinionYou should read this case if: you have an ANDA case involving “actual, real-world evidence” that might conflict with what the ANDA saysFor our case of the week, we turn to the ANDA world. As readers know and in the simplest of terms, an ANDA is an Abbreviated New Drug Application, which a generic drug manufacturer (which we’ll off-and-on refer to as the ANDA applicant) files with the FDA to seek approval to sell a generic version of a brand name drug. Before the generic goes on the market, the brand manufacturer can file an action to enjoin the generic from reaching the market. Ordinarily, it does so under Section 271(e)(2), which makes it an (artificial) act of infringement for an ANDA applicant to file an ANDA that infringes the brand manufacturer’s patent claims. Section 271(e)(2) requires comparing the patent claims to the ANDA’s specification—as the proposed generic product must meet the ANDA’s specifications.Here the dispute concerned only one claim requirement—the product’s pH range. If the product specified in the ANDA practiced the claimed pH range, then it infringed. So did it? Nope. The claims specified a pH between 3.7-3.9 (or 3.65-3.94 before rounding). The ANDA specified a pH range of 3.4-3.6 (or 3.35-3.65 before rounding). So close, but of course close only counts in horseshoes and hand grenades—not literal infringement.On appeal, the patent owner argued that the real-world evidence showed that the pH of the generic manufacturer’s product would drift upward during the product’s shelf life. And it noted that the generic sought approval to release a product at 3.64 pH, just 0.01 below the patent owner’s claims—the implication being the product released at 3.64 pH would inevitably drift to 3.65 pH or higher and thereby infringe the claims. While a not completely unappealing argument (double negative intentional), the Court noted a key problem. The patent owner was looking at the ANDA’s pH range in isolation. In addition to a pH specification, the ANDA also had a stability specification. Taken together, both “restrict the pH of the proposed product to a pH range between 3.4-3.6 at release and throughout the product’s shelf life—outside the infringing range.” And to remove any doubt, the Court cited the oral argument where the ANDA applicant’s counsel acknowledged that the ANDA product must “have a pH between 3.4-3.6 throughout its shelf life, not just at release.” Thus, to the extent there was real world evidence of pH drift, that evidence didn’t matter under the Section 271(e)(2) analysis here.In addition to alleging infringement under Section 271(e)(2), the patent owner also sought a declaratory judgment that the generic would infringe in the future, because of the pH drift. But essentially the same findings that thwarted the patent owner’s case under Section 271(e)(2) thwarted its attempt to get declaratory relief. The Court said there could be no real threat that the generic was going to infringe the patents (with upward pH drift) when the ANDA stated that the proposed product must meet both the pH and stability requirements. In addition, the Court noted that the real‑world evidence didn’t support the upward drift anyway. It noted that the district court made no clear error in several findings that there was no upward drift along the lines the patent owner was talking about.

Last Week In The Federal Circuit (August 15 – August 19): The Court Rebuffs Patent Owner’s Attempt To Read ANDA Application In Isolation

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Last Week In The Federal Circuit (August 15 – August 19): The Court Rebuffs Patent Owner’s Attempt To Read ANDA Application In Isolation

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We’re now in the waning days of summer, and the Court’s activity last week somewhat reflected that: two decisions and a few orders. 

We’ve previously <a href="https://federalcircuitry.mofo.com/topics/return-to-sender-when-courts-of-appeals-disagree-on-which-one-has-jurisdiction">written</a> about Chandler v. Phoenix Services, L.L.C., an interesting case on the Federal Circuit’s exclusive appellate jurisdiction in patent cases. Earlier this week, the Fifth Circuit issued a decision marking the latest entry in that saga.A quick recap of the relevant background: a Walker Process claim is an antitrust claim alleging enforcement of a fraudulently obtained patent. In an earlier case, Xitronix Corporation v. KLA-Tencor Corporation, the Federal Circuit and the Fifth Circuit disagreed about which court had appellate jurisdiction over Walker Process claims. The Federal Circuit held that the Walker Process claim there arose under antitrust law rather than patent law, and thus transferred the appeal to the Fifth Circuit. But the Fifth Circuit sent the appeal back to the Federal Circuit, reasoning that the Federal Circuit had exclusive jurisdiction because the antitrust claim depended in part on a patent-law issue—whether the relevant patent was enforceable. After receiving the case back from the Fifth Circuit, the Federal Circuit reiterated its disagreement with the Fifth Circuit’s reasoning. Nevertheless, the Federal Circuit accepted jurisdiction over the appeal, deeming the Fifth Circuit’s conclusion “not implausible.”A similar jurisdictional question arose in Chandler. That case, like Xitronix, involved a Walker Process claim in a district court within the Fifth Circuit. The Chandler plaintiffs appealed to the Federal Circuit.  But the Federal Circuit stuck to the position laid out in its first (and precedential) Xitronix decision, concluded that it lacked appellate jurisdiction, and transferred the appeal to the Fifth Circuit.The Fifth Circuit has now issued its decision in Chandler, accepting the transfer from the Federal Circuit. The Fifth Circuit stressed that “[t]he Walker Process claim here differs from the one in Xitronix in an important respect”: the patent at issue already had been declared unenforceable in another proceeding, leaving no live patent-law issues to be decided. The Fifth Circuit thus deemed the Federal Circuit’s jurisdictional conclusion “plausible.” But the Fifth Circuit continued: “That does not mean, we hasten to add, that it is correct.” The Fifth Circuit read its Xitronix decision to mean that all standalone Walker Process claims belong in the Federal Circuit, even those that do not turn on any unresolved patent issues. Nonetheless, the Fifth Circuit accepted the case to avoid “a perpetual game of jurisdictional ping-pong.” The Fifth Circuit went on to address the merits of the antitrust claim, affirming the judgment for the defendants.The Chandler plaintiffs could seek further review of the jurisdictional issue in the Supreme Court. And ordinarily, an express circuit split like the Federal and Fifth Circuits’ disagreement here might make a good candidate for Supreme Court intervention. But the Supreme Court denied certiorari in Xitronix, which raised much the same issue as Chandler. That said, the Court’s composition has changed since it denied review in Xitronix in October 2019—Justices Barrett and Jackson have replaced Justices Ginsburg and Breyer. If the Chandler plaintiffs do file a cert petition, it will be interesting to see whether the two new Justices lead to a different outcome.

Jurisdictional Ping-Pong Averted

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We’ve previously written about Chandler v. Phoenix Services, L.L.C., an interesting case on the Federal Circuit’s exclusive appellate jurisdiction in patent cases. Earlier this week, the Fifth Circuit issued a decision marking the latest entry in that saga.

For most of us, we’re stuck in the August heat, on delayed European vacations, or hopefully just hanging out at the beach. But for the Court it still was work as usual, including a return trip to the Federal Circuit for the defendant in Minerva. Below we provide our usual weekly statistics and a detailed discussion of our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 7Non-precedential opinions: 7Rule 36: 1Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1697.OPINION.8-10-2022_1990029.pdf">In re: McDonald</a>, No. 21-1697 (153 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2163.OPINION.8-9-2022_1989542.pdf">Hirsch v. US</a>, No. 21-2163 (34 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/19-2054.OPINION.8-11-2022_1990706.pdf">Hologic, Inc. v. Minerva Surgical, Inc.</a>, No. 19-2054Panel: Judges Stoll, Clevenger, and Wallach, with Judge Stoll writing the opinionYou should read this case if: you want to know how the Federal Circuit will treat assignor estoppel post-MinervaYou have to feel a little sorry for a party that beats the incredible odds of getting Supreme Court review only to end up with the same result. That’s what happened in our case of the week.Unless you’ve been living under a rock (or the proverbial equivalent of a rock in patent-land—the MPEP maybe), you’re no doubt aware of one of the few relatively recent Supreme Court patent cases: <div><a href="https://www.supremecourt.gov/opinions/20pdf/20-440_9ol1.pdf">Minerva Surgical, Inc. v. Hologic, Inc. </a>(And once again, here’s where a few readers shed a tear for what could have been in American Axle.) As a recap, the Supreme Court granted cert to decide whether the doctrine of assignor estoppel found any support in patent law. Assignor estoppel precludes an assignor of a patent from later challenging that patent’s validity. At least initially, smart money was on the “no” side, as nothing in the U.S. Code expressly provides for assignor estoppel, and this is supposedly a textualist Supreme Court.</div>But this is one of those cases where Vegas got burned. Assignor estoppel survived. The reason why: at least in patent-land, the Supreme Court likes to follow its precedent—especially really old precedent. (Because what makes more sense when talking about innovation and new technology than looking back to really old cases—like purported inventions of using flowing water to clean manure in barns, right?) The doctrine of assignor estoppel had that in spades. Not only was there century old precedent from the Supreme Court, but there were even cases from the other side of the Atlantic—all providing support for assignor estoppel. The Supreme Court held that the doctrine was designed to prevent an inventor from first selling a patent and then contending that the thing sold is worthless. Of course, it wasn’t all great for the doctrine; the Supreme Court said the Federal Circuit took the doctrine too far. Assignor estoppel could be no broader than whatever explicit or implicit representations the assignor made about the patent’s validity. It then left it up to the Federal Circuit to address the doctrine’s application on remand.So on remand the Federal Circuit did just that. Here, the challenged asserted claim traced back, through a series of continuation and divisional applications, to an application that had been assigned. The Court addressed whether that asserted claim was materially broader than the claims that had been assigned. After all, if the later-issued asserted claim was broader than the assigned ones, the assignor could not have warranted as to the broader claim’s validity.What seems like a relatively straightforward claim construction issue—is one claim (the asserted one) basically no broader than another (the assigned ones)—was complicated by the fact that the broadest (at least for our purposes) assigned claim (claim 31) had been cancelled prior to the assignment. That led to the metaphysical question of whether an assignor could vouch for the validity of a claim that had been cancelled. At least on these facts, the answer was yes. Without getting into too much nitty gritty, the basic issue was that the examiner decided to reject the application as improperly claiming two distinct inventions, so the applicant elected to prosecute the claims of one invention but not the other. But in not prosecuting the other invention (including claim 31) the applicant requested that the examiner cancel those claims “without prejudice.” Given that history as a whole, the Court said that the cancellation “says nothing, implicitly or explicitly, about the patentability of claim 31.” The applicant remained free to prosecute claim 31 in a divisional application, and that right travelled with the assignment. As such, even though claim 31 had been cancelled, the assignor still could—and here did—represent that the subject matter of the claim was not invalid. (Lest anyone assume this means that any assigned cancelled claim could be represented as not invalid, the Court made clear in a footnote that its holding was “limited to the facts of this case.”)Having determined that the assignor had warranted to the validity of the cancelled claim, the Court then determined whether the asserted claim was materially broader than the assigned ones. That issue, the Court explained, was a question of claim construction. And applying those principles, it concluded that the asserted and assigned claims were not materially different in breadth. With that, the Court once again affirmed the district court’s assignor estoppel decision—leaving the defendant where it began on its journey through the federal appellate process.

Last Week In The Federal Circuit (August 8 – August 12): Taking A Round Trip On The Assignor Estoppel Express

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Last Week In The Federal Circuit (August 8 – August 12): Taking A Round Trip On The Assignor Estoppel Express

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For most of us, we’re stuck in the August heat, on delayed European vacations, or hopefully just hanging out at the beach. 

From facial-recognition technology to voice assistants and self-driving cars, artificial intelligence these days is pretty remarkable. But according to our latest case of the week, there’s at least one thing AI can’t do: be listed as an inventor on a patent application.Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/21-2347.OPINION.8-5-2022_1988142.pdf">Thaler v. Vidal</a>, No. 21-2347Panel: Chief Judge Moore and Judges Taranto and Stark, with Judge Stark writing the opinionYou should read this case if: you have a matter involving whether AI can qualify as an inventorOur case of the week centers on an AI system called DABUS, which is short for “Device for the Autonomous Bootstrapping of Unified Science.” Stephen Thaler created DABUS to generate patentable inventions. Thaler filed patent applications for two of DABUS’s putative inventions (a “Neural Flame” and a “Fractal Container”). Both applications listed DABUS as the sole inventor.The Patent and Trademark Office deemed the applications incomplete because they lacked a valid inventor. Thaler then filed suit against the Patent Office in federal district court, seeking judicial review of the Patent Office’s decision under the Administrative Procedure Act. The district court granted summary judgment for the Patent Office, concluding that an “inventor” under the Patent Act must be a natural person.The Federal Circuit affirmed. Its analysis “beg[an] and end[ed]” with the relevant statutory text. The Patent Act defines an “inventor” as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” 35 U.S.C. § 100(f) (emphases added). Another section, describing the inventor’s oath or declaration that must be submitted with a patent application, consistently refers to the inventor as an “individual.” Id. § 115.The Court noted that the Patent Act does not define “individual.” But it explained that the term “ordinarily means a human being,” relying on dictionary definitions and a Supreme Court decision interpreting “individual” in another statute. And nothing in the Patent Act suggested that Congress intended to deviate from that “default” meaning. To the contrary, the Patent Act uses “himself” and “herself”—but not “itself”—to refer to an “individual.” Id. § 115(b)(2). Because the Court found the statutory text unambiguous, it saw “no need to consider additional tools of statutory construction” such as agency-deference doctrines.The Court rejected Thaler’s counter-arguments. For instance, Thaler invoked Section 101 of the Patent Act, which provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter . . . may obtain a patent therefor.” Id. § 101 (emphasis added). But that provision is followed by a qualification—“subject to the conditions and requirements of this title [the Patent Act]”—and one such condition is the statutory definition of “inventor” as limited to “individuals.”Thaler also contended that “inventions generated by AI should be patentable in order to encourage innovation and public disclosure.” According to the Court, however, this “policy argument[]” could not overcome the unambiguous statutory text. And it clarified that it was not deciding “whether inventions made by human beings with the assistance of AI are eligible for patent protection.” Further, the Court observed that South Africa’s patent office has granted patents with DABUS listed as an inventor. But that “foreign patent office was not interpreting our Patent Act.”A final note: this decision was Judge Stark’s first precedential opinion as a full-fledged member of the Federal Circuit. (He wrote a non-precedential trademark <a href="https://cafc.uscourts.gov/opinions-orders/22-1178.OPINION.6-10-2022_1963640.pdf">decision</a> in June, and he authored a precedential Section 101 eligibility <a href="https://cafc.uscourts.gov/opinions-orders/15-1415.opinion.1-15-2016.1.pdf">decision</a> in 2016 as a district judge sitting by designation on the Federal Circuit.) The opinion was concise and hewed closely to the statutory text; it will be interesting to see whether that approach continues in his future decisions.OTHER WEEKLY STATSPrecedential opinions: 2Non-precedential opinions: 7Rule 36: 2Longest pending case from argument: <div><a href="https://cafc.uscourts.gov/opinions-orders/21-1988.OPINION.8-2-2022_1986100.pdf">Vicentin S.A.I.C. v. United States</a>, No. 21-1988 (144 days)</div>Shortest (non-Rule 36) pending case from argument: <div><a href="https://cafc.uscourts.gov/opinions-orders/21-2222.OPINION.8-3-2022_1986778.pdf">A. O. Smith Corporation v. Bradford White Corporation</a>, No. 21-2222 (56 days)</div>

Last Week In The Federal Circuit (August 1-5): An (Artificially) Intelligent Decision On Inventorship

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Last Week In The Federal Circuit (August 1-5): An (Artificially) Intelligent Decision On Inventorship

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From facial-recognition technology to voice assistants and self-driving cars, artificial intelligence these days is pretty remarkable. But according to our latest case of the week, there’s at least one thing AI can’t do: be listed as an inventor on a patent application.