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

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

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Partner

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

Brian Matsui

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

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

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

Seth Lloyd

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

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

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

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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

It’s officially the start of summer, but the Federal Circuit is still hard at work:  last week the Court issued a few precedential opinions, several non-precedential decisions, and a handful of affirmances without opinion from the Court’s June argument sitting.  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:  6Rule 36:  5Longest pending case from argument:<a href="https://cafc.uscourts.gov/opinions-orders/20-2086.OPINION.6-17-2022_1966591.pdf">Military-Veterans Advocacy Inc. v. Secretary of Veterans Affairs</a>, No. 20-2086 (190 days)Shortest (non-Rule 36) pending case from argument:<a href="https://cafc.uscourts.gov/opinions-orders/21-2281.OPINION.6-15-2022_1965429.pdf">Shelter Forest International Acquisition, Inc. v. United States</a>, No. 21-2281 (41 days)Case of the week:<a href="https://cafc.uscourts.gov/opinions-orders/21-1969.OPINION.6-13-2022_1964183.pdf">University of Massachusetts v. L’Oreal S.A.</a>, No. 21-1969Panel:  Judges Prost, Mayer, and Taranto, with Judge Taranto writing the opinionYou should read this case if:  you have a matter involving claim construction (particularly drug concentrations) or personal jurisdictionIf you’ve been waiting for a Federal Circuit opinion combining your interest in patent law with your skin-care routine, our case of the week this week is for you.  The University of Massachusetts (UMass) owns patents on methods for treating skin by topically applying compositions containing a compound called adenosine.  As relevant here, the asserted claims required “topically applying to the skin a composition comprising a concentration of adenosine . . . wherein the adenosine concentration applied to the dermal cells is 10-4 M [or 10-3 M] to 10-7 M.”  M is a unit of concentration referring to a number of particles (in moles) per unit of volume (in liters).UMass sued L’Oreal S.A. and its American subsidiary, L’Oreal USA, Inc., for alleged infringement of those patents.  The district court dismissed L’Oreal S.A. for lack of personal jurisdiction without permitting UMass to conduct jurisdictional discovery.  With the case proceeding against only L’Oreal USA, the district court construed the claimed concentration range to refer to the concentration of adenosine that permeates to the dermal cells beneath the skin’s surface.  The district court then held the asserted claims invalid as indefinite in part because, as construed by the court, the claims did not specify the required adenosine concentration in the composition topically applied to the skin.The Federal Circuit reversed the district court’s claim construction and vacated the invalidity judgment and personal-jurisdiction dismissal.  On claim construction, the Court held that the claimed concentration range refers to the adenosine concentration in the composition applied to the skin’s surface, not the concentration that reaches the dermal cells below the surface.  It began by noting that the claim language was “not plain on its face” because, among other reasons, the word “applied” could cover either direct application to the surface or indirect application to the sub-surface layer.The Court thus looked to the patents’ specifications and prosecution histories to resolve this ambiguity.  The specifications discussed several embodiments that described the adenosine concentration in the composition applied to the surface of the skin.  And the prosecution histories further supported the Federal Circuit’s construction.  In the original applications, the adenosine concentration range was found in a dependent claim.  That claim did not mention dermal cells and thus “seemingly referred only to adenosine concentrations applied to the skin.”  To overcome a prior-art rejection, the applicants imported the concentration requirement into the independent claim and added the reference to dermal cells.  Critically, however, the applicants suggested that the amendment did not change where the adenosine concentration was to be measured.  Because the claim construction was “an important premise of the indefiniteness determination,” the Court vacated the district court’s indefiniteness ruling and remanded for further proceedings.On personal jurisdiction, the Federal Circuit applied Third Circuit law, under which a court should permit jurisdictional discovery if the plaintiff “presents factual allegations that suggest . . . the possible existence of the requisite contacts.”  According to the Federal Circuit, UMass cleared that bar:  it had “made more than clearly frivolous, bare allegations that L’Oreal S.A. was subject to personal jurisdiction.”  For instance, UMass introduced evidence that L’Oreal S.A. may have researched and developed the addition of adenosine to skin-care products, and that L’Oreal S.A. may have licensed that technology to L’Oreal USA.  The Federal Circuit thus concluded that the district court should have permitted UMass to conduct jurisdictional discovery before deciding personal jurisdiction.

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Last Week In The Federal Circuit (June 13-17): A Concentration Claim Construction

Last Week In The Federal Circuit (June 13-17): A Concentration Claim Construction

06_21_skincare

It’s officially the start of summer, but the Federal Circuit is still hard at work:  last week the Court issued a few precedential opinions, several non-precede

Last Week in the Federal Circuit

With the Supreme Court’s October 2021 Term winding down, we thought we’d check in on the cases from the Federal Circuit where the Supreme Court called for the views of the Solicitor General on whether to grant review (often called CVSGs).  We’ve discussed the CVSG process in more detail in a <a href="https://federalcircuitry.mofo.com/topics/CVSG-in-American-Axle-and-Cases-in-General-What-Does-It-Mean-A-QA-With-Deanne-Maynard.html">previous</a> post.Starting with the biggest CVSG news:  last Tuesday the government filed its long-awaited <a href="https://www.supremecourt.gov/DocketPDF/20/20-891/226156/20220524150114156_20-891%20-%20American%20Axle%20CVSG.pdf">CVSG brief</a> in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, just over a year after the Court sought the government’s views.  That case involves patent claims covering an industrial manufacturing process.  The petitioner asked the Supreme Court to take up (1) whether those claims are patent-eligible under Section 101 and (2) whether patent eligibility is a question of law or fact.The government recommended that the Court grant review limited to the first question.  It noted that the Supreme Court’s existing Mayo/Alice patent-eligibility framework “has given rise to substantial uncertainty.”  And it contended that the Federal Circuit erred in holding the manufacturing-method claims in American Axle ineligible under Section 101.  The government stated that any consideration of the petition’s second, procedural question should await the Court’s clarification of the “substantive Section 101 standard.”The government’s recommendation doesn’t necessarily mean the Court will grant certiorari.  As our readers may <a href="https://federalcircuitry.mofo.com/topics/200714-supreme-court-review-sometimes-what-is-not-decided-matters-more-than-what-is.html">recall</a>, in early 2020 the Supreme Court denied certiorari in another Section 101 case, Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, despite the government’s suggestion that review was warranted.  But as a general matter, the Supreme Court usually grants review when the Solicitor General recommends it after a CVSG.  We’ll likely learn soon whether the Court will hear American Axle.  If it grants review, briefing will begin over the summer, and the case likely will be argued in the fall or winter.The government also recently filed its CVSG brief in Olaf Soot Design, LLC v. Daktronics, Inc., which we described in an <a href="https://federalcircuitry.mofo.com/topics/Federal-Circuitry-Jan-11-2022-A-CVSG-on-Claim-Construction-Procedures-and-Jury-Trial-Rights.html">earlier</a> post.  In that case, the Federal Circuit concluded that the district court erred in failing to resolve a claim-construction dispute before trial under O2 Micro International Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir. 2008).  The Federal Circuit then construed the relevant limitation itself and held that the defendant’s products did not infringe as a matter of law under the correct construction, thus overturning a jury verdict for the patentee.The patentee petitioned for certiorari, contending that the Federal Circuit’s decision violated its Seventh Amendment jury-trial rights.  The Supreme Court invited the government’s views, and the government filed its <a href="https://www.supremecourt.gov/DocketPDF/21/21-438/223091/20220511132603012_21-438%20Olaf%20Soot.pdf">CVSG brief</a> on May 11.  It recommended denying the petition, explaining that the Federal Circuit’s decision was consistent with the Supreme Court’s claim-construction precedents and general Seventh Amendment principles.  That recommendation makes Supreme Court review less likely, though the Court occasionally grants review even when the Solicitor General recommends a denial.  The patentee has since filed its <a href="https://www.supremecourt.gov/DocketPDF/21/21-438/226179/20220524161237886_21-438%20Supplemental%20Brief.pdf">supplemental brief</a> responding to the government’s arguments and contending that the Court should nonetheless grant certiorari.  But given the government’s contrary recommendation, the clarity of the Supreme Court’s claim-construction cases, and the Federal Circuit’s settled procedures for reviewing claim-construction issues after a jury verdict, Supreme Court review seems unlikely and unnecessary.  The Court’s decision on whether to grant review in Olaf Soot is expected by late June or early July.And even if the Court denies the Olaf Soot petition, a recent Federal Circuit decision may make it harder for litigants to prevail on claims of O2 Micro error.  In <a href="https://cafc.uscourts.gov/opinions-orders/21-1634.OPINION.5-20-2022_1954422.pdf">Kaufman v. Microsoft Corp.</a>, the Federal Circuit held that a defendant “failed to preserve its O2 Micro challenge” because it did not raise before trial the particular claim-scope issue it asserted on appeal, nor did it propose a specific construction that would resolve the issue.  Although the defendant had told the district court there was some general dispute about the claim term’s meaning, the Federal Circuit deemed that insufficient to preserve the O2 Micro argument for appeal.It’s worth noting that Kaufman issued nine days after the Olaf Soot CVSG brief, and the Olaf Soot petitioner cited Kaufman in its supplemental brief, contending that Kaufman is “inconsistent” with the Federal Circuit’s Olaf Soot decision.  But unlike in Kaufman, the parties in Olaf Soot did raise the relevant claim-construction dispute before trial, so the Supreme Court may not see any inconsistency warranting review.  And if anything, Kaufman likely underscores the government’s view that review is not needed for the O2 Micro issue.Finally, the Court has now denied review in PersonalWeb Technologies, LLC v. Patreon, Inc., another CVSGed case from the Federal Circuit.  That case involved the Kessler preclusion doctrine.  Under that doctrine, a final judgment that certain products do not infringe a patent precludes later infringement suits accusing those products—even when claim preclusion would not apply because the new acts of alleged infringement occurred after the prior judgment.  In PersonalWeb, the Federal Circuit held that the Kessler doctrine applies even when the earlier suit ended in voluntary dismissal with prejudice rather than a judgment of non-infringement.The patentee petitioned the Supreme Court for review of that holding, and the Court issued a CVSG.  The government’s <a href="https://www.supremecourt.gov/DocketPDF/20/20-1394/220622/20220408144608169_20-1394%20PersonalWeb%20-%20CVSG%20-%20final.pdf">CVSG brief</a> argued that the Federal Circuit erred in extending Kessler to judgments entered after a stipulated dismissal rather than a finding of non-infringement.  But the government nonetheless recommended denying review because “[t]he Federal Circuit’s understanding of Kessler as a gap-filling doctrine applies only in limited circumstances that are unlikely to occur with any frequency.”  And the Supreme Court heeded the government’s advice:  it denied the petition on May 16.

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Federal Circuit CVSG Update

Viking River Is Victorious in Compelling Individual PAGA Claim to Arbitration

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With the Supreme Court’s October 2021 Term winding down, we thought we’d check in on the cases from the Federal Circuit where the Supreme Court called for the v

Federal Circuit CVSG Update

Federal Circuit Insights

With another busy week of arguments last week, the Federal Circuit took a break from issuing precedential decisions. But it still pushed out several non-precedential decisions along with some quick affirmances without opinions from the week’s arguments. 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: 0Non-precedential opinions: 10Rule 36: 9Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1733.OPINION.5-5-2022_1947201.pdf">Auris Health, Inc. v. Intuitive Surgical Operations</a>, No. 21-1733 (55 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1928.OPINION.5-6-2022_1947954.pdf">Sheppard v. McDonough</a>, No. 21-1928 (2 days)Case of the (recent) week: <a href="https://cafc.uscourts.gov/opinions-orders/20-1640.OPINION.4-29-2022_1943607.pdf">Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc., No. 20-1640</a>Panel: Prost, Reyna, and Stoll, with Judge Prost writing the opinionYou should read this case if: you have a matter involving the on-sale bar.Under the pre-AIA version of 35 U.S.C. § 102, selling an invention more than a year before filing a patent application potentially invalidated any later-issued patent. But in the face of potential proof of an invalidating sale, a patent owner could argue an exception—that the sale occurred primarily for the purposes of experimentation. This week’s case-of-the-week deals with this experimental-use exception to the on-sale bar.The case involves Sunoco and U.S. Venture, competitors in the market for gasoline distribution. Sunoco sued Venture for supposedly infringing several butane-blending patents. Venture argued, among other things, that the patents were invalid because of an offer for sale that occurred more than a year before patenting. That offer had involved an agreement to sell and install an automated butane-blending system in exchange for a commitment to purchase a specific number of barrels of butane for a set period. The district court held at summary judgment that the offer for sale was primarily for experimental purposes and so did not trigger the on-sale bar. Sunoco then won a multi-million dollar judgment in a bench trial.On appeal, the Federal Circuit reversed the district court’s on-sale-bar determination and vacated the judgment. The Court reviewed the question of whether the pre-patenting sale was for experimental or commercial purposes as “a question of law to be analyzed based on the totality of the surrounding circumstances.” The question turned on “the law of contracts.” The Court noted that the agreement itself described the transaction as a sale, “without reference to any experimental purpose.” The agreement used language consistent with a sale, referring to selling and installing the purchased equipment. The language also showed transfer of title over the installed equipment, another fact common to a commercial sale.The Federal Circuit rejected the district court’s reasoning that the sale was experimental because there was no direct payment for the patented butane-blending system. In the Court’s view, the purchaser had purchased the patented butane-blending system in exchange for committing to buy butane from the seller going forward. The Court explained that the agreement repeatedly interrelated the transfer of the patented system with the purchase of butane barrels going forward. For example, if intervening events prevented the purchaser from purchasing the agreed-upon number of barrels, the agreement provided for a termination fee “representing the balance of the purchase price of the Equipment.”Although the agreement also included a section titled “Equipment Testing,” the Federal Circuit read that section as merely indicating that the seller would ensure the patented system satisfied minimum operating standards. Such testing was consistent with the sale being for commercial purposes. That made it clear that any testing “occurred to effectuate the sale, rather than the sale occurring to occasion the testing.”In the end, the Court held that the totality of circumstances showed that “the primary purpose of the inventor at the time of sale, as determined from an objective evaluation of the facts surrounding the transaction,” was commercial and not “to conduct experimentation.” The district court thus had erred in applying the experimental-use exception to the on-sale bar.

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 (May 2-6): Experimenting With The On-Sale Bar

Last Week In The Federal Circuit (May 2-6): Experimenting With The On-Sale Bar

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With another busy week of arguments last week, the Federal Circuit took a break from issuing precedential decisions. But it still pushed out several non-precede

Last week was argument week at the Federal Circuit, and we’ve already begun seeing decisions from the argued cases trickle in. 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: 8Rule 36: 3Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1609.OPINION.4-8-2022_1933410.pdf">Roche Diagnostics Corporation v. Meso Scale Diagnostics, LLC</a>, No. 21-1609 (157 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2013.OPINION.4-4-2022_1930596.pdf">Littelfuse, Inc. v. Mersen USA EP Corp.</a>, No. 21-2013 (26 days)Case of the week: Littelfuse, Inc. v. Mersen USA EP Corp.Panel: Judges Prost, Bryson, and Stoll, with Judge Bryson writing the opinionYou should read this case if: you have a matter involving claim construction, and particularly the principle of claim differentiation.This week’s case of the week looks at the doctrine of claim differentiation. Littelfuse, Inc. owns a patent for fuse end caps to electrically connect a fuse and an electrical conductor. Littelfuse sued Mersen USA EP, Corp. but stipulated to non-infringement after the district court construed the claims to require a multi-piece construction.The Federal Circuit rejected the district court’s claim construction based on claim differentiation, the specification, and the prosecution history. The Court found the structure of the claims “enlightening.” Independent claim 1 recites a fuse end cap with three elements. Dependent claims 8 and 9 further limit claim 1 by requiring that the end cap be formed “from a single, contiguous piece of conductive material.” The Court explained: “By definition, an independent claim is broader than a claim that depends from it, so if a dependent claim reads on a particular embodiment of the claimed invention, the corresponding independent claim must cover that embodiment as well.” A claim construction that leads to a different result “is generally disfavored.” Therefore, the Court reasoned, claim 1 must cover single-piece embodiments.The Federal Circuit acknowledged that any presumption created by the doctrine of claim differentiation can be overcome but concluded that nothing in the written description or prosecution history dictated a different conclusion. The Court reviewed the specification’s description of three different embodiments: two where the end cap is machined or stamped from a “single piece of any suitable, electrically conductive material”; and one—an “assembled end cap”—where the terminal and mounting cuff are formed from two separate pieces of electrically conductive material that are joined together by, for example, a fastening stem. The Court noted that the descriptions of the single-piece embodiments do not mention a fastening stem, an element required by claim 1. The Court acknowledged this inconsistency but cautioned that courts should not limit the claimed invention to preferred embodiments or specific examples in the specification. After all, nothing in the specification states that a fastening stem cannot be present in a single-piece apparatus, and the Court concluded that the specification supports the construction of claim 1 to include both single-piece and multi-piece end caps.Finally, the Federal Circuit turned to the prosecution history. During prosecution, the examiner had noted that the three embodiments described in the specification represented distinct species of claim 1 and issued a restriction requirement. Littelfuse initially elected the species corresponding to the “assembled end cap”, i.e., the multi-piece end cap. The examiner then withdrew dependent claims 8 and 9 since they were directed to the “machined end cap” and the “stamped end cap” embodiments. But Littelfuse later amended its claims to add a “fastening stem” element in response to a different rejection. The examiner then allowed claim 1 and rejoined dependent claims 8 and 9 after concluding that dependent claims 8 and 9 “require all the limitations of the allowable claims.” The Court concluded that this history also supported its construction of claim 1 to cover both multi-piece and single-piece end caps.

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Of Counsel

Jillian brings over a decade of experience in patent prosecution and strategy to her practice. 

Jillian A. Pesin-Fulop Ph.D.

Jillian Pesin-Fulop is an associate in the firm’s Intellectual Property Group. Dr. Pesin-Fulop’s practice focuses on patent preparation and prosecution, patent portfolio management, and patent due diligence for life science companies and universities in the fields of biotechnology, pharmaceuticals, immunology, cancer therapeutics, diagnostics, biofuels, and agricultural biotechnology. She has experience developing and managing U.S. and worldwide patent portfolios. Dr. Pesin-Fulop also assists clients

Jillian Pesin-Fulop

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Last Week In The Federal Circuit (April 4 - 8): Claim Differentiation Carries The Day

Last Week In The Federal Circuit (April 4 - 8): Claim Differentiation Carries The Day

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Last week was argument week at the Federal Circuit, and we’ve already begun seeing decisions from the argued cases trickle in. Below we provide our usual weekly

When it comes to oil, even the Federal Circuit’s hands are sometimes tied. Last week, the Federal Circuit affirmed a Patent Trial and Appeal Board Precedential Opinion Panel decision for claims related to oil wells, although the Court expressed some skepticism about the agency’s reasoning. 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: 3Non-precedential opinions: 11Rule 36: 0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-2163.OPINION.3-24-2022_1926100.pdf">Hunting Titan, Inc. v. DynaEnergetics Europe GmbH</a>, No. 20-2163 (143 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2040.OPINION.3-25-2022_1926745.pdf">VDPP LLC v. VIZIO, Inc</a>., No. 21-2040 (17 days)Case of the week: Hunting Titan, Inc. v. DynaEnergetics Europe GmbHPanel: Judges Hughes, Prost, and Reyna, with Judge Hughes writing the opinion and Judge Prost authoring a concurring opinionYou should read this case if: you have a matter where the Board holds proposed amended claims unpatentable based on newly raised grounds.DynaEnergetics owns the coveted patent at issue, which is directed to a perforating gun used to improve a flow path for oil into wells. During an inter partes review challenging the patent’s claims, DynaEnergetics moved to amend and add substitute claims. The petitioner, Hunting Titan, opposed but failed to assert that the prior art anticipated the proposed substitute claims, as it had for the original claims. The Board disregarded this failure and ultimately found that the original and proposed substitute claims were unpatentable for anticipation.A Precedential Opinion Panel of the Patent Trial and Appeal Board agreed to review the original Board panel’s findings. The precedential panel focused on the circumstances in which the Board can go beyond party-presented challenges when considering the patentability of proposed substitute claims. Absent an exception, the precedential panel held that the Board does not have an affirmative duty to sua sponte raise patentability challenges and should do so only in “rare” circumstances. These rare circumstances may include where (1) a petitioner ceases to participate in the proceeding altogether, (2) a petitioner chooses not to oppose the motion to amend, or (3) evidence of unpatentability is “readily identifiable and persuasive such that the Board should take it up in the interest of supporting the integrity of the patent system.” Applying this standard, the precedential panel allowed the substitute claims, reversing the original panel’s decision to reject them.The Federal Circuit affirmed the outcome but not necessarily the precedential panel’s analysis. The Court “f[ou]nd problematic the Panel’s reasoning behind its decision to confine the Board’s discretion to sua sponte raise patentability issues to only rare circumstances.” The precedential panel had thought that the adversarial nature of inter partes reviews supported confining Board review in that manner. But that overlooked the basic purpose of inter partes review proceedings: to reexamine an earlier agency decision and ensure “that patent monopolies are kept within their legitimate scope.”Nonetheless, the Federal Circuit ultimately held that the petitioner was not entitled to relief on appeal. The Court explained that the precedential panel’s consideration of a readily-identifiable-evidence exception for the Board to raise patentability issues sua sponte was at least consistent with Federal Circuit precedent. But the Court refused to review the precedential panel’s application of that exception to the facts in this case, because the Court concluded that the petitioner had failed to argue on appeal that the precedential panel misapplied the exception. Emphasizing the narrowness of this holding, the Court affirmed. In the end, a win for patent owner DynaEnergetics—but perhaps not drivers at the pump.

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Associate

Caroline Pohl is an associate in Morrison and Foerster’s Litigation Group, where she specializes in intellectual property and complex commercial litigation.

Caroline Pohl

Caroline Pohl is an associate in the Litigation department of Morrison and Foerster’s San Diego office. Caroline earned her law degree magna cum laude from the University of California, Irvine School of Law, where she served as an Articles Editor of the UC Irvine Law Review. While in law school, Caroline and her Community & Economic Development Clinic partners successfully briefed and argued a

Caroline F. Pohl

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Last Week In The Federal Circuit (March 21-25): Oil is a Hot Commodity These Days—Even on the Federal Circuit

Last Week In The Federal Circuit (March 21-25):  Oil is a Hot Commodity These Days—Even on the Federal Circuit

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When it comes to oil, even the Federal Circuit’s hands are sometimes tied. Last week, the Federal Circuit affirmed a Patent Trial and Appeal Board Precedential 

Last week’s big news was of course the official swearing in of Judge Stark. But there were plenty of other things happening at the Court. 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: 5Non-precedential opinions: 8Rule 36: 3Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-1933.ORDER.3-16-2022_1922220.pdf">Biogen Int’l GmbH v. Mylan Pharm. Inc.</a>, No. 20-1933 (463 days) (En Banc Order)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1025.OPINION.3-15-2022_1921647.pdf">O’Keeffe’s, Inc. v. Hirshfeld</a>, No. 21-1025 (6 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/20-1415.OPINION.3-15-2022_1921729.pdf">BASF Plant Science, LP v. Commonwealth Scientific and Industrial Research Organisation</a>, Nos. 2020-1415, -1416, -1919, -1920Panel: Judges Newman, Taranto, and Chen, with Judge Taranto writing the opinion, and a dissent in part filed by Judge NewmanYou should read this case if: you are involved in a patent co-ownership dispute subject to a contractual agreement.In this week’s case of the week, the Federal Circuit reviewed a jury verdict on patent co-ownership. The disputed patents claimed nutritional supplements for farm-raised fish designed to increase Omega-3 fatty acid content. CSIRO, the patent owner, and BASF were both developing these supplements. For a time, they agreed to collaborate and entered into a Materials Transfer and Evaluation Agreement. After the agreement ended, the companies parted ways, with each ultimately developing and marketing their own solutions.The relationship soured and the parties eventually ended up in district court. As a defense to CSIRO’s patent infringement claims, BASF argued it co-owned CSIRO’s patents under the terms of their previous agreement. A jury agreed for one, but only one, of six asserted patents.On appeal, the Federal Circuit reversed the finding of co-ownership for the one patent and affirmed the findings of no co-ownership for the others. The Court’s decision turned on the phrase “intellectual property subsisting in . . . Joint Results.” The Court held that this contract language required that BASF show that intellectual property defined by claims of the patents “inhere[d]” in or “form[ed] an element of” the Joint Results produced through the parties’ previous agreement.BASF argued that requirement was met because CSIRO obtained its patents by drawing on lessons it learned from experiments using both parties’ material, material CSIRO obtained through the collaboration agreement. But that overly broad interpretation of the agreement language conflicted with legal norms, which have never treated an invention as merely inherent in the lessons learned from earlier work. Were it otherwise, virtually no invention would survive the test of obviousness. The Court also found that BASF’s interpretation made no “commercial sense,” a consideration both parties agreed was critical in interpreting their agreement. BASF’s expansive view of the contract would turn the short, limited-term collaboration agreement into “an ever-threatening cloud over independent” work by other party.The Court then considered the evidentiary basis for the jury’s finding of co-ownership. BASF cited several pieces of evidence, including a CSIRO email that praised the value of BASF’s contributions, a CSIRO lab notebook summarizing results from the joint research, and the patent’s own description of research results. But the Court found that BASF failed to connect this evidence—or any other specific results, data, or information from the joint work—to the claims of the patent. Thus, the Court ruled there was no evidentiary basis to support the jury finding of co-ownership. And for similar reasons the jury could reasonably conclude that BASF had failed to prove it co-owned any of the other patents.This precedential opinion by the Federal Circuit exemplifies the Court’s process of interpreting co-ownership agreements. It also serves as a reminder of the importance of establishing connections between evidence and specific patent claims.

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Last Week In The Federal Circuit (March 14-18): Federal Circuit Says Go Fish To Claims of Co-Ownership

Last Week In The Federal Circuit (March 14-18): Federal Circuit Says Go Fish To Claims of Co-Ownership

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Last week’s big news was of course the official swearing in of Judge Stark. But there were plenty of other things happening at the Court. Below we provide our u

If your limited attention is diverted this week because of March Madness, never fear! We’ve got you covered at Federal Circuitry, where we’re always tracking the latest news at the Federal Circuit. 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: 6Non-precedential opinions: 5Rule 36: 13Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1334.OPINION.3-11-2022_1920301.pdf">NEXTEEL Co., Ltd. v. United States</a>, No. 21-1334 (127 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-2008.OPINION.3-8-2022_1918181.pdf">Broadcom Corp. v. ITC</a>, Nos. 20-2008, 21-1260, -1362, -1511 (53 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/22-108.ORDER.3-9-2022_1919045.pdf">In Re: Volkswagen Group of America, Inc.</a>, No. 22-108, -109Panel: Dyk, Reyna, and Chen (Per Curiam)You should read this case if: you have a venue dispute in a patent infringement action.Many recent venue cases have focused on permissive transfers for convenience under 28 U.S.C. § 1404. But this week’s case of the week deals with the stronger medicine of compulsory transfers or dismissal for improper venue under 28 U.S.C. § 1406(a).The patent venue statute, Section 1400(b), allows a civil action to “be brought in the judicial district where [1] the defendant resides, or where [2] the defendant has committed acts of infringement and has a regular and established place of business.” After StratosAudio sued Volkswagen and Hyuandi (“Volkswagen”) for patent infringement in the Western District of Texas, Volkswagen moved to dismiss or transfer. Volkswagen argued venue was improper because it neither resided in the Western District nor had a regular and established place of business there.The district court disagreed. It found that Volkswagen had agents—local dealerships—with regular and established places of business that could be imputed to Volkswagen. According to the district court, the dealership franchise agreements gave Volkswagen sufficient control over dealership operations to make the dealerships Volkswagen’s agents. In particular, the district court cited Volkswagen-dictated staffing and reporting requirements, minimum inventory levels, employee training, and equipment requirements placed on the dealerships.The Federal Circuit granted Volkswagen’s petition for a writ of mandamus and reversed. It explained three requirements for whether a party has a “regular and established place of business”: (1) there must be a physical place in the district; (2) it must be a regular and established place of business; and (3) it must be the place of the defendant. The first and third factors were not in dispute. The second factor requires the “regular, physical presence of an employee or other agent of the defendant conducting the defendant’s business.”The Court acknowledged that questions of control often arise in the context of franchise agreements. Yet it distinguished between contractual provisions potentially evidencing interim control and those merely providing constraints on how a service is provided. It explained that setting standards in an agreement for acceptable service quality, without more, does not create an agency relationship.The Court found there was no evidence that Volkswagen maintains influence over the sales process once it has sold a car to the dealership. There were no “step-by-step instructions” that the dealerships must follow when selling a car. Thus, the dealerships were not Volkswagen's agents. Moreover, while not dispositive the Court noted that the parties had disclaimed an agency relationship in the franchise agreement.Finally, the Court pointed to a “near uniform” body of law finding that similar contractual provisions or allegations of control fail to show that dealerships are agents of vehicle manufactures. That apparently made this case a slam dunk and worthy of mandamus.

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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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Last Week In The Federal Circuit (March 7-11): March Madness Mandamus-Style

Last Week In The Federal Circuit (March 7-11): March Madness Mandamus-Style

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If your limited attention is diverted this week because of March Madness, never fear! We’ve got you covered at Federal Circuitry, where we’re always tracking th

The Federal Circuit kicked off a new week of oral arguments today. And this week it finishes its goodbyes to Judge O’Malley, who officially retires on Friday (March 11). Even so, the work must go on. 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: 6Rule 36: 0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-2342.OPINION.3-1-2022_1915069.pdf">DBN Holding, Inc. v. ITC</a>, No. 20-2342 (147 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2164.OPINION.3-4-2022_1917077.pdf">Lowe v. Shieldmark, Inc.</a>, No. 21-2164 (24 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/20-2342.OPINION.3-1-2022_1915069.pdf">DBN Holding, Inc. v. ITC</a>, No. 20-2342Panel: Chief Judge Moore and Judges Newman and Reyna, with Judge Reyna writing the opinionYou should read these cases if: you have a matter involving a consent order before the ITC.People often repeat the adage that an invalid patent cannot be infringed. But this week’s case of the week shows that, regardless of whether that adage is true, one can violate a consent order based on an invalid patent. And doing so can be costly.The facts are these. DBN Holding confronted a common challenge—a patent litigation action in district court and an investigation based on the same underlying patent at the International Trade Commission. To avoid having to litigate simultaneously in both fora, DBN executed a consent order at the Commission. Among other things, the order provided that DBN would not import any two-way global satellite communication devices that infringe claims of the asserted patent “until the expiration, invalidation, and/or unenforceability” of the patent. The order also stated that it would become inapplicable to any claim “found or adjudicated invalid” in court, “provided that such finding or judgment has become final and non-reviewable.”DBN eventually succeeded in proving the claims invalid in district court. But not before DBN imported satellite devices in violation of the consent order. The Commission slapped DBN with a substantial civil penalty for its violation. After the Federal Circuit affirmed the district court invalidity judgment, DBN filed a petition asking the Commission to rescind or modify the civil penalty.On DBN’s appeal from the Commission’s denial of the petition, the Federal Circuit affirmed. The Federal Circuit explained that “consent decrees and orders have attributes both of contracts and of judicial decrees.” Viewed as a contract, DBN received the benefit of its bargain when the Commission terminated the original investigation. DBN was then obligated to uphold its end of the bargain—not to import satellite devices covered by the patent. Because the consent order spelled out that a court invalidation of the patent would apply only prospectively, “under the clear terms of the consent order, DBN remained potentially liable for any violations up to the time of invalidation.” The Court thus rejected DBN’s argument that its alleged infringing conduct could not support maintaining the civil penalty given the asserted claims’ later invalidation.The Federal Circuit declined to decide whether, in fact, Commission regulations authorized the Commission to rescind or modify previous consent orders. Even assuming the Commission had such authority, the decision to rescind or modify would be “commit[ted] to the ITC’s discretion.” DBN failed to show the Commission abused that discretion. DBN argued that the Commission should have found its violation of the consent order to be in good faith because DBN believed the patent to be invalid when the violation occurred. But the Federal Circuit rejected that argument as “without a reasonable basis or legal authority.”

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Last Week in the Federal Circuit (February 28 - March 4): When Infringing An Invalid Patent Can Be Costly

Last Week in the Federal Circuit (February 28 - March 4): When Infringing An Invalid Patent Can Be Costly

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The Federal Circuit kicked off a new week of oral arguments today. And this week it finishes its goodbyes to Judge O’Malley, who officially retires on Friday (M

Despite no precedential patent decisions at the Federal Circuit last week, the Court still addressed some interesting issues, including a decision in which the Patent Trial and Appeal Board rejected a patentee’s alleged objective indicia of non-obviousness for a patent’s broader claims, but upheld them as to narrower substitute claims.  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:  10Rule 36:  5Longest pending case from argument:<a href="https://cafc.uscourts.gov/opinions-orders/20-2182.OPINION.2-16-2022_1909228.pdf">Jones v. United States</a>, No. 20-2182 (166 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1908.OPINION.2-14-2022_1907705.pdf">Travel Sentry Inc. v. Tropp</a>, No. 21-1908 (5 days)Cases of the week:Zaxcom, Inc. v. Lectrosonics, Inc., <a href="https://cafc.uscourts.gov/opinions-orders/20-1350.OPINION.2-18-2022_1910803.pdf">Nos. 20-1350, -1405</a>; and <a href="https://cafc.uscourts.gov/opinions-orders/20-1921.OPINION.2-18-2022_1910806.pdf">Nos. 20-1921, -1922, -1943, -1944</a>Panel:  Judges Taranto, Lourie, and Schall, with Judge Taranto writing both opinionsYou should read these cases if:  you are involved in a dispute with objective indicia of non-obviousness.In this week’s case of the week, the Federal Circuit upheld three Patent Trial and Appeal Board decisions assessing three Zaxcom patents.  The Zaxcom patents are directed to wireless audio recording systems.  Each patent relates to recording audio locally on a device and streaming it wirelessly to a remote recorder, which records the audio a second time.  The original claims required that the locally recorded audio data be “combined” with the remotely recorded audio data.  The Federal Circuit agreed with the Board that, under the broadest reasonable interpretation of the claim language, the claims cover two applications:(1)   combining the two recordings to create a multi-track audio file (“multitrack creation”); and(2)   combining the locally and remotely recorded audio to repair corruption or dropouts in the remotely recorded audio data (“dropout repair”).At the Board, Zaxcom sought to rebut alleged obviousness combinations by introducing objective indicia of non-obviousness — evidence of industry praise, commercial success, and solving a long-felt but unmet need.  But the Board found that this evidence was directed solely “to the critical feature of dropout repair,” and the Federal Circuit affirmed that finding under the deferential substantial evidence standard of review.  Because the original claims were broad enough to also cover the multitrack creation approach disclosed in the obviousness combinations advanced by Petitioner Lectrosonics, the Board also found that the objective indicia evidence lacked the required nexus to the full scope of Zaxcom’s claims and thus failed to support non-obviousness.  The Federal Circuit affirmed that Zaxcom’s evidence was “insufficient to overcome the prior-art evidence of obviousness”—the evidence “in short, says nothing to suggest non-obviousness of one of the two types of systems and methods within the claims’ coverage.”The Board reached a different conclusion with respect to Zaxcom’s amended claims, and the Federal Circuit affirmed that too.  The Federal Circuit explained that “[t]he substitute claims narrow the ‘combined’ claim limitation to a limitation that requires ‘replacing’ the remotely recorded data with local audio data,” and “Lectrosonics accepts that the substitute claims are directed to dropout repair.”  Because the amended claims were limited to dropout repair, the Board found a sufficient nexus between the industry praise and the amended claims.  The Federal Circuit saw “no basis for reversing the Board’s findings,” particularly because the objective indicia evidence directly discussed the “dropout repair” feature that the narrowed claims required.  As a result, the Federal Circuit upheld all three patents in their amended form.The Federal Circuit non-precedential decisions thus provide clear examples of when objective indicia does, and does not, have a sufficient connection to claims to support non-obviousness.  In addition, one of the Board decisions here was designated precedential at the Board for its holding that a nexus between the evidence and the merits of the claimed invention must be established in order for objective indicia of non-obviousness to be given substantial weight.  Parties thus should expect that issues of nexus will continue to be a focus in proceedings before the Board involving objective indicia of non-obviousness.

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Last Week In The Federal Circuit (February 14-18): When Objective Indicia Evidence Both Is, And Is Not, Sufficient For Non-Obviousness

Last Week In The Federal Circuit (February 14-18): When Objective Indicia Evidence Both Is, And Is Not, Sufficient For Non-Obviousness

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Despite no precedential patent decisions at the Federal Circuit last week, the Court still addressed some interesting issues, including a decision in which the 

As Federal Circuitry readers know, the Supreme Court in recent years has granted review in many patent cases from the Federal Circuit—like last Term’s big decision in Arthrex. But the Supreme Court also takes up cases from the Federal Circuit’s non-patent docket. Yesterday the Supreme Court granted certiorari in <a href="https://www.supremecourt.gov/DocketPDF/21/21-432/192768/20210917141459956_21-__PetitionForAWritOfCertiorari.pdf">Arellano v. McDonough</a>, a veterans’ benefits case about when statutory filing deadlines can be “equitably tolled”—that is, extended due to some unusual circumstance that prevented a litigant from making a timely filing. Questions on the availability of equitable tolling arise in a wide variety of statutory contexts. The Supreme Court’s eventual decision in Arellano thus may have broader implications beyond the veterans’ benefits area.Under the statute governing disability benefits awards by the Department of Veterans Affairs (VA), an award’s effective date generally cannot be earlier than the date the VA receives the veteran’s benefits application. 38 U.S.C. § 5110(a)(1). The statute provides several exceptions to that default rule. As relevant here, if the VA receives an application within one year after the veteran’s discharge from service, the award will be retroactive to the day after the veteran’s discharge. Id. § 5110(b)(1).In Arellano, a veteran filed an application for disability benefits nearly 30 years after his discharge from the Navy. He argued that his award should be retroactive to the day after his discharge under Section 5110(b)(1). Although he did not file within that provision’s one-year period, he contended that the period should be equitably tolled because his mental illness prevented him from filing his claim earlier. The Board of Veterans’ Appeals and the Court of Appeals for Veterans Claims rejected the veteran’s equitable-tolling argument based on Andrews v. Principi, a 2003 decision in which the Federal Circuit held that Section 5110(b)(1)’s one-year deadline is not subject to equitable tolling.After a Federal Circuit panel heard oral argument in Arellano (but before the panel issued a decision), the Federal Circuit sua sponte granted hearing en banc. The Court’s order indicated only that “[a] sua sponte request” for an en banc poll “was made” and succeeded. As usual, the order did not identify which judge requested an en banc poll. But it may have been a member of the original panel, as some panel members expressed doubts about Andrews at oral argument. Among other issues, the en banc Court asked the parties to brief whether Andrews should be overruled.In its <a href="https://cafc.uscourts.gov/opinions-orders/20-1073.opinion.6-17-2021_1792201.pdf">en banc decision</a>, however, the Federal Circuit equally divided on that question, leaving Andrews in place—though the en banc Court unanimously determined that equitable tolling was not available to the veteran at issue. (As we’ve <a href="https://federalcircuitry.mofo.com/topics/Agreeing-to-Disagree-en-Banc-Style--How-Often-Do-Judges-Dissent-From-Denial-of-Rehearing-En-Banc.html">previously</a> observed, the en banc Court is rarely evenly divided; although the Court split 6-6 on whether to grant rehearing en banc in the American Axle patent-eligibility case, more often the Court is unanimous or only a few judges have noted dissents.)Six judges (Chief Judge Moore and Judges Chen, Lourie, Prost, Taranto, and Hughes) agreed with Andrews’s conclusion that Section 5110(b)(1) is not amenable to equitable tolling because it is not a statute of limitations that operates to bar a veteran’s benefits claim altogether. Rather, it establishes “one of many elements” of a benefits award—namely, its effective date.Six other judges (Judges Dyk, Newman, O’Malley, Reyna, Wallach, and Stoll) would have overruled Andrews and held that Section 5110(b)(1) is a statute of limitations subject to equitable tolling. Yet those judges would have rejected equitable tolling on the facts of the veteran’s case, as the veteran had a caregiver who could have filed a benefits application on the veteran’s behalf sometime earlier in the 30-year period after his discharge.The Supreme Court granted the veteran’s certiorari petition, which asked the Court to decide whether Section 5110(b)(1)’s one-year deadline is amenable to equitable tolling. The case likely will be heard in the fall toward the beginning of the Supreme Court’s October 2022 Term.

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A Cert Grant On Veterans' Benefits And Equitable Tolling

A Cert Grant On Veterans' Benefits And Equitable Tolling

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As Federal Circuitry readers know, the Supreme Court in recent years has granted review in many patent cases from the Federal Circuit—like last Term’s big decis