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

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

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Partner

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

Brian Matsui

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

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

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

Seth Lloyd

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

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Many petitions for rehearing are filed; only the smallest handful are granted. Rather than track every filed petition, we track those that have a chance. Our database tracks petitions for rehearing once the Federal Circuit has called for a response (CFR). A CFR is the first real indication that the Court might have interest in the petition, as it indicates that at least one judge on the Court may be taking a second look. Our En Banc Tracker allows you to see the amount of time it takes for various cases to get a CFR, and you can sift through the data to see what types of cases have captured the potential attention of the Court. Our data goes back to January 2020.<div data-reactroot=""><iframe allowfullscreen="" frameBorder="0" height="2350" width="100%" src="https://public.tableau.com/views/RehearingCFRsandSubstantiveOrders/RehearingCFRs?:language=en&amp;:display_count=y&amp;:origin=viz_share_link&amp;:showVizHome=no&amp;:embed=yes&amp;:showShareOptions=false"></iframe><style media="(min-width:48.0625em)">#embed-wrapper-316296595{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

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

Federal Circuit Insights

No better way to start Valentine’s Day week than to think about a different way for communicating. But as this week’s case of the week shows, what you say and how you say it can matter. Check out our usual weekly statistics below and the detailed discussion of our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 7Non-precedential opinions: 13Rule 36: 5Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/18-1976.ORDER.2-11-2022_1907121.pdf">GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc.</a>, No. 18-1976 (353 days) (en banc order)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1986.OPINION.2-9-2022_1905793.pdf">Feiss v. United States</a>, No. 21-1986 (2 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/21-1649.OPINION.2-10-2022_1906548.pdf">Junker v. Medical Components, Inc.</a>, No. 21-1649Panel: Judges Dyk, Reyna, and Stoll, with Judge Stoll writing the opinionYou should read this case if: you have a matter involving an on-sale bar due to a pre-critical date letter that may be a commercial offer for sale.If you’re wondering whether the Federal Circuit is still dealing with cases involving antiquated technology, the answer is yes. Indeed, the Court had to transport themselves back to when people still used the good old fashioned fax machine for communicating.Larry G. Junker owns a design patent covering an introducer sheath handle with “large, rounded Mickey-Mouse-shaped ears.” The sheath handle may be used for inserting a catheter into the vein of a patient. Mr. Junker sued MedComp for infringement.But Mr. Junker’s suit ran into trouble with the Pre-AIA § 102(b) on-sale bar. That provision bars a patent to an invention that was “on sale in” the United States more than one year before the patent application was filed. (Post-AIA § 102 also includes an on-sale bar, although some of the relevant statutory language has changed.) The heart of the issue was whether a letter sent via fax was a commercial offer for sale such that the on-sale bar applied.The letter was sent not by Mr. Junker but by a business partner that had developed a prototype of Mr. Junker’s invention. The partner sent a letter to a potential buyer with details about bulk pricing information, specifically, a price chart for variously sized sheath products. The letter provided numerous specific commercial terms, such as payment terms, shipment terms, and delivery conditions and then concluded with an invitation to discuss any further requirements.The district court held that the letter was a preliminary negotiation, not a definite offer sufficient to trigger the on-sale bar. Although the district court acknowledged the letter’s commercial terms, it really focused on the word “quotation” (which appeared three times) and the invitation at the end of the letter. As a result, the district court granted Mr. Junker’s motion for summary judgment of no invalidity under the on-sale bar.The Federal Circuit reversed. The Court noted that the letter was in direct response to a request for a quotation. Further, the letter was addressed to the potential buyer alone. Thus, the letter was a specific offer to take further action, not an unsolicited price quotation or invitation to negotiate. The Court also noted the commercial terms in the letter as being necessary terms typical for a commercial contract: specific delivery conditions, allocation of risk and responsibilities of the buyer and seller (for delivery, payment, and loss of the product), and payment terms. And the icing on the cake was that the letter specified multiple different purchase options (the price chart). Although the letter concluded with an invitation for further discussions, the complete and definite commercial terminology used in the letter meant that it was a commercial offer for sale. It did not help that later communications between the same parties used the exact same commercial terms, indicating that the terms in the disputed letter were definite. Oops! The Court thusconcluded that the letter contained multiple offers for sale and so triggered the on-sale bar.In the end, this was not the “happiest [decision] on Earth” for these claims to a sheath handle with “large, rounded Mickey-Mouse-shaped ears.”

Round Rock Research, LLC v. [Multiple Defendants]

Sage Electrochromics, Inc. v. View, Inc.&nbsp;

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Of Counsel

A former lead engineer at the NASA Jet Propulsion Laboratory, Dr. Nguyen focuses her practice on domestic and international patent prosecution. She is a founder and co-leader of the firm’s Life Scienc

Jean Nguyen Ph.D.

Jean Nguyen

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Last Week in the Federal Circuit (February 7-11): Don't Forget To File Your Patent Before Pressing That "Fax" Button

Last Week in the Federal Circuit (February 7-11): Don't Forget To File Your Patent Before Pressing That "Fax" Button

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No better way to start Valentine’s Day week than to think about a different way for communicating. But as this week’s case of the week shows, what you say and h

Last Week in the Federal Circuit

Last week wrapped up a busy January for the Federal Circuit. Oral arguments returned to a telephonic format, and arguments next month will be by video (although still audio-only for the public). As the month is now in the books, we thought we’d take one last look at a January precedential patent decision in a month with the Court’s written opinions largely dominated by the non-patent docket.Precedential opinions:  10 total in January (4 in patent cases, 6 in non-patent cases)Non-precedential opinions: 21 total in January (7 in patent cases, 14 in non-patent cases)Rule 36: 15 total in January (9 in patent cases, 6 in non-patent cases)Our patent case of the month: <a href="https://cafc.uscourts.gov/opinions-orders/20-1046.OPINION.1-21-2022_1896055.pdf">Kyocera Senco Industrial Tools Inc. v. International Trade Commission</a>, No. 20-1046Panel: Chief Judge Moore and Judges Dyk and Cunningham, with Chief Judge Moore writing the opinionYou should read this case if: you have a matter involving (1) whether an expert is qualified to testify from the perspective of a skilled artisan or (2) whether a claim term should be construed as a means-plus-function limitationThe concept of a “person of ordinary skill in the art” is ubiquitous in patent law, but Federal Circuit decisions about who qualifies as a skilled artisan are relatively rare. In our case of the week this week, the Federal Circuit clarified the necessary experience for an expert to testify from the perspective of an ordinarily skilled artisan. It also decided several other issues, including a dispute about whether a claim term should be construed as a means-plus-function limitation.The owner of several patents on “linear fastener driving tools,” such as portable tools that drive staples or nails, filed a complaint with the International Trade Commission, alleging that the respondent was importing infringing products. During the resulting investigation, the administrative law judge (ALJ) found that a person of ordinary skill in the art relevant to the asserted patents would have at least two years of experience designing power nailers. The ALJ excluded the patentee’s proposed expert testimony on doctrine-of-equivalents infringement because the expert had no experience in power nailer design. But the ALJ nonetheless permitted the patentee’s expert to testify about literal infringement. The Commission ultimately found that the accused products infringed and rejected the respondent’s invalidity challenges.The Federal Circuit vacated the Commission’s decision. We’ll focus on two of the Court’s holdings that we thought were particularly notable.First, the Court held that the ALJ erred in admitting the patentee’s expert testimony on literal infringement. It was undisputed that the expert did not qualify as a skilled artisan under the ALJ’s definition: although the expert had advanced degrees in engineering and extensive experience designing fastener driving tools generally, he lacked experience in power nailer design in particular. The Court explained that “a witness must at least have ordinary skill in the art” to offer testimony from the perspective of a skilled artisan; otherwise the witness’s opinions “are neither relevant nor reliable.” That principle applies equally to testimony on literal infringement as it does to testimony on infringement under the doctrine of equivalents. The Court acknowledged that expert testimony is not necessarily required to prove literal infringement, unlike doctrine-of-equivalents infringement. But if a party seeks to offer expert testimony on literal infringement, the expert must possess the qualifications needed to testify from the perspective of a skilled artisan.Second, the Court concluded that the ALJ should have construed the claimed “lifter member” as a means-plus-function limitation under § 112 ¶ 6 (§ 112(f) post-AIA). A claim term that does not use the word “means” is presumed not to be a means-plus-function limitation, but that presumption can be overcome if “the claim term fails to recite sufficiently definite structure” or “recites function without reciting sufficient structure for performing that function.”Although “lifter member” does not use the word “means,” the Court held that the presumption was rebutted because “that claim term does not recite sufficiently definite structure.” On its own, “lifter member” is “a non-structural generic placeholder (member) modified by functional language (lifter).” The surrounding claim language likewise provided a “purely functional description” of the “lifter member”: the claims merely recite that the “lifter member” is moved by a certain clam element and lifts another claim element. The Court further explained that, although “lexicography can avoid application of § 112 ¶ 6,” the patent’s written description did not “provide[] a clear and unambiguous definition of ‘lifter member.’” The specification described “example[s] of a lifter member,” but it did not supply “a definition of the lifter member.”

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One Last look at Patent Cases in January

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Last week wrapped up a busy January for the Federal Circuit. Oral arguments returned to a telephonic format, and arguments next month will be by video (although

One Last look at Patent Cases in January

The Federal Circuit was quite productive last week despite the holiday weekend. The Court issued a dozen non-precedential decisions, several precedential opinions, and a handful of Rule 36 summary affirmances in cases argued during the Court’s January sitting. Below we provide our usual weekly statistics and our cases of the week—our highly subjective selection based on whatever cases piqued our interest.Precedential opinions: 5Non-precedential opinions: 12Rule 36: 6Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-1856.OPINION.1-20-2022_1895442.pdf">Nicely v. United States</a>, No. 20-1856 (198 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1751.OPINION.1-19-2022_1894758.pdf">Smolinski v. Merit Systems Protection Board</a>, No. 21-1751 (41 days)Cases of the week:As our readers <a href="https://federalcircuitry.mofo.com/topics/How-Well-Do-You-Know-the-Federal-Circuits-Jurisdiction.html">know</a>, the Federal Circuit isn’t just a “patent court.” It also has jurisdiction over appeals involving veterans’ benefits, claims for money damages against the United States, federal employment, and government contracts, among other areas. This week we’re highlighting several recent decisions from the Federal Circuit’s non-patent docket. These cases involve issues of statutory construction, agency deference, and contract interpretation—all of which may have broader significance for patent practitioners.<a href="https://cafc.uscourts.gov/opinions-orders/20-1856.OPINION.1-20-2022_1895442.pdf">Nicely v. United States</a>, No. 20-1856: Appeal from the Court of Federal Claims. Panel: Chief Judge Moore and Judges Prost and O’Malley, with the opinion for the court filed per curiam and Judge O’Malley concurring in the resultThe Federal Circuit held that retired military members were eligible to serve on the Board for Correction of Naval Records. The statute governing correction of military records, 10 U.S.C. § 1552, requires that the Secretary of the relevant military department “act[] through boards of civilians of the executive part of that military department” (emphasis added). The Court noted that Congress did not expressly define “civilians” in this statutory text. But it explained that dictionary definitions of “civilian,” as well as other statutory provisions involving “members of the armed forces,” suggest that “a person who is not on active duty in the armed services” qualifies as a civilian.The Court further reasoned that the “broader statutory context” supported its interpretation. For instance, Congress elsewhere created post-retirement waiting periods before former military members could be appointed to certain high-level civilian positions, like Secretaries of the Army and Navy. According to the Court, these provisions “impl[y] that those individuals would have been eligible for service as civilians immediately upon retirement but for the statutorily-imposed ‘cooling-off’ period.” The Court declined to “decide whether or how the Chevron framework applies here,” as it concluded that the Board’s interpretation of “civilians” in § 1552 was “the best interpretation of” the statute.<a href="https://cafc.uscourts.gov/opinions-orders/21-1490.OPINION.1-20-2022_1895407.pdf">Gurley v. McDonough</a>, No. 21-1490: Appeal from the Court of Appeals for Veterans Claims. Panel: Judges Taranto, Bryson, and Stoll, with Judge Taranto writing the opinionThe Federal Circuit held that the Department of Veterans Affairs (VA) was authorized to withhold future disability-benefits payments to recoup payments that the agency erroneously made while a veteran was incarcerated. The relevant statute, 38 U.S.C. § 5313(a)(1), provides that a veteran convicted of a felony “shall not be paid compensation” above a certain level “for the period beginning” on the 61st day of incarceration “and ending on the day” the incarceration ends.The Court concluded that the statute does not preclude the agency from “mak[ing] a post-incarceration decision to reduce benefits retroactively.” To start, the statutory text “does not use language that addresses the time at which VA must make its reduction decision regarding those benefits.” And a neighboring statutory provision, 38 U.S.C. § 5314, “specifically contemplates VA’s recovery of overpayments through withholding from future benefits.” The Court further saw an “evident reason” to interpret the statute as permitting retroactive benefits reductions: “VA might not have the contemporaneous knowledge of a particular veteran’s incarceration needed to take the initiative of reducing benefits by the 61st day.”<a href="https://cafc.uscourts.gov/opinions-orders/21-1445.OPINION.1-20-2022_1895421.pdf">Anderson v. United States</a>, No. 21-1445: Appeal from the Court of Federal Claims. Panel: Judges Prost, Reyna, and Stoll, with Judge Reyna writing the opinionThe Federal Circuit held that the government’s conversion of an unused railroad corridor into recreational hiking trails did not constitute a taking of adjacent landowners’ real property interests. The dispute centered on whether the landowners’ predecessors had conveyed fee simple interests or merely easements to the railroad. The granting clauses of the deeds conveyed “all that piece or parcel of land” described therein. But later passages in the deeds described the conveyance as a “right of way” over which the railroad would operate.Under Texas law, which applied to the deeds here, the granting clause in a deed controls so long as it is unambiguous, even if there is contradictory language elsewhere in the deed. The Court concluded that the granting clauses in the deeds at issue “unambiguously convey[ed] a piece or parcel of land” in fee simple, “not an easement right of way.” This “unambiguous granting clause” governs over “the subsequent language in the deeds that contradict the fee simple conveyance.” The landowners thus had no remaining property interests in the rail corridor. And that meant the government’s authorization of third parties to use the corridor recreationally could not constitute a taking from the landowners.

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Last Week in the Federal Circuit (January 18-21): A Roundup of Non-Patent Decisions

Last Week in the Federal Circuit (January 18-21): A Roundup of Non-Patent Decisions

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The Federal Circuit was quite productive last week despite the holiday weekend. The Court issued a dozen non-precedential decisions, several precedential opinio

The Federal Circuit is holding its first argument session of 2022 this week (with a <a href="https://cafc.uscourts.gov/notice-of-change-to-january-2022-session/">return to telephonic arguments</a> in light of the Omicron variant).  In this post, we take a look back at how the Court closed out 2021 and began 2022.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest—for the last week of 2021 and the first of 2022.Precedential opinions:  6 (3 the week of 12/27; 3 the week of 1/3)Non-precedential opinions:  7 (7 the week of 12/27; 0 the week of 1/3)Rule 36:  3 (0 the week of 12/27; 3 the week of 1/3)Longest pending case from argument:  <a href="https://cafc.uscourts.gov/opinions-orders/21-1070.OPINION.1-3-2022_1887614.pdf">Novartis Pharmaceuticals v. Accord Healthcare Inc.</a>, No. 21-1070 (179 days)Shortest (non-Rule 36) pending case from argument:<a href="https://cafc.uscourts.gov/opinions-orders/20-2048.OPINION.12-27-2021_1885397.pdf">Colicelli v. Department of Veterans Affairs</a>, No. 20-2047 (21 days)Case of the week(s):<a href="https://cafc.uscourts.gov/opinions-orders/20-1828.OPINION.12-28-2021_1885998.pdf">Intel Corp. v. Qualcomm Inc.</a>, No. 20-1828Panel:  Judges Prost, Taranto, and Hughes, with Judge Taranto writing the opinionYou should read this case if:  you have an IPR where a claim limitation may be indefiniteIn an inter partes review (IPR), the grounds for cancelling a patent claim are limited.  Anticipation and obviousness are grounds for cancellation—but indefiniteness is not.  What should happen in an IPR when a claim limitation is indefinite?  The Federal Circuit took on that question in our case of the week.This appeal arises from an IPR in which Intel challenged a patent owned by Qualcomm relating to computer-processor systems.  In its institution decision, the Board questioned whether certain terms in one claim were indefinite (because they were means-plus-function terms and lacked the necessary supporting structure).  Intel, the challenger, took up that suggestion, arguing that the terms were indefinite.  The Board then concluded that Intel had not met its burden of showing that the claims were obvious because it had not identified a structure “to which [the Board] can compare the prior art’s disclosure.”The Federal Circuit vacated and remanded that determination, holding that the Board’s analysis was incomplete.  For the Board not to reach a decision on the merits of the obviousness challenge, it had to determine that the terms were actually indefinite and that this made it impossible to adjudicate the challenge.In an IPR, the Court explained, the Board is generally obligated to determine the patentability of a challenged claim over the prior art asserted.  That obligation does not apply “if such a determination is rendered impossible because of the indefiniteness of an essential claim limitation.”  The Court held that “going forward,” the Board should “clearly state” when it is relying on that principle. But just because “some aspect of a claim renders the claim indefinite” does not necessarily make it “impossible to adjudicate a prior-art challenge.”  For example, even where one limitation is indefinite, an alternative limitation might be covered by the prior art or the argued combinations or modifications.  The Court held, based on that reasoning and statutory clues from “[t]he inter partes review scheme as a whole,” that “[t]he indefiniteness of a limitation (here, a means-plus-function limitation) precludes a patentability determination only when the indefiniteness renders it logically impossible for the Board to reach such a decision.”The Court held the Board’s analysis deficient for two reasons.  First, the Board failed to “decide whether it could resolve the patentability dispute even if claim 16 is indefinite.”  Second, the Court also faulted the Board for “simply accept[ing] Intel’s concession that the required structure for the means-plus-function claim was missing.”  Instead, the Court held, the Board needed to “itself conclude that the prior-art analysis task was impossible,” which required “determining for itself that such structure was missing.”  The Court therefore remanded for the Board to “decide one or both” of those issues.In a separate section of its decision, the Court vacated and remanded a claim construction relevant to other challenged claims.  Interestingly, the Court held the Board’s construction “inadequate” under de novo review but did not construe the term itself.  The case thus heads back to the Board for the agency to take another crack at both the impossibility and claim construction issues.

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Last Two Weeks in the Federal Circuit (December 27 - January 7)

Last Two Weeks in the Federal Circuit (December 27 - January 7)

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The Federal Circuit is holding its first argument session of 2022 this week (with a return to telephonic arguments in light of the Omicron variant).  In this po

As Federal Circuitry readers likely know, the Supreme Court occasionally invites the Solicitor General to file a brief expressing the views of the United States in a case where the Court is considering granting certiorari. That action is commonly referred to as a CVSG—Call for the Views of the Solicitor General. (Check out our earlier post <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">here</a> where we discuss the CVSG process in more detail.)We’re still waiting for the CVSG briefs in two patent-related cases out of the Federal Circuit: <a href="https://www.supremecourt.gov/search.aspx?filename=/docket/docketfiles/html/public/20-891.html">American Axle v. Neapco Holdings</a>, a Section 101 case involving an industrial manufacturing process, and <a href="https://www.supremecourt.gov/docket/docketfiles/html/public/20-1394.html">PersonalWeb Technologies v. Patreon</a>, a case about the Kessler preclusion doctrine. That means neither of those cases will be considered in time to be argued this Term. But in the meantime, yesterday the Supreme Court CVSGed another patent case from the Federal Circuit: <a href="https://www.supremecourt.gov/search.aspx?filename=/docket/docketfiles/html/public/21-438.html">Olaf Sööt Design v. Daktronics</a>. If the Supreme Court grants review, the case could have important implications for claim-construction procedures in district court and the Federal Circuit’s review of patent-infringement jury verdicts.In Olaf Sööt, Olaf Sööt Design (OSD) sued Daktronics for infringement of OSD’s patent on a “winch” for raising and lowering equipment in theatrical productions. During claim construction, the district court determined that no construction was necessary for a certain limitation involving a “hollow hub.” At trial, the parties disputed the scope of that limitation, and the jury found infringement. Daktronics appealed.The Federal Circuit reversed in an opinion authored by then-Chief Judge Prost and joined by Judges Lourie and Reyna. The Federal Circuit relied on its earlier decision in O2 Micro International Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351, 1362-63 (Fed. Cir. 2008), in which it held that “[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it”; otherwise a legal question has been “improperly submitted to the jury.” The Federal Circuit in Olaf Sööt concluded that the district court’s failure to resolve the claim-construction dispute before trial ran afoul of O2 Micro. The Federal Circuit then construed the disputed limitation itself and held that, under the proper construction, the accused product did not infringe as a matter of law.OSD petitioned for certiorari in the Supreme Court, presenting the following question:Whether the Seventh Amendment allows the Federal Circuit to reverse a jury verdict based on a sua sponte new claim construction of a term the district court concluded was not a term of art and construed to have its plain and ordinary meaning; where the Federal Circuit’s sua sponte claim construction essentially recasts a specific infringement factual question, previously decided by the jury, as a claim construction issue, to be decided de novo by the appellate court.As noted above, in its January 10, 2022 order list, the Supreme Court invited the Solicitor General to file a brief on whether the Court should grant review of that question. There is no formal deadline for the CVSG brief. But based on past practice, the brief could come this spring, in time for the Supreme Court to consider the petition before it recesses at the end of June. Or it could be filed over the summer; in that case, the petition would be considered at the Court’s long summer conference in September.

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A CVSG on Claim Construction Procedures and Jury Trial Rights

A CVSG on Claim Construction Procedures and Jury Trial Rights

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As Federal Circuitry readers likely know, the Supreme Court occasionally invites the Solicitor General to file a brief expressing the views of the United States

Morrison & Foerster and the Berkeley Center for Law & Technology (BCLT) have teamed up to present a recurring podcast addressing recent Federal Circuit decisions.In this episode, <a href="https://www.mofo.com/people/seth-lloyd.html">Seth Lloyd</a>, an associate in Morrison & Foerster’s Appellate + Supreme Court practice, and <a href="https://www.law.berkeley.edu/research/bclt/about/staff/">Wayne Stacy</a>,  BCLT’s Executive Director, discuss the Federal Circuit’s recent decision in <a href="https://cafc.uscourts.gov/opinions-orders/20-1828.OPINION.12-28-2021_1885998.pdf" target="_blank">Intel v. Qualcomm</a>, including:<ul><li>what facts suffice to establish Article III standing for IPR petitioners who supply only a component of a product alleged to fall within the scope of the challenged claims; and</li></ul><ul><li>the importance of grounding claim interpretations in what the specification shows the inventor actually invented.</li></ul>‎ Listen now on Spotify, Apple, or <a href="https://podcasts.google.com/feed/aHR0cHM6Ly9iY2x0LWV4cGVydC1zZXJpZXMuY2FzdG9zLmNvbS9mZWVk/episode/aHR0cHM6Ly9iY2x0LWV4cGVydC1zZXJpZXMuY2FzdG9zLmNvbS9wb2RjYXN0cy8yNzE1MS9lcGlzb2Rlcy9iZXlvbmQtdGhlLWhvbGRpbmctYS1udWFuY2VkLWxvb2stYXQtdGhlLWZlZGVyYWwtY2lyY3VpdHMtcGF0ZW50LWRlY2lzaW9ucy1lcGlzb2RlLTY?sa=X&ved=0CAYQkfYCahcKEwiAuJOomKj1AhUAAAAAHQAAAAAQAQ" target="_blank">Google</a>.

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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Podcast: Beyond the Holding - A Nuanced Look at the Federal Circuit's Patent Decisions (Episode 6)

Podcast: Beyond the Holding - A Nuanced Look at the Federal Circuit's Patent Decisions (Episode 6)

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Morrison & Foerster and the Berkeley Center for Law & Technology (BCLT) have teamed up to present a recurring podcast addressing recent Federal Circuit decision

Podcast

Morrison & Foerster and the Berkeley Center for Law & Technology (BCLT) have teamed up to present a recurring podcast addressing recent Federal Circuit decisions.In this episode, <a href="https://protect-us.mimecast.com/s/ZKMgCW6jp1U5yq649uxUzkW?domain=www2.mofo.com">Brian Matsui</a>, a partner in Morrison & Foerster’s Appellate + Supreme Court practice and <a href="https://protect-us.mimecast.com/s/JP5uCXDkqPHXMK495HDrdnN?domain=www2.mofo.com">Allison Schmitt</a>, BCLT's Life Sciences project director discuss:<ul><li>When do post-marketing tests required by the U.S. Food and Drug Administration (FDA) that lead to the claimed combination not demonstrate obviousness?</li><li>The interplay between reasonable expectation of success and disclosed ranges in prior art.</li></ul>‎ Listen now on <a href="https://podcasts.google.com/feed/aHR0cHM6Ly9iY2x0LWV4cGVydC1zZXJpZXMuY2FzdG9zLmNvbS9mZWVk/episode/aHR0cHM6Ly9iY2x0LWV4cGVydC1zZXJpZXMuY2FzdG9zLmNvbS9wb2RjYXN0cy8yNzE1MS9lcGlzb2Rlcy9iZXlvbmQtdGhlLWhvbGRpbmctYS1udWFuY2VkLWxvb2stYXQtdGhlLWZlZGVyYWwtY2lyY3VpdHMtcGF0ZW50LWRlY2lzaW9ucy1lcGlzb2RlLTU?sa=X&ved=0CAUQkfYCahcKEwjw5PbcnaD1AhUAAAAAHQAAAAAQAg" target="_blank">Google</a>.

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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Podcast: Beyond the Holding – A Nuanced Look at the Federal Circuit’s Patent Decisions (Episode 5)

Podcast: Beyond the Holding – A Nuanced Look at the Federal Circuit’s Patent Decisions (Episode 5)

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<p style="box-sizing: inherit;margin-top: 0px;margin-right: 0px;margin-bottom: 1.25rem;margin-left: 0px;padding-top: 0px;padding-right: 0px;padding-bottom: 0px;padding-left: 0px;font-size: 1.0625rem;line-height: 1.6;text-rendering: optimizelegibility;font-variant-numeric: normal;font-variant-east-asian: normal;color: rgb(82, 83, 87);hyphens: manual;overflow-wrap: normal;">Morrison & Foerster and the Berkeley Center for Law & Technology (BCLT) have teamed up to present a recurring podcast addressing recent Federal Circuit decisions.<p style="box-sizing: inherit;margin-top: 0px;margin-right: 0px;margin-bottom: 1.25rem;margin-left: 0px;padding-top: 0px;padding-right: 0px;padding-bottom: 0px;padding-left: 0px;font-size: 1.0625rem;line-height: 1.6;text-rendering: optimizelegibility;font-variant-numeric: normal;font-variant-east-asian: normal;color: rgb(82, 83, 87);hyphens: manual;overflow-wrap: normal;">In this episode, Seth Lloyd and Allison Schmitt, Director of the Life Sciences Program at BCLT, teamed up to discuss the recent Celgene v. Mylan decision. The case explores the intersection between Hatch-Waxman litigation and patent-specific venue requirements.<p style="box-sizing: inherit;margin-top: 0px;margin-right: 0px;margin-bottom: 1.25rem;margin-left: 0px;padding-top: 0px;padding-right: 0px;padding-bottom: 0px;padding-left: 0px;font-size: 1.0625rem;line-height: 1.6;text-rendering: optimizelegibility;font-variant-numeric: normal;font-variant-east-asian: normal;color: rgb(82, 83, 87);hyphens: manual;overflow-wrap: normal;">Grab the podcast using your favorite podcast provider, or listen on <a href="https://protect-us.mimecast.com/s/WS09CPN5gGSK50XEJT1jRzs?domain=www2.mofo.com">Google Podcasts.</a>

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Podcast: Hatch-Waxman and Venue - Simple Stuff, RIght?

Podcast: More IPR Constitutional Challenges & More Attorneys’ Fees

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Podcast: Hatch-Waxman and Venue - Simple Stuff, RIght?

Last week the Federal Circuit was gearing up for its December argument sitting, but the Court still found time to issue several decisions. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 3Non-precedential opinions: 3Rule 36: 0Longest pending case from argument: Tie between <a href="https://cafc.uscourts.gov/opinions-orders/20-1933.OPINION.11-30-2021_1871902.pdf">Biogen International GmbH v. Mylan Pharmaceuticals Inc.</a>, No. 20-1933, and <a href="https://cafc.uscourts.gov/opinions-orders/20-1673.OPINION.11-30-2021_1871910.pdf">Mylan Pharmaceuticals Inc. v. Biogen MA Inc.</a>, No. 20-1673 (357 days each)Shortest (non-Rule 36) pending case from argument: Tie between <a href="https://cafc.uscourts.gov/opinions-orders/20-2329.OPINION.12-1-2021_1872458.pdf">Moderna TX, Inc. v. Arbutus Biopharma Corporation</a>, No. 20-2329, and <a href="https://cafc.uscourts.gov/opinions-orders/20-1184.OPINION.12-1-2021_1872445.pdf">Moderna TX, Inc. v. Arbutus Biopharma Corporation</a>, No. 20-1184 (55 days each)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/20-2329.OPINION.12-1-2021_1872458.pdf">ModernaTX, Inc. v. Arbutus Biopharma Corporation</a>, No. 20-2329Panel: Judges Lourie, O’Malley, and Stoll, with Judge Lourie writing the opinionYou should read this case if: you have a matter involving (1) standing in an appeal from an IPR decision or (2) a presumption of obviousness based on overlapping ranges in the prior art.This week’s case brings us another dose of COVID-19 news, this time with the RNA technology used in some COVID-19 vaccines making its way to the Federal Circuit’s patent docket. Our case mainly involves the presumption of obviousness that typically applies “when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”Arbutus’s patent involved nucleic acid lipid particle compositions for delivery of nucleic acids—such as small interfering RNA—into cells. The claimed composition comprised four main lipid components: cationic lipid, phospholipid, cholesterol, and conjugated lipid. Each lipid component made up a certain range of mol % of the total lipid in the particle.Moderna petitioned for an IPR of Arbutus’s patent, asserting that all claims were unpatentable for obviousness. The dispute before the Board focused on the phospholipid range. Moderna conceded that the prior art did not expressly disclose the claimed phospholipid range “from 4 mol % to 10 mol %.” But it contended that the range could have been calculated based on the fact that all mol % must total 100% or by routine optimization. The Board rejected Moderna’s obviousness arguments, and Moderna appealed.The Federal Circuit affirmed. The Court began by holding that Moderna had standing to pursue its appeal based on the risk of Arbutus filing an infringement suit. Back in 2017, Arbutus asserted that it had extensive patent coverage over virtually all nanoparticle delivery systems. Moderna provided evidence describing its work on mRNA technology, delivery techniques, and COVID-19 vaccine manufacturing techniques, as well as Arbutus’s refusal to grant a covenant not to sue on its patent. The Court concluded that this record adequately showed a risk that Arbutus would bring an infringement lawsuit against Moderna. But the Court rejected Moderna’s alternative argument that it had standing to appeal based on its current status as a licensee of the challenged patent. The Court addressed this issue in more detail in another opinion released the same day (No. 20-1184).On the merits of the obviousness challenge, the Court held that a presumption of obviousness did not apply because the phospholipid range was not expressly disclosed in the prior art. The Court declined to decide whether the presumption of obviousness due to overlapping ranges could ever apply when the prior art had no express disclosure of a range. Instead, the Court focused on Moderna’s failure to show that the prior art actually taught the overlapping range.The Court rejected Moderna’s theory that all four lipids must add up to 100 mol % and that a person of ordinary skill could derive the phospholipid range based on simple subtraction. According to the Court, it was “contrary to logic” to assume that lipid components could be increased or decreased in the corresponding amounts to maintain a total of 100%. The Court explained that the claimed particle should be considered as a whole rather than focusing on each component separately. That is because the lipid components are interdependent and had unpredictable interactions.This lipid interdependence was also key to the Federal Circuit’s rejection of Moderna’s argument that a skilled artisan could have obtained the claimed ranges through routine optimization using starting points disclosed in the prior art. The Court concluded that evidence of general considerations for each component was not enough to show obviousness, as Moderna failed to address the interdependence of the lipid components and how adjustments would affect the entire particle.

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Last Week in the Federal Circuit (November 29 - December 3): COVID-19 Vaccine Patents at the PTAB

Pleading and Preemption: Immunization Against Vaccine Products Liability Claims

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Last week the Federal Circuit was gearing up for its December argument sitting, but the Court still found time to issue several decisions. Below we provide our 

Last Week in the Federal Circuit (November 29 - December 3): COVID-19 Vaccine Patents at the PTAB