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

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

Last Week in the Federal Circuit

The week of Thanksgiving was a slower one for the Federal Circuit. But we still got an interesting written description decision with a divided panel. 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: 1Non-precedential opinions: 4Rule 36: 0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-2073.OPINION.11-24-2021_1870396.pdf">Indivior UK Limited v. Dr. Reddy's Laboratories S.A.</a>, No. 20-2073 (84 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1370.OPINION.11-24-2021_1870404.pdf">Brittex Financial, Inc. v. Dollar Financial Group, Inc.</a>, No. 21-1370 (22 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/20-2073.OPINION.11-24-2021_1870396.pdf">Indivior UK Limited v. Dr. Reddy's Laboratories S.A.</a>, No. 20-2073.Panel: Judges Lourie, Linn, and Dyk, with Judge Lourie writing the opinion and Judge Linn concurring in part and dissenting in part.You should read this case if: you have a matter involving written description support.In this week’s case, the parties disputed whether patent claims had written description support in the originally filed patent application (so that the patentee could get the benefit of that application’s filing date). Appellant Indivior argued against the PTAB’s IPR holding that certain claims of its patent were unpatentable. Meanwhile, cross-appellant entities of Dr. Reddy’s Laboratories (collectively, “DRL”) argued against the PTAB’s holding that DRL failed to demonstrate the unpatentability of claim 8 of the same patent.The patent generally describes orally dissolvable films with therapeutic agents. The independent claim at issue recited a polymer range of 40% to 60%, while dependent claims recited a narrower range (48.2% to 58.6%) and a specific value (48.2%).The originally filed application (i) did not expressly claim the broader range, (ii) did not disclose the specific lower and upper bounds of 40% and 60% polymer, respectively, and, most importantly, (iii) did not disclose a range of 40% to 60% polymer. Furthermore, the application contained “conflicting statements,” including that the product may contain “any desired level of … polymer” and that one embodiment contains “at least 25%” polymer, which is well outside the broader claimed range.Indivior pointed to tables of exemplary formulations comprising multiple polymers which, collectively, totaled up to values which fell within the claimed range of 40-60%. The court noted that to arrive at these specific, particular values within the range, one must select several components, add up their individual values, determine the aggregate percentages, and then couple those aggregate percentages with other examples to create an otherwise unstated range. “[A] patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion.” Brenner v. Manson, 383 U.S. 519, 536 (1966). Rejecting Indivior’s view of the written description requirement, the Court admonished that it is not enough to offer an “invitation to go on a hunting expedition to patch together after the fact a synthetic definition of an invention.”Indivior did not walk away empty handed, however. It successfully defended the Board’s determination that the specific polymer value (48.2%) in claim 8, which was not ever explicitly claimed or disclosed in the original application, was supported by the exemplary formulations from which that value could “be derived.” The Court affirmed that determination “out of deference to the Board’s factfinding.”Judge Linn, concurring in part and dissenting in part, wrote that the case at hand was “factually indistinguishable” from that of Nalpropion Pharms., Inc. v. Actavis Labs. FL, Inc., 934 F.3d 1344 (Fed. Cir. 2019). There, the Court affirmed the district court’s determination that a claim reciting a range of 39%-70% had written description support based on tables in the specification showing discrete values of 39% and 67%. Judge Linn also argued, among other grounds for disagreement, that disclosure of discrete values should suffice to give written description support for a “closed range.”

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Last Week in the Federal Circuit (November 22-27): Written Description - Cobbling Together Numbers After the Fact

Last Week in the Federal Circuit (November 22-27): Written Description - Cobbling Together Numbers After the Fact

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The week of Thanksgiving was a slower one for the Federal Circuit. But we still got an interesting written description decision with a divided panel. Below we p

Although the Federal Circuit did not issue a precedential patent decision this week, there was still plenty of activity, including three grants of mandamus to transfer cases out of the Western District of Texas. 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: 0 (in patent cases; 1 precedential decision in an appeal from the Court of Federal Claims)Non-precedential opinions: 16Rule 36: 5Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-2122.OPINION.11-17-2021_1866347.pdf">Knapp v. MSPB</a>, No. 20-2122 (160 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/19-2162.OPINION.11-18-2021_1867206.pdf">Uniloc 2017 LLC v. Facebook, Inc.</a>, No. 19-2162 (14 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/21-1257.OPINION.11-17-2021_1866318.pdf">JKB Solutions and Services, LLC v. United States</a>, No. 21-1257Panel: Chief Judge Moore and Judges Newman and O’Malley, with Judge O’Malley writing the opinion.You should read this case if: you have a matter involving service contracts with the United States government under the Federal Acquisition Regulation (FAR).In this week’s case, appellant JKB had entered into a contract with the U.S. Army to provide instructor services. Under the agreement, the Army placed annual task orders for JKB with the total price corresponding to the price for JKB to teach fourteen classes. However, the Army used JKB for fewer than fourteen classes each year. The Army paid JKB only for the classes that JKB actually taught, rather than the total price on the task orders. JKB sued for breach of contract.The U.S. government moved for summary judgment arguing that the contract incorporated a specific FAR provision that included a termination-for-convenience clause: “[t]he Government reserves the right to terminate this contract, or any part hereof, for its sole convenience.” The Court of Federal Claims found that this FAR provision applied, the Army constructively terminated the contract for convenience, and JKB could recover only costs associated with the termination-for-convenience rather than the entire amount under the original task orders.The Federal Circuit vacated and remanded. It agreed with JKB that the disputed FAR provision applies to only commercial item contracts, not service contracts like JKB’s. The Court rejected the Claims Court’s rationale that “nothing in the FAR limits the [provision’s] applicability to commercial item contracts,” noting instead that multiple FAR provisions limit the disputed provision to commercial item contracts. The Court also pointed out that the FAR limits other termination-for-convenience clauses to specific types of contracts, reinforcing that there was no blanket termination-for-convenience provision.Nor was the Federal Circuit persuaded that the parties had bargained for a termination-for-convenience clause in this specific contract by incorporating the disputed FAR provision. The parties’ agreement did not transform the provision into one applicable to a service contract. That was true even if it meant that the government incorporated a clause with no effect into the JKB contract.Despite JKB’s win on appeal, its fight against the alleged termination for convenience continues. The Federal Circuit remanded for the Claims Court to consider in the first instance whether there were other bases, besides the disputed FAR provision, that would authorize the government to terminate for convenience.

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Last Week in the Federal Circuit (November 15-19): Government Contracts - A Bridge Too FAR on Termination for Convenience

Last Week in the Federal Circuit (November 15-19): Government Contracts - A Bridge Too FAR on Termination for Convenience

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Although the Federal Circuit did not issue a precedential patent decision this week, there was still plenty of activity, including three grants of mandamus to t

Fall colors are on full display in DC. But leaf peeping can’t keep us from following the latest news at the Federal Circuit. 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: 5Rule 36: 8Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-1683.OPINION.11-10-2021_1862707.pdf">Apple Inc. v. Qualcomm Inc.</a>, No. 20-1683 (100 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-1886.OPINION.11-9-2021_1861925.pdf">Caris MPI, Inc. v. Foundation Medicine, Inc.</a>, No. 20-1886 (35 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/21-1709.OPINION.11-12-2021_1863674.pdf">ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc.</a>, No. 21-1709.Panel: Judges Lourie, O’Malley, and Chen, with Judge O’Malley writing the opinionYou should read this case if: you have a matter involving a technology license agreement that includes an arbitration clause.Our case this week includes an alliterative tongue twister—an agreement to arbitrate arbitrability. Say that three times fast.ROHM Japan and MaxPower agreed to a license with an agreement to arbitrate under the California Code of Civil Procedure. But they later disagreed about whether the license covers certain ROHM products. After MaxPower notified ROHM Japan of its intent to arbitrate the issue, ROHM USA, a subsidiary, sued for declaratory judgment of noninfringement of four MaxPower patents. The district court dismissed the complaint and ordered arbitration, reasoning that the license “delegate[s] the question of arbitrability to the arbitrator.”The Federal Circuit agreed. It relied on the license’s incorporation of the California Code, which states that an arbitrator “may rule on its own jurisdiction” in international commercial arbitration. Applying the law of the Ninth Circuit, the Federal Circuit held that the provision applies because the dispute is an international one (involving ROHM Japan). The Court rejected ROHM’s argument that the term “may” in the provision merely allows parties to agree to waive a court determination. Instead, “may” means that the question of arbitrability does not have to be decided by the arbitrator every time but only when disputed. That is how other circuits have interpreted similar phrases, including the Ninth Circuit.The Court also held, under Ninth Circuit law, that the license amounted to a “clear and unmistakable” delegation of arbitrability to the arbitrator because it incorporated the California Code. The Court explained that “[v]irtually all courts to consider the question, including [the Federal Circuit], have concluded that, in contracts between sophisticated parties, incorporation of rules with a provision on the subject is normally sufficient ‘clear and unmistakable’ evidence of the parties’ intent to delegate arbitrability to an arbitrator.” The Court declined to adopt the view of the lone Florida state court to hold to the contrary. And it distinguished a case about class arbitration as inapplicable to bilateral disputes.

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Christopher Gloria is a partner in the firm’s Patent Group. Mr. Gloria’s practice concentrates on domestic and international patent prosecution, IP due diligence, and IP litigation support including patent infringement and validity determinations.

Christopher Gloria

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Last Week in the Federal Circuit ( November 8-12): An Arbitrability Tongue Twister

Last Week in the Federal Circuit ( November 8-12): An Arbitrability Tongue Twister

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Fall colors are on full display in DC. But leaf peeping can’t keep us from following the latest news at the Federal Circuit. Below we provide our usual weekly s

Last week saw recently confirmed Judge Cunningham sitting for her first oral arguments (alongside her former boss, Judge Dyk). But we’ll have to wait a bit longer for her first authored opinion. 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: 4Rule 36: 6Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-2243.OPINION.11-4-2021_1859852.pdf">University of Strathclyde v. Clear-Vu Lighting LLC</a>, No. 20-2243 (185 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1065.opinion.11-3-2021_1859262.pdf">Kent International, Inc. v. United States</a>, No. 21-1065 (63 days)Case of the week: University of Strathclyde v. Clear-Vu Lighting LLC, No. 20-2243Panel: Judges Reyna, Clevenger, and Stoll, with Judge Stoll writing the opinion.You should read this case if: you have a matter involving obviousness of a claim that requires a particular result.35 U.S.C. § 103 (pre-AIA) contains the familiar prohibition against granting patent claims “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” To prove that a claim would have been obvious, one must generally show (1) that all the claimed limitations are disclosed in the prior art and (2) that a person of ordinary skill in the art would have been motivated to combine or modify the teachings in the prior art and would have had a reasonable expectation of success in doing so.The patent in our case of the week claimed methods for inactivating certain bacteria by exposing them to light at specific wavelengths without using a photosensitizer. Clear-Vu Lighting LLC challenged the claims by petitioning the Patent Trial and Appeal Board for inter partes review. The Board instituted review and issued a final written decision finding that the challenged claims were unpatentable for obviousness. Strathclyde appealed, and the Federal Circuit reversed.In the first part of its two-part analysis, the Court held that the Board’s finding that the prior art disclosed all the claimed limitations was not supported by substantial evidence. The Court focused on the Board’s analysis of a combination of two prior art references. One reference discussed using light to inactivate bacteria but disclosed only bacteria grown in the presence of a photosensitizer. Another reference disclosed illuminating bacteria without a photosensitizer but reported that the illumination failed to inactivate any of the bacteria. The Court explained that the combination of these references failed to teach inactivation of bacteria without using a photosensitizer, as the claimed methods required.In the second part of its analysis, the Court held that the Board lacked substantial evidence to find that a person of skill in the art would have had a reasonable expectation of success in combining those same references to arrive at the claimed invention. The Court faulted the Board for relying on one reference’s statement that certain wavelengths of light “may” inactivate certain bacteria. The Court held that “where the prior art evidences only failures to achieve that at which the inventors succeeded, no reasonable fact finder could find an expectation of success based on that teachings of that same prior art.” Here, because the references disclosed only a failure to inactivate bacteria in the absence of a photosensitizer, a skilled artisan would not have reasonably expected the opposite result; a mere prophetic statement about the contrary possibility was insufficient to support a different conclusion.

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Associate

John is an associate in the Litigation Department with substantial trial experience. His practice focuses on intellectual property litigation.

John S. Douglass

John Douglass

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Last Week in the Federal Circuit (November 1-5): Killing Bacteria with Light – An Unexpected Result?

Last Week in the Federal Circuit (November 1-5): Killing Bacteria with Light – An Unexpected Result?

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Last week saw recently confirmed Judge Cunningham sitting for her first oral arguments (alongside her former boss, Judge Dyk). But we’ll have to wait a bit long

While there may have been no public tricks or treats from the Federal Circuit last week, the Court still managed to issue a range of precedential and non-precedential 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: 2Non-precedential opinions: 9Rule 36: 0Longest pending case from argument: Tie between Corephotonics, Ltd. v. Apple Inc., No. 20‑1424 and Corephotonics, Ltd. v. Apple Inc., No. 20-1961 (138 days each)Shortest (non-Rule 36) pending case from argument: Gay v. McDonough, No. 21-1226 (17 days)Case of the week: CardioNet, LLC v. InfoBionic, Inc., No. 20-2123Panel: Judges Lourie, Dyk, and O’Malley, with Judge Lourie writing the opinion.You should read this case if: you have a matter involving § 101 eligibility.This week’s case of the week involves subject matter eligibility under 35 U.S.C. § 101, which defines patent eligible subject matter as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”. District courts have grappled with implementing this section and the Supreme Court and Federal Circuit’s prior guidance in this area.CardioNet involved patent claims directed to a heart monitoring apparatus that detects heart beats and selectively activates a filter for a particular type of wave. The district court denied the defendant’s motion for judgment on the pleadings that the asserted claims were ineligible under § 101, which the defendant appealed.The Federal Circuit reversed under the Alice/Mayo analysis. At step 1, the Federal Circuit held that the claims were directed to the abstract idea of filtering patient heartbeat signals, which “requires only basic mathematical calculations.” Because the invention involved merely implementing that abstract filtering idea on general-purpose computer hardware, the Federal Circuit rejected the argument that the claims were directed to a specific improvement in cardiac monitoring technology. At step 2, the Federal Circuit held that the claims did not recite an inventive concept sufficient to transform the nature of the claim into patent-eligible subject matter. It noted that the patent cites references that disclose filtering particular types of waves. Additionally, the Court held that even if the filter function was innovative, it was still a claim to a mathematical calculation, which is an abstract idea.This case is made more interesting because of its relation to an earlier Federal Circuit ruling. Last year, the Federal Circuit ruled in another § 101 challenge involving these parties that a patent claiming a system that detected different types of cardiac arrhythmias by measuring heartbeat variability was not abstract under § 101. See CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020). The Federal Circuit explained here that the earlier case lacked intrinsic evidence that the claimed technique had ever been used. But in this case, “the use of a filter to perform mathematical functions was not a new activity.”

The Regents of the University of California v. California Berry Cultivars, L.L.C.

Arch Development Corp. v. Genentech, Inc.

Whirlpool Corp. v. TST Water LLC

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Rachel Dolphin is an associate in the Litigation Department. Her practice focuses on intellectual property litigation and general commercial litigation.
Rachel’s intellectual property practice concent

Rachel Dolphin

Rachel S. Dolphin

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Last Week in the Federal Circuit (October 25-29): Taking the Pulse of Another § 101 Decision

Last Week in the Federal Circuit (October 25-29): Taking the Pulse of Another § 101 Decision

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While there may have been no public tricks or treats from the Federal Circuit last week, the Court still managed to issue a range of precedential and non-preced

Morrison & Foerster and the Berkeley Center for Law & Technology (BCLT) have teamed up to present a bi-weekly podcast addressing recent Federal Circuit decisions.In this episode, Brian Matsui and Wayne Stacy discuss the most recent constitutional challenges to IPRs addressed by the Federal Circuit.  They also take a look at how much discretion district courts have in addressing attorneys’ fees under Section 285.Grab the podcast using your favorite podcast provider, or try one of the links below:Apple Podcasts<a href="https://podcasts.google.com/feed/aHR0cHM6Ly9iY2x0LWV4cGVydC1zZXJpZXMuY2FzdG9zLmNvbS9mZWVk/episode/aHR0cHM6Ly9iY2x0LWV4cGVydC1zZXJpZXMuY2FzdG9zLmNvbS9wb2RjYXN0cy8yNzE1MS9lcGlzb2Rlcy9iZXlvbmQtdGhlLWhvbGRpbmdhLW51YW5jZWQtbG9vay1hdC10aGUtZmVkZXJhbC1jaXJjdWl0MzlzLXBhdGVudC1kZWNpc2lvbnMtZXBpc29kZS0z?sa=X&ved=0CAUQkfYCahcKEwiApaCmmfDzAhUAAAAAHQAAAAAQAg">Google Podcasts</a>Spotify

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: More IPR Constitutional Challenges & More Attorneys’ Fees

Podcast: More IPR Constitutional Challenges & More Attorneys’ Fees

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

Podcast

After a couple of weeks with lots of precedential decisions, the Federal Circuit caught its breath last week and issued only non-precedential ones (with the possible exception of a sealed opinion that may or may not be precedential). Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest. Given the lack of precedential decisions last week, we picked a precedential decision from the week before.Precedential opinions:  0Non-precedential opinions:  6Rule 36:  2Longest and shortest (non-Rule 36) pending case from argument:University of South Florida v. Fujifilm Medical Systems, No. 20-1872 (261 days) (sealed opinion)Case of the week:<a href="https://cafc.uscourts.gov/opinions-orders/20-2038.opinion.10-14-2021_1848948.pdf" target="_self">Energy Heating, LLC v. Heat On-The-Fly, LLC</a>, No. 20-2038Panel:  Chief Judge Moore and Judges Prost and Stoll, with Judge Prost writing the opinionYou should read this case if:  you have a matter involving attorneys’ feesThis week’s case of the week involves attorneys’ fees under 35 U.S.C. § 285.  Section 285 is pretty bare—“[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.”  That requires a case to be “exceptional,” a party to be the “prevailing party,” and the fees to be “reasonable.”  And even then, the statute says only that the court “may” award fees.  After the Supreme Court’s decisions in Octane Fitness, LLC v. ICON Health Fitness, Inc., and Highmark Inc. v. Allcare Health Management Systems, Inc., that leaves district courts pretty wide latitude to determine when a case is “exceptional” and, even so, whether to award fees.In the latest case, Heat On-The-Fly got into a spat with its competitors over alleged infringement of Heat On-The-Fly’s patent claims related to hydraulic fracking.  The district court held all claims invalid for obviousness and unenforceable due to inequitable conduct.  On inequitable conduct, the court found that Heat On-The-Fly deliberately withheld material information about prior public use and sales from the Patent Office during prosecution.  The district court ultimately granted attorneys’ fees to the competitors based in part on “the nature and extent of” the inequitable conduct and also on a jury finding that Heat On-The-Fly had acted in bad faith in representing that it had a valid patent.The Federal Circuit affirmed the fees award.  It rebuffed the argument that the district court had erred by not independently weighing an alleged lack of litigation misconduct:  “while the ‘manner’ or ‘broader conduct’ of litigation is relevant under § 285, the absence of litigation misconduct is not separately of mandatory weight.”  Instead, under Octane Fitness there is “no precise rule or formula” for deciding exceptionality.The Court also rejected complaints about a bright-line rule equating inequitable conduct with a requirement to award attorneys’ fees.  Heat On-The-Fly based that complaint on the district court’s observation that “it appears other courts have universally” found exceptionality after a finding of inequitable conduct.  The Federal Circuit saw nothing wrong with that observation because the “district court correctly explained that ‘a finding of inequitable conduct does not mandate a finding of exceptionality.’”Finally, the Court denied the competitors’ requests for attorneys’ fees for the appeal, also under Section 285.  The Court noted that it had the authority to grant those fees in the first instance.  But the request was “premature under Federal Circuit Rule 47.7, which requires that ‘the application must be made within thirty (30) days after entry of the judgment.’”  In other words, Heat On-The-Fly may not be out of the woods yet (although anecdotally, it seems to be fairly rare for the Federal Circuit to grant fees on appeal in the first instance).

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 (October 18-22): Inequitable Conduct = Attorneys’ Fees?

Last Week in the Federal Circuit (October 18-22): Inequitable Conduct = Attorneys’ Fees?

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After a couple of weeks with lots of precedential decisions, the Federal Circuit caught its breath last week and issued only non-precedential ones (with the pos

Morrison & Foerster and the Berkeley Center for Law & Technology (BCLT) have teamed up to present a bi-weekly podcast addressing recent Federal Circuit decisions. In our most recent episode, Seth Lloyd and Wayne Stacy discuss a recent decision about whether a non-disclosure agreement with a forum selection clause can prevent a party from filing a petition for inter partes review.  Seth and Wayne also look at another recent decision that serves as an important reminder for both appellants and appellees to be on the look out for alternative rationales in an appealed decision.  Grab the podcast using your favorite podcast provider, or try one of the links below:Apple Podcasts<a href="https://podcasts.google.com/feed/aHR0cHM6Ly9iY2x0LWV4cGVydC1zZXJpZXMuY2FzdG9zLmNvbS9mZWVk/episode/aHR0cHM6Ly9iY2x0LWV4cGVydC1zZXJpZXMuY2FzdG9zLmNvbS9wb2RjYXN0cy8yNzE1MS9lcGlzb2Rlcy9iZXlvbmQtdGhlLWhvbGRpbmdhLW51YW5jZWQtbG9vay1hdC10aGUtZmVkZXJhbC1jaXJjdWl0MzlzLXBhdGVudC1kZWNpc2lvbnMtZXBpc29kZS0y?sa=X&ved=0CAUQkfYCahcKEwiIicDlm9fzAhUAAAAAHQAAAAAQAQ">Google Podcasts</a>Spotify

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Podcast: NDAs & IPRs & Forum Selection Clauses, Oh My!

Our Podcast with BCLT and the comeback kid: SRI v. Cisco round II

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Podcast: NDAs & IPRs & Forum Selection Clauses, Oh My!

Even though last week was argument week, that didn’t slow down the issuance of decisions at the Federal Circuit. 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: 9Non-precedential opinions: 6Rule 36: 8Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1700.opinion.10-4-2021_1843771.pdf" target="_blank">Acceleration Bay LLC v. Take-Two Interactive Software</a>, No. 20-1700 (215 days)Shortest (non-Rule 36) pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1940.opinion.10-4-2021_1843781.pdf" target="_blank">In re: SurgiSil, L.L.P.</a>, No. 20-1940 (32 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-2043.opinion.10-4-2021_1843694.pdf" target="_blank">CosmoKey Solutions GmbH & Co. KG v. Duo Security LLC</a>, No. 20-2043 (October 4, 2021)Panel: Judges O’Malley, Reyna, and Stoll, with Judge Stoll writing the opinion and Judge Reyna concurringYou should read this case if: you have a matter involving subject-matter eligibility of patentsIn this week’s case of the week, the Federal Circuit held patent claims eligible under 35 U.S.C. § 101 solely based on its analysis of Alice step two. Under Alice, patent eligibility requires determination of (1) whether the asserted claim is directed to a patent-ineligible concept, such as an abstract idea, and (2) whether the claim adds an “inventive concept,” or whether any additional elements transform the nature of the claim into a patent-eligible application of the ineligible concept.In 2018, CosmoKey sued Duo Security for infringement of a patent that discloses a method of authenticating a user identity via activation of an authentication function on the user’s mobile device. The district court granted Duo’s motion for judgment on the pleadings, holding all asserted claims ineligible under § 101. In so doing, the district court concluded the claims are directed to the abstract idea of authentication (Alice step one) and fail to add an inventive concept because the patent merely teaches generic computer functionality to implement the abstract idea of authentication (Alice step two).The Federal Circuit reversed. It declined to resolve whether the asserted claims are directed to an abstract idea or a specific improvement, per Alice step one. Instead, the Court held that the claims recite an inventive concept under Alice step two. The Court found that the patent specification describes how a set of ordered claim steps provide “a technical improvement over conventional authentication methods” by making it easier to perform authentication on mobile devices with low complexity. The Court rejected the district court’s view that the patent admitted these steps were prior art. The district court had misread a passage as discussing prior art when in fact the passage describes the advantages of the inventors’ contribution over the listed prior art. Contrary to the district court’s analysis, the claims and specification thus “recite a specific improvement to authentication that increases security, prevents unauthorized access by a third party, is easily implemented, and can advantageously be carried out with mobile devices of low complexity.”In his concurrence, Judge Reyna agreed with the majority in reversing the district court’s judgment—but on the step-one basis that the claims are directed to patent-eligible subject matter. He criticized the majority for “skipping step one.” In his view, step one is a “loose filter” that prevents the patenting of abstract thoughts whereas step two is a “lifeline” accounting for additional reasons to save otherwise ineligible claims. Bypassing Alice step one, he noted, creates “a risk that claims that are not directed to an abstract idea might be deemed to ‘fail’ at step two.” Judge Reyna also observed that the majority’s reasoning, with which he agreed, is essentially a step-one rationale that distinguishes specific improvements from abstract ideas.

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Last Week in the Federal Circuit (October 4-8): An “Inventive” Authentication Scheme Takes The Cake Under Alice

Last Week in the Federal Circuit (October 4-8): An “Inventive” Authentication Scheme Takes The Cake Under Alice

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Even though last week was argument week, that didn’t slow down the issuance of decisions at the Federal Circuit. Below we provide our usual weekly statistics an