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

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

Last Week in the Federal Circuit

At Federal Circuitry, we’ve started discussing interesting Federal Circuit cases and developments with the Berkeley Center for Law & Technology in their Expert Series Podcasts.We very easily could have done a case of the week post about SRI, as it’s an interesting case on so many levels—both on the process and law. Starting with a bit of process: SRI is a comeback case. A comeback case is one that gets remanded by the Court and then comes back to the Court after the remand. (It also can be one where the Court rules and the Supreme Court sends it back too, but that’s not the circumstance here.) When a case comes back to a court of appeals after being remanded to a district court or agency, different circuits have different rules on whether—and to what extent—the original panel judges get the case back. In the Federal Circuit, usually one or two of the original judges on the panel hear the case when it gets appealed again. Sometimes you can find comeback cases on the Federal Circuit’s list of <a href="http://www.cafc.uscourts.gov/scheduled-cases">“scheduled cases”</a>—cases where a judge is being substituted into a panel are noted with a “+” sign. One reason (but not the only reason) a judge is being substituted into a “plus” panel can be to reconstitute some of the original panel that heard the case the first time it went on appeal.SRI is a little unique because not only is it a comeback case, but it has all three of the original panel members on it the second time around: Judges Lourie, O’Malley, and Stoll. And both times Judge Stoll wrote the opinion, the first time in favor of the defendant and the second time in favor of the patent owner plaintiff.What’s also interesting is what happened between the first and second times the case was decided by the Federal Circuit. While there were a lot of issues in the case, we’re just going to focus on one: willfulness. In round 1, the Court vacated and remanded the verdict of willful infringement that led to doubling the jury’s award of over $23 million. The Court concluded that “the record is insufficient to establish that Cisco’s conduct rose to the level of wanton, malicious, and bad-faith behavior required for willful infringement.” SRI I. And the Court noted that Cisco was unaware of SRI’s patent until May 2012, so there could be no willful infringement (and no enhanced damages) before that date. It thus remanded for the district court to determine whether the record supported willfulness after Cisco had knowledge of SRI’s patent and, if so, whether damages should be enhanced.On remand, the district court faithfully applied the willfulness standard that the Federal Circuit made “clear” in SRI I. The district court did state, in “a side note,” that “the Court of Appeals is not entirely consistent in its use of adjectives to describe what is required for willfulness.” The district court noted that in other cases, the Federal Circuit stated that “no more than deliberate or intentional infringement” is required. Nonetheless, the district court did not find substantial evidence that Cisco’s infringement was “wanton, malicious, and bad-faith” to permit willful infringement and enhanced damages.That brings us to round 2 in the Federal Circuit. The Court noted that “the district court reasonably read our opinion to require a more stringent standard for willful infringement than our other cases suggest—conduct rising to ‘the level of wanton, malicious, and bad-faith behavior.’” And rather than fault the district court or allow any confusion to persist, the Court stated:To eliminate the confusion created by our reference to the language “wanton, malicious, and bad-faith” in Halo, we clarify that it was not our intent to create a heightened requirement for willful infringement. Indeed, that sentence from Halo refers to “conduct warranting enhanced damages,” not conduct warranting a finding of willfulness.The Court then made clear that willfulness requires “a jury to find no more than deliberate or intentional infringement.” Applying that standard, the Court held that substantial evidence supports the jury’s willful infringement finding—reversing the district court, again (although this time for setting aside the jury finding rather than upholding it). As an outside observer, it definitely seems fitting and helpful that the same exact panel decided both cases, and could clarify—if not correct—what it said the first time around.One final thought: the Court didn’t remand for the district court to decide whether enhanced damages were warranted for willful infringement. One might wonder, how can that be? After all, enhancement is not automatic; “[d]iscretion remains with the district court to determine whether the conduct is sufficiently egregious to warrant enhanced damages.” Yet here, the Court reinstated the original enhancement award, noting that the district court “properly considered this issue” in its original decision (before SRI I) and that “vacating and remanding for the district court to decide the issue anew would serve little purpose.” Reinstatement was justified in part because the “parties informed this court for the first time in this appeal” of further facts about the damages period supporting the district court’s enhancement, facts the Court was unaware of in the first appeal. Whether that makes some part of SRI I merely an advisory opinion is a metaphysical question that perhaps we should leave for another day.

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

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

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At Federal Circuitry, we’ve started discussing interesting Federal Circuit cases and developments with the Berkeley Center for Law & Technology in their Expert 

Podcast

<p style="margin-top: 0in;background-image: initial;background-position-x: initial;background-position-y: initial;background-size: initial;background-repeat-x: initial;background-repeat-y: initial;background-attachment: initial;background-origin: initial;background-clip: initial;background-color: white;">Like the Federal Circuit, the U.S. Supreme Court has returned to in-person arguments.  But the Supreme Court has adopted a hybrid of its old free-for-all style of questioning and the more orderly Justice-by-Justice questioning format it used over the phone.  MoFo appellate co-chairs Deanne Maynard and Joe Palmore were recently interviewed by Reuters about what to expect.<p style="margin-top: 0in;background-image: initial;background-position-x: initial;background-position-y: initial;background-size: initial;background-repeat-x: initial;background-repeat-y: initial;background-attachment: initial;background-origin: initial;background-clip: initial;background-color: white;box-sizing: border-box;margin-bottom: 1rem;font-variant-ligatures: normal;font-variant-caps: normal;orphans: 2;widows: 2;webkit-text-stroke-width: 0px;text-decoration-thickness: initial;text-decoration-style: initial;text-decoration-color: initial;word-spacing: 0px;">Read the <a href="https://www.reuters.com/legal/government/mofo-scotus-co-chairs-keep-your-eye-these-two-justices-new-term-begins-2021-10-01/" target="_blank">full article</a>, which includes a video interview with Deanne and Joe.

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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Oral Argument Innovations at SCOTUS

High Court Orders Rethink Of $9.7M Award After TransUnion

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Like the Federal Circuit, the U.S. Supreme Court has returned to in-person arguments.  But the Supreme Court has adopted a hybrid of its old free-for-all style 

Oral Argument Innovations at SCOTUS

Last week the Federal Circuit judges geared up for their October argument session and perhaps enjoyed the beautiful fall weather in Washington. But the Court still found time to issue a dozen decisions in a wide range of patent and non-patent cases. 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: 4Non-precedential opinions: 8Rule 36: 0Longest pending case from argument: Tie between <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1107.opinion.10-1-2021_1843190.pdf" target="_blank">Modern Sportsman, LLC v. United States</a>, No. 20-1107, and <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1188.opinion.10-1-2021_1843177.pdf" target="_blank">McCutchen v. United States</a>, No. 20-1188 (297 days each)Shortest (non-Rule 36) pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/21-1051.opinion.9-30-2021_1842533.pdf" target="_blank">AMC Multi-Cinema, Inc. v. Fall Line Patents, LLC</a>, No. 21-1051 (30 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1992.opinion.9-29-2021_1841724.pdf" target="_blank">In re Vivint, Inc.</a>, No. 20-1992Panel: Chief Judge Moore and Judges Schall and O’Malley, with Chief Judge Moore writing the opinionYou should read this case if: you have a matter involving serial IPR petitions or ex parte reexamination requestsFans of statutory interpretation or administrative law will find our latest case of the week to be an interesting read. In this case, a company filed three IPR petitions challenging one of Vivint’s patents. The PTAB declined to institute review on all three petitions. For two of the petitions, the Board determined that the petitioner had not shown a reasonable likelihood that it would prevail on at least one challenged claim. As for the third petition, the Board did not address the merits of the petition’s patentability arguments, but instead exercised its discretion to deny institution based on the petition’s similarity to the petitioner’s other IPR petitions.The petitioner then requested ex parte reexamination of Vivint’s patent, asserting some of the same prior art and arguments that it had raised in its third IPR petition. The Board granted the reexamination request, concluding that the request raised a “substantial new question of patentability,” as required by 35 U.S.C. § 303(a), despite its overlap with the previously denied IPR petitions. Vivint responded by asking the Patent Office to dismiss the reexamination under 35 U.S.C. § 325(d), which permits the Patent Office to deny reexamination when “the same or substantially the same prior art or arguments previously were presented to the Office.” Vivint contended that Board’s rationale for denying the third IPR petition—its similarity to the previous IPR petitions—applied equally to the reexamination request and compelled dismissal of the reexamination under § 325(d). The Patent Office declined to dismiss the reexamination based primarily on its view that § 325(d) authorizes the Office only to reject a request for reexamination, not to terminate a reexamination once it has been ordered. An examiner ultimately determined that all of the challenged claims in Vivint’s patent were unpatentable, and the Board affirmed the examiner’s decision.The Federal Circuit vacated and remanded with instructions for the Patent Office to dismiss the reexamination. To start, the Court rejected Vivint’s argument that the ex parte reexamination request did not raise a substantial new question of patentability because it “repackaged” the arguments advanced in the third IPR petition. The Court explained that a question of patentability does not cease to be “new” merely because it has been presented to the Patent Office. Rather, “a question of patentability is new until it has been considered and decided on the merits” by the Patent Office. And under that standard, all of the questions of patentability raised in the reexamination request were new, including two that were identical to grounds asserted in the third IPR petition. The Court reasoned that the Patent Office denied that petition based on its similarity to other previously filed petitions and did not “address the merits of the patentability arguments” in the third petition.But the Federal Circuit went on to hold that the Patent Office’s decision to order ex parte reexamination was arbitrary and capricious in violation of the APA. As an initial matter, the Court rejected the Patent Office’s argument that § 325(d) decisions are “committed to agency discretion” and thus unreviewable under the APA. That provision’s “permissive language” was not enough to overcome the presumption of judicial review. (In IPRs, by contrast, statutory questions related to the Patent Office’s institution decision are generally unreviewable under the AIA’s no-appeal bar, as we have previously noted in <a href="https://federalcircuitry.mofo.com/topics/Last-Week-in-the-Federal-Circuit-March-8-12--The-NeverEnding-Story-of-the-AIAs-No-Appeal-Bar.html">The NeverEnding Story of the AIA’s No-Appeal Bar</a>.) The Federal Circuit also disagreed with the Patent Office’s position that it lacked authority under § 325(d) to terminate an already-ordered reexamination. The Court explained that an agency generally has the inherent power to reconsider its own decisions, and nothing in the statutes and regulations governing ex parte reexaminations deprives the Patent Office of that authority. Finally, the Federal Circuit concluded that the Patent Office inconsistently applied § 325(d) by denying the third IPR petition based on its similarity to the petitioner’s other IPR petitions, but then granting an ex parte reexamination request that was also similar to those previous petitions.The Court emphasized that this holding was “limited”: it noted that § 303(a) authorizes the Patent Office’s Director to order ex parte reexamination “[o]n his own initiative,” and that § 325(d) does not apply to this “own initiative” authority. Thus, the Court left open the possibility that the Director could order reexamination under this authority even when a challenger has previously filed similar requests or petitions. But because the Director did not invoke this “own initiative” authority in this case, the Court concluded that “the Patent Office should not have ordered reexamination, or, at minimum, should have terminated the reexamination once Vivint requested that it do so.”

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Last Week in the Federal Circuit (September 27-October 1): IPRs, Ex Parte Reexams, and the APA

Last Week in the Federal Circuit (September 27-October 1): IPRs, Ex Parte Reexams, and the APA

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Last week the Federal Circuit judges geared up for their October argument session and perhaps enjoyed the beautiful fall weather in Washington. But the Court st

Although the Federal Circuit didn’t issue a lot of precedential decisions last week, it continued the recent trend of venue transfer decisions 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: 1Non-precedential opinions: 7Rule 36: 0Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-2291.opinion.9-21-2021_1837706.pdf" target="_blank">Athey v. United States</a>, No. 20-2291 (104 days)Shortest (non-Rule 36) pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/21-154.order.9-22-2021_1838450.pdf" target="_blank">In re: Cirba Inc.</a>, No. 21-154 (19 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/21-160.order.9-24-2021_1839676.pdf" target="_blank">In re Juniper Networks, Inc.</a>, 2021-160, September 24, 2021Panel: Judges Lourie, Bryson, and Taranto, in an unsigned, per curiam decisionYou should read this case if: you have a matter involving a request for change of venue.Our latest case of the week “is a very close cousin” of two other Federal Circuit decisions where Judge Albright was ordered to transfer cases from his Waco courtroom to California. In this latest case, the plaintiff, referred to here as “Brazos,” filed several complaints in the Waco Division of the Western District of Texas. Brazos alleged that Juniper, a Delaware corporation headquartered in Sunnyvale, California, infringed its patents. Juniper moved to transfer the case for convenience under 28 U.S.C. § 1404(a) to the Northern District of California. The district court acknowledged that the suits could have been brought in the transferee district but nonetheless denied transfer. In the district court’s view, Juniper had not established that the Northern District of California was a “clearly more convenient forum” for this litigation.The Federal Circuit reversed. It concluded that the “district court committed legal errors”: “several of the most important factors bearing on the transfer decision in this case strongly favor the transferee court, and no factor favors retaining the case in the transferor court.” First, Juniper argued that the allegedly infringing products were developed in Northern California, and many of its potential witnesses were there. Juniper identified 11 potential witnesses in Northern California, compared to one Brazos employee who was in, or near, the Western District of Texas. The Federal Circuit noted that the district court “clearly erred in not giving sufficient weight to the relative convenience of the transferee forum for the potential witnesses, particularly in light of the striking imbalance in the parties’ respective presentations on this factor.”Second, the Federal Circuit concluded that the district court also erred in applying the local interest factor. It reasoned that the transferee venue has a greater localized interest in the dispute, favoring transfer. After all, the events forming the basis for Brazos’s infringement claims occurred mainly in the Northern District of California; none occurred in the Western District of Texas. The Federal Circuit held that the district court was wrong to emphasize Juniper’s general presence in Texas (i.e., small office in Austin). That presence was untethered to the lawsuit. Brazos’s presence in Waco was also unconvincing, because such “recent and ephemeral” presence in the transferor forum should be given little or no weight.Third, the Federal Circuit concluded that the district court erred in its assessment of the availability of sources of proof. According to the Federal Circuit, the district court should have weighed that factor in favor of transfer based on the difference between the two competing venues with respect to the sources of proof.Fourth, the Federal Circuit held that the district court erred in finding that the potential need for recourse to compulsory process weighed against transfer. Because no party expressly identified any witness as unwilling to testify, this factor was neutral at best.And last, the Federal Circuit was unconvinced by the district court’s reasoning that a faster median time to trial in Texas favored non-transfer. The Court reiterated its view that the district court congestion factor is “the ‘most speculative’ of the factors bearing on the transfer decision” and generally entitled to little weight. That was especially true here, it explained, because Brazos doesn’t make products covered by the patents and had failed to show any need for quick resolution. Thus, even “if the district court’s projection of the likely time to trial in the two venues is accurate, the court did not point to any reason that a more rapid disposition of the case that might be available in Texas is worthy of important weight.”Based on these considerations, the Federal Circuit granted Juniper’s petition for a writ of mandamus, vacated the district court’s order denying Juniper’s motion to transfer, and directed it to grant the transfer motion.

Associate

Sumaiya Sharmeen counsels clients in complex IP litigation matters in the hardware, software, medical device, biotechnology, and pharmaceutical industries.
Sumaiya is a member of the firm’s Intellectu

Sumaiya Sharmeen

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Last Week in the Federal Circuit (September 20-24): Venue, Venue, Venue

Last Week in the Federal Circuit (September 20-24): Venue, Venue, Venue

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Although the Federal Circuit didn’t issue a lot of precedential decisions last week, it continued the recent trend of venue transfer decisions out of the Wester

Nishi Tavernier, Morrison & Foerster associate, co-authored this post.We’re still waiting (and probably will be for a little while) for the first opinion from newly confirmed Judge Tiffany Cunningham. But in the meantime, we provide below 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: 2Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1579.opinion.9-14-2021_1833903.pdf" target="_blank">Atilano v. McDonough</a>, No. 20-1579 (161 days)Shortest (non-Rule 36) pending case from argument: Tie between <a href="http://www.cafc.uscourts.gov/opinions-orders/21-1001.opinion.9-13-2021_1832971.pdf" target="_blank">Apple Inc. v. Firstface Co., Ltd.</a>, No. 21-1001 and <a href="http://www.cafc.uscourts.gov/opinions-orders/20-2347.opinion.9-13-2021_1832944.pdf" target="_blank">Firstface Co., Ltd. v. Apple Inc.</a>, No. 20-2347 (13 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1793.opinion.9-14-2021_1833974.pdf" target="_blank">Omega Patents, LLC v. CalAmp Corp.</a>, 20-1793, 20-1794Panel: Judges Dyk, Prost, and Hughes, with Judge Prost writing the opinion and Jude Hughes joining in part and dissenting in partYou should read this case if: you have a matter involving technical or damages expert testimony, or damages apportionmentOur latest case of the week continues the trend of recent decisions addressing district court control of expert testimony (see <a href="https://federalcircuitry.mofo.com/topics/Last-Week-in-the-Federal-Circuit-August-23-27-Supporting-Damages-Experts-Testimony.html">Last Week in the Federal Circuit (August 23-27): Supporting Damages Expert’s Testimony</a>). In the latest case, accused infringer CalAmp argued that the district court improperly permitted patent owner Omega’s technical expert to testify beyond the scope of his expert report, depriving CalAmp of adequate notice of his infringement theory and an opportunity to prepare its case in response. At trial, Omega’s technical expert testified about how the accused products practice an “enabling data” limitation. But according to CalAmp, the expert’s report never disclosed this testimony. The Federal Circuit rejected CalAmp’s appeal challenge. It explained that the expert report specifically pointed to the accused features that were the basis for his trial testimony. That “provided enough notice to CalAmp ‘to prepare its case adequately and to prevent surprise.’” The Federal Circuit highlighted that CalAmp had the opportunity to question Omega’s expert about the disclosure in deposition.The Federal Circuit similarly rejected CalAmp’s argument that Omega presented the jury with an improper infringement theory on another disputed limitation. The parties had agreed to the conditions under which a “device code” claim element was met and Omega presented the jury expert and deposition testimony about that limitation. But CalAmp argued Omega also presented an improper theory with other evidence and in closing arguments. The Federal Circuit held CalAmp waived that challenge because it never objected during the trial on this ground, nor did it ask for a limiting jury instruction. CalAmp was more successful, however, in challenging the district court’s refusal to permit CalAmp’s damages expert to rebut Omega’s expert testimony at trial. The district court had relied on law of the case to exclude the expert—it had prevented the expert from testifying at a first trial, and CalAmp had not directly appealed that ruling when it appealed other rulings to the Federal Circuit in a prior appeal. The Federal Circuit rejected that reasoning, because its mandate from the first appeal “explicitly instructed both parties ‘to achieve clarity by clearly presenting evidence in the retrial as to compensatory damages.’” That instruction “necessarily implied that the district court was ‘to consider damages consistent with the principles set forth in the opinion,’ including by reconsidering prior orders regarding evidence of damages.”Finally, the Federal Circuit ordered a new trial on damages for the additional reason that Omega’s damages theory failed to apportion damages based on the incremental value of the patented features. As a patent owner, Omega bore the burden of producing evidence to apportion damages between patented and unpatented features. The Court held that, although a patent owner may use a comparable license as a basis of determining an appropriate royalty, Omega “failed to adequately account for substantial ‘distinguishing facts’ between the proffered licenses and a hypothetical negotiation over a single-patent license.” The Federal Circuit thus vacated the jury’s damages award and remanded for a new trial.

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Nishi Tavernier is an associate in the Intellectual Property Litigation Group in the firm’s New York office. She focuses her practice on patent litigation and other complex intellectual property dispu

Nishi Tavernier

Nishi A Tavernier

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Last Week in the Federal Circuit (September 13-17): More Forays Into Expert Testimony and Damages

Last Week in the Federal Circuit (September 13-17): More Forays Into Expert Testimony and Damages

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Nishi Tavernier, Morrison & Foerster associate, co-authored this post.
We’re still waiting (and probably will be for a little while) for the first opinion from 

The Federal Circuit issued just one precedential opinion the week of Labor Day (along with several non-precedential opinions and Rule 36 judgments). But it’s an interesting one, addressing the interplay between arbitration agreements and nonappealability of decisions to institute inter partes review. 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: 8Rule 36: 4Longest and shortest (non-Rule 36) pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1975.opinion.9-9-2021_1831384.pdf" target="_blank">Team Worldwide Corporation v. Intex Recreation Corp.</a>, No. 20-1975 (94 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/21-146.order.9-8-2021_1830622.pdf" target="_blank">In re: MaxPower Semiconductor, Inc.</a>, No. 2021-146Panel: Judges O’Malley, Reyna, and Chen, with Judge Reyna authoring the order and Judge O’Malley dissenting in partYou should read this case if: you have a matter involving an agreement to arbitrate disputes regarding the validity of a patent.In 2007, ROHM and MaxPower entered a technology license agreement that included an arbitration clause. In 2019 and 2020, a dispute arose regarding whether the agreement covered certain ROHM products. In September 2020, ROHM filed a complaint seeking a declaratory judgment of non-infringement of four MaxPower patents in the Northern District of California and also filed four petitions for inter partes review with the Patent Trial and Appeal Board. The district court dismissed the complaint and compelled ROHM to arbitrate, but the Board instituted review in all four proceedings.MaxPower filed interlocutory appeals seeking reversal of the institution decisions, and it also sought a writ of mandamus to compel the Board to terminate or stay the IPR proceedings pending a decision by an arbitrator about whether IPR proceedings were appropriate. MaxPower argued that 35 U.S.C. § 294(a) precluded an IPR because it states that an agreement requiring arbitration of validity disputes “shall be valid, irrevocable, and enforceable, except for any grounds that exist at law or in equity for revocation of a contract.”A divided Federal Circuit panel rejected MaxPower’s arguments. All three judges agreed that MaxPower’s interlocutory appeals were barred by 35 U.S.C. § 314(d), which states that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” The Court explained Section 314(d) deprived the Federal Circuit of jurisdiction to hear an appeal of a decision whether to institute IPR.On the question whether mandamus relief was appropriate, the judges disagreed. The majority denied the mandamus petition because “[t]he Board is not bound by the private contract between MaxPower and ROHM,” and 35 U.S.C. § 294 “does not by its terms task the [Board] with enforcing private arbitration agreements.” Mandamus relief would require a “clear and indisputable right” to immediate review of the Board’s institution decisions, but 35 U.S.C. § 314(d) prevents the Federal Circuit from reviewing such decisions. Furthermore, the majority explained, MaxPower’s rights would not be irretrievably lost because it could raise its arbitration-related arguments after the Board issues final written decisions.In dissent, Judge O'Malley took the opposite view. She noted the “liberal federal policy favoring arbitration agreements” and read Section 294 to give MaxPower a clear and indisputable legal right to enforcement of the arbitration agreement. Further, Judge O'Malley reasoned, the majority’s decision “denie[d] MaxPower the benefit of any agreement to arbitrate validity.” She criticized the “strange result” that a patent challenger may be allowed to raise invalidity arguments in an IPR that a district court would dismiss pursuant to an arbitration clause.It remains to be seen whether other Patent Trial and Appeal Board panels will consider arbitration agreements in deciding whether to institute review, but in this particular battle between the powers of administrative agencies and private arbitrators, the agency won.

Nature Simulation Systems Inc. v. Autodesk Inc. (Northern District of California)

Wagner Aeronautical, Inc. v. Dotzenroth et al. (Southern District of California)

McCartney v. Sony/ATV Music Publishing LLC, et al. (Southern District of New York)

Certain Toner Cartridges and Components Thereof (International Trade Commission, 337-TA-918)

Toshiba v. Imation, et al. (Western District of Wisconsin).

Certain Marine Sonar Imaging Devices, Products Containing the Same, and Components Thereof (International Trade Commission, 337-TA-898).

Oracle America, Inc. v. Google, Inc. (Northern District of California).

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Roman Swoopes is head of the litigation department for Morrison Foerster’s Palo Alto office. He focuses his practice on patent, copyright, and trade secret litigation and counseling. He represents clients in industries including computer software, hardware, and peripherals, data storage, digital imaging, consumer electronics, music, and graphic design.

Roman A. Swoopes

Roman Swoopes

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Last Week in the Federal Circuit (September 6-10): The (Un)Enforceability Of Arbitration Agreements At The PTAB

Last Week in the Federal Circuit (September 6-10): The (Un)Enforceability Of Arbitration Agreements At The PTAB

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The Federal Circuit issued just one precedential opinion the week of Labor Day (along with several non-precedential opinions and Rule 36 judgments). But it’s an

The Federal Circuit returned to a full week of in-person arguments last week.  But that didn’t keep it from issuing a range of decisions in patent and non-patent cases.  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:  8Non-precedential opinions:  5Rule 36:  10Longest pending case from argument:  <a href="http://www.cafc.uscourts.gov/opinions-orders/19-2286.opinion.9-1-2021_1827960.pdf" target="_blank">Lubby Holdings LLC v. Chung</a>, No. 19-2286 (484 days)Shortest pending case from argument (non-Rule 36):<a href="http://www.cafc.uscourts.gov/opinions-orders/20-2229.opinion.9-3-2021_1829263.pdf" target="_blank">Bristol-Myers Squibb Company v. Sigmapharm Laboratories</a>, No. 20-2229 (1 day)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1799.opinion.9-1-2021_1828017.pdf" target="_blank">Belcher Pharmaceuticals, LLC v. Hospira, Inc.</a>, No. 20-1799Panel: Judges Reyna, Taranto, and Stoll, with Judge Reyna writing the opinionYou should read this case if: you have a matter involving allegations of inequitable conduct before the U.S. Patent & Trademark OfficeThis week’s case addresses a district court’s finding of inequitable conduct. Belcher submitted a New Drug Application for an injectable epinephrine formulation. In response to feedback from the FDA, Belcher raised the pH range in its manufacturing process to match the range used by another manufacturer for its already-approved epinephrine formulation.After submitting the drug application, Belcher filed a patent application covering its epinephrine formulation. The patent application explained that raising the processing pH range was “contradictory to one skilled in the art” and produced “unexpected” results. This argument won the day, with the examiner stating that the allegedly critical pH range led to allowance.Despite the examiner’s statements, Belcher’s Chief Science Officer later admitted that he knew prior art epinephrine formulations had the same pH range. In fact, Belcher’s drug application had referred to this range as “old” and had recognized that the prior art discussed the alleged unexpected result. Yet even though the officer was integrally involved in prosecuting the patent application, Belcher never disclosed this information to the Patent Office. The district court found that withholding this material information while arguing the criticality of the claimed pH range indicated a deceptive intent.The Federal Circuit affirmed the district court’s finding of inequitable conduct. The Court explained that withholding a material reference with the intent to deceive the Patent Office qualifies as inequitable conduct. Because Belcher did not dispute that its claims would have been obvious based on the withheld prior art, the Court held that the withheld art was “necessarily material to patentability.”The Court also affirmed the district court’s intent finding. Intent requires that the only reasonable inference that can be drawn is that the applicant (1) knew of the reference, (2) knew of its materiality, and (3) made a deliberate decision to withhold it from the USPTO. The Federal Circuit found no clear error in the district court’s findings on those issues. The district court had found that Belcher’s Chief Science Officer knew about the prior art epinephrine product and relied on this knowledge when dealing with the FDA, but then argued the criticality of the claimed pH range during patent prosecution. Given those findings, the Federal Circuit affirmed the district court’s conclusion that it was implausible the officer believed the undisclosed information to be irrelevant. <div style="position: absolute;left: -10000px;top: 0px;width: 1px;height: 1px;overflow-x: hidden;overflow-y: hidden;" id="_mcePaste"></div>

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Of Counsel

Dr. Ethan M. Weiner is of counsel in the firm’s Intellectual Property Group. His practice focuses on patent prosecution, IP due diligence, and patent portfolio management and counseling. Dr. Weiner handles a wide array of technologies, including pharmaceuticals, genomics, nanoparticle technologies, and medical devices.

Ethan M. Weiner Ph.D.

Ethan Weiner

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Last Week in the Federal Circuit (August 30-September 3): Candor at the Patent Office

Last Week in the Federal Circuit (November 2-6): Limits on Venue in Hatch-Waxman Cases

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The Federal Circuit returned to a full week of in-person arguments last week.  But that didn’t keep it from issuing a range of decisions in patent and non-paten

Last Week in the Federal Circuit (August 30-September 3): Candor at the Patent Office

With Labor Day around the corner and summer coming to a close, the Federal Circuit had a busy week with a lot of precedential opinions to pick from. 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:  5Rule 36:  0Longest pending case from argument:  <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1413.opinion.8-26-2021_1825247.pdf" target="_blank">MLC Intellectual Property LLC v. Micron Technology, Inc.</a>, No. 20-1413 (253 days)Shortest pending case from argument (non-Rule 36):  Tie between <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1758.opinion.8-26-2021_1825257.pdf" target="_blank">Juno Therapeutics, Inc. v. Kite Pharma, Inc.</a>, No. 20-1758 and <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1647.opinion.8-26-2021_1825204.pdf" target="_blank">Larson v. McDonough</a>, No. 20-1647 (51 days each)Case of the week: MLC Intellectual Property, LLC v. Micron Technology, Inc., No. 20-1413Panel: Judges Newman, Reyna, and Stoll, with Judge Stoll writing the opinionYou should read this case if: you have a matter involving exclusion of a damages expert’s testimonyOur case this week features the interplay of expert testimony and calculating damages with a sprinkling of the Federal Rules of Civil Procedure and Daubert. The case serves to remind us that even the most established experts—and the parties relying on their testimony—have to provide support for their assertions at the appropriate stage of litigation, lest their valued opinions be tossed aside as baseless, unsupported, and lacking value.MLC sued Micron for infringing a patent related to computer flash memory. During expert discovery, MLC’s damages expert submitted a report providing his understanding of the technology and of the state of the flash-memory market. The expert further attempted to reconstruct a hypothetical licensing negotiation between MLC and Micron. But Micron argued that the report opined on reasonable royalty rates after MLC had failed to produce key information directed to its damages theory when requested. It also argued that the report failed to provide a reasonable basis of fact or data explaining how the expert calculated the royalty rate.The district court granted Micron’s various motions seeking to preclude portions of the expert testimony under Rule 37 of the Federal Rules of Civil Procedure. But the district court certified its orders for interlocutory appeal under 28 U.S.C. § 1292(b), and the Federal Circuit granted MLC’s petition for permission to appeal.On appeal, the Federal Circuit held that the district court had not abused its discretion in prohibiting the expert from testifying about the reasonable royalty rate at trial. The royalty testimony was “not sufficiently tethered to the evidence presented” and “rest[ed] on an inference” that went beyond what the presented information implied. The Court also suggested the calculation should “rest[] on an accepted scientific theory or technique.”The Federal Circuit also found no abuse of discretion in the district court’s order striking portions of the expert report. Federal Rule of Civil Procedure 37 prohibits parties from relying on evidence that they failed to disclose adequately in response to interrogatories. Applying Ninth Circuit law, the Federal Circuit explained that district courts have “particularly wide latitude” in applying that rule. Although it found that the district court based its reasoning in part on a factual error, it saw no abuse of discretion in the district court’s conclusion that MLC had failed to disclose during fact discovery its claim that two previous licenses reflected a specific royalty rate and had failed to disclose extrinsic documents that its expert report later relied on. Those failures were enough to sustain the district court’s order to strike under the deferential standard of review. Finally, the Federal Circuit affirmed the district court’s grantof Micron’s Daubert motion to exclude MLC’s expert opinion on reasonable royalty for failure to apportion the patented parts from the non-patented parts of the invention. The Federal Circuit asserted that “[w]e have repeatedly held that when the accused technology does not make up the whole of the accused product, apportionment is required.”In a clean, one-two-three punch, the scope of MLC’s expert opinion was greatly limited because of what the district court found were untimely disclosures and unsubstantiated conclusions. Although the Federal Circuit’s opinion is lengthy, it is worth a read for its discussion of what district courts can require be disclosed during fact discovery and how those requirements relate to expert discovery.

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Last Week in the Federal Circuit (August 23-27): Supporting Damages Expert’s Testimony

Last Week in the Federal Circuit (August 23-27): Supporting Damages Expert’s Testimony

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With Labor Day around the corner and summer coming to a close, the Federal Circuit had a busy week with a lot of precedential opinions to pick from. Below we pr

It has been another steamy August week here in Washington and at the Federal Circuit, with eleven new opinions fresh off the press.  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:  5Non-precedential opinions:  6 Rule 36:  2 Longest pending case from argument:  Tie between <a href="http://www.cafc.uscourts.gov/opinions-orders/20-2322.opinion.8-19-2021_1822008.pdf" target="_blank">Campbell Soup Company v. Gamon Plus, Inc.</a>, No. 20-2322 and <a href="http://www.cafc.uscourts.gov/opinions-orders/20-2344.opinion.8-19-2021_1821952.pdf" target="_blank">Campbell Soup Company v. Gamon Plus, Inc.</a>, No. 20-2344 (73 days)Shortest pending case from argument (non-Rule 36):<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1708.opinion.8-18-2021_1821304.pdf" target="_blank">NuVasive, Inc. v. Hirshfeld</a>, No. 20-2321 (68 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1315.opinion.8-17-2021_1820379.pdf" target="_blank">Valve Corporation v. Ironburg Inventions Ltd.</a>, No. 20-1315.Panel: Judges Newman, Lourie, and Dyk, with Judge Dyk writing the opinionYou should read this case if: you have a case involving the authentication of prior art from the internet.Have you heard of the Wayback Machine?  If not, this digital archive of the internet has been cataloguing webpages since 1996.  Have you wondered whether courts would consider archived pages retrieved from this service as authentic prior art?  This week, the Federal Circuit endorsed the practice of patent examiners who rely on the Wayback Machine as evidence of web article’s public availability.Ironburg sued Valve Corp. for patent infringement over the Valve’s “Steam Controller.”  Valve challenged Ironburg’s patents in two inter partes reviews.  In both reviews, Valve asserted as prior art a printout of an online magazine article reviewing an Xbox360 controller.  This so-called “Burns article” was published in 2010, three years before the priority date of the patents-in-suit.  Valve’s printout of the article, however, was dated after the priority date.  Despite Valve’s request that the Patent Trial and Appeal Board compare the printout with copies of the Burns article included in the prosecution histories of related Ironburg patents, the Board declined to consider Valve’s printout as prior art as it had not been authenticated.The Federal Circuit reversed and remanded, holding that the Board had “an obligation” to compare Valve’s printout to the Burns article included in the submitted prosecution histories.  The Court explained that “[a]uthentication through comparison is routine.”  Further, a comparison of Valve’s ten-page printout with the nine-page copy of the Burns article from the submitted prosecution histories is “not burdensome.”  Conducting the comparison itself, the Court concluded that these were “substantially the same.”  The only difference was the date, which did not bear on the subject matter of the disclosure.The Federal Circuit also rejected Ironburg’s argument that, in the alternative, the Burns article is not prior art because it was not “publicly accessible.”  The Federal Circuit found overwhelming evidence of public accessibility based on several factors:  (1) an inventor of the challenged patents had submitted a declaration during prosecution of related patents stating that he facilitated the publication of the Burns article for promotional purposes; (2) patent examiners confirmed during those related prosecutions that the Burns article was published by a date that was before the priority date of the challenged patents; (3) the applicants during those related prosecutions, including a named inventor on the challenged patents, did not dispute the status of the Burns article as prior art; and (4) a patent examiner had found the Burns article through an internet search.  Although the Board did not address this argument, the Federal Circuit held that “overwhelming evidence” in the record precludes the Board from finding that the Burns article is not prior art.The Federal Circuit specifically noted the evidence of availability based on the “Wayback Machine.”  The Court noted that, according to Patent Office practice, examiners may use the Wayback Machine “as a source of information to determine when a Web reference was first made available to the public.”  The Court also observed that several district courts—including the Northern and Central Districts of California and the Northern District of Florida—have similarly taken judicial notice of the contents of webpages retrieved from the Wayback Machine and relied on the accessibility dates given by the Wayback Machine.  The Federal Circuit endorsed this approach, which may open the door for more district courts to follow the same practice going forward.

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Nate Tan is a member of the firm’s Litigation  Group with a focus on intellectual property.
Nate earned his J.D. from  Harvard Law School, where he was awarded the Dean’s Scholar Prize in  Intellectua

Nate Tan

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Last Week in the Federal Circuit (August 16-20): Controlling for Authentication

Last Week in the Federal Circuit (August 16-20): Controlling for Authentication

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It has been another steamy August week here in Washington and at the Federal Circuit, with eleven new opinions fresh off the press.  Below we provide our usual 