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-961465397{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

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The Federal Circuit is charged with disposing of the mandamus petitions that regularly arise from decisions denying transfer under 28 U.S.C. § 1404(a) in Texas patent litigation. The Fifth Circuit, whose law the Federal Circuit applies in such cases, rarely issues precedential transfer opinions—not even one a year over the last fifteen years. Few, if any, bear on the kinds of evidence and arguments commonly offered as part of transfer disputes in modern patent litigation. In In re TikTok, Inc., No. 23-50575, 2023 U.S. App. LEXIS 28880 (5th Cir. Oct. 31, 2023), the Fifth Circuit seized the opportunity to provide guidance on such evidence and arguments in the context of a high-tech intellectual property case not involving patent claims. Its opinion, issued October 31, 2023, will likely impact the availability of transfer for parties in popular Texas patent venues.The key takeaways from the TikTok opinion are:<ul><li dir="ltr">In software cases, if the defendant only allows certain engineers access to the relevant source code, the location of those engineers will likely bear heavily on the first private interest factor, “the ease of access to sources of proof.” This could have a significant effect on companies with source code accessible only to teams outside of Texas.</li><li dir="ltr">The convenience of witnesses who will have to travel significant distances regardless of how transfer is ruled on (e.g., witnesses abroad) must still be given substantial weight. This will likely improve the odds of transfer for defendants developing products in Asia seeking transfer to the West Coast or those in Europe seeking transfer to the East Coast.</li><li dir="ltr">Cases concerning foreign parties and conduct beyond Texas are good candidates for transfer absent a showing that individuals in the relevant Texas district have a documented connection to the dispute.</li><li dir="ltr">Post-motion activity and case progress may not weigh against transfer in circumstances where, like here, the movant seeks transfer early in a case and does not otherwise cause or contribute to any delays in resolving that motion.</li></ul>The Fifth Circuit granted mandamus and reversed Judge Alan D Albright’s denial of TikTok Inc.’s motion to transfer litigation from the Western District of Texas to the Northern District of California under 28 U.S.C. § 1404(a). The plaintiff is a Chinese company alleging that TikTok’s Chinese engineers took source code the plaintiff shared and used it to develop video-editing functionality that TikTok’s California engineers implemented in its popular app. TikTok, 2023 U.S. App. LEXIS 28880, at *2-3. TikTok petitioned the Fifth Circuit, not the Federal Circuit, for relief from Judge Albright’s denial of transfer because the claims are directed to copyright infringement, trade secret misappropriation, false advertising, and several state law torts—not patent infringement.The Fifth Circuit analyzed the private and public interest factors set out in In re Volkswagen of America, Inc., 545 F.3d 304 (5th Cir. 2008) (en banc). The relevant holdings on a factor-by-factor basis are below.<ul><li dir="ltr">The ease of access to source of proof favored transfer</li><ul><li dir="ltr">The Fifth Circuit reinforced that, “when the vast majority of the evidence is electronic, and therefore equally accessible in either forum, this factor bears less strongly on the transfer analysis.” TikTok, 2023 U.S. App. LEXIS 28880, at *7-8 (cleaned up) (quoting In re Planned Parenthood Fed’n Am., Inc., 52 F.4th 625, 630 (5th Cir. 2022)).</li><li dir="ltr">But the panel determined that the district court abused its discretion in treating the factor as neutral because the record evidence demonstrated that it would be relatively easier to access source code in the transferee forum than in the Western District. Id. at *8-9. Specifically, several TikTok engineers in the Northern District of California are permitted to access source code, whereas the only relevant TikTok engineer in Texas with access resides in the Northern District of Texas, not the Western District. Id. The Fifth Circuit emphasized that a proper analysis compares the relevant federal districts, not the relevant forum states. Id. (citing Volkswagen, 545 F.3d at 307). The Federal Circuit has made similar distinctions in the context of the local-interest factor. See In re Apple Inc., No. 2022-137, 2022 U.S. App. LEXIS 14398, at *6 (Fed. Cir. May 26, 2022).</li></ul><li dir="ltr">The availability of compulsory process was neutral</li><ul><li dir="ltr">The district court did not abuse its discretion in finding this factor neutral because TikTok failed to identity any unwilling non-party witnesses. TikTok, 2023 U.S. App. LEXIS 28880, at *11-13.</li></ul><li dir="ltr">The attendance for willing witnesses favored transfer</li><ul><li dir="ltr">The Fifth Circuit reaffirmed its “100-mile rule,” which provides that, when the distance between the transferor court and the proposed transferee court is more than 100 miles, “the factor of inconvenience to the witnesses increases in direct relationship to the additional distance to be traveled.” Id. at *13-14 (quoting Volkswagen, 545 F.3d at 315).</li><li dir="ltr">The panel determined that the district court abused its discretion by disregarding the convenience of the parties’ Chinese witnesses, who are closer to the Northern District of California than the Western District of Texas, making the former the “clearly more convenient venue for most relevant witnesses.” Id. at *14-15. This departs from Federal Circuit opinions holding that the 100-mile rule should not be rigidly applied when witnesses would have to travel significant distances regardless of forum. In re Apple Inc., 979 F.3d 1332, 1342 (Fed. Cir. 2020).</li><li dir="ltr">The panel also determined that the convenience of the California and Chinese TikTok engineering teams overwhelmed that of a single TikTok engineer residing in Irving, Texas. TikTok, 2023 U.S. App. LEXIS 28880, at *14-15.</li></ul><li dir="ltr">All other practical problems that make trial of a case easy, expeditious, and inexpensive were neutral</li><ul><li dir="ltr">The Fifth Circuit rejected the rationale that this factor weighed against transfer because the district court had familiarized itself with the case during the fourteen-month pendency of TikTok’s transfer motion. Id. at *16-18. The panel found that, under the specific facts before it, the district court abused its discretion by relying on the substantial post-motion case progress as weighing against transfer when that progress was attributable to the district court’s delay in deciding the motion. Id. The panel emphasized that § 1404(a) motions “should [take] a top priority in the handling of a case.” Id. at *16 (quoting In re Horseshoe Ent., 337 F.3d 429, 433 (5th Cir. 2003)). This echoes the Federal Circuit’s instructions in In re Apple Inc., 979 F.3d 1332, 1338 (Fed. Cir. 2020) and In re SK Hynix Inc., 835 F. App’x 600, 601 (Fed. Cir. 2021).</li></ul><li dir="ltr">The administrative difficulties flowing from court congestion were neutral</li><ul><li dir="ltr">The Fifth Circuit similarly rejected the district court’s rationale that this factor weighed against transfer due to the progress the case had made during the pendency of TikTok’s § 1404(a) motion in progressing towards to trial. Id. at *18-20. The panel distinguished Planned Parenthood, in which the petitioner inexcusably delayed seeking transfer until months into discovery, on the ground that the trial court—not TikTok—was responsible for the delayed resolution here. Id. at *19 (citing Planned Parenthood, 52 F.4th at 631). To find the post-motion progress towards trial as weighing against transfer in that circumstance was an abuse of discretion. Id. at 15-16.</li></ul><li dir="ltr">The local interest in having localized interests decided at home was neutral</li><ul><li dir="ltr">The Fifth Circuit affirmed the district court’s finding that this factor was neutral because the alleged act giving rise to suit—the misappropriation of source code—occurred in China. Id. at *21-22 (citing Def. Distrib. v. Bruck, 30 F.4th 414, 435 (5th Cir. 2022)).</li></ul><li dir="ltr">The familiarity of the forum with the law that will govern the case was neutral</li><ul><li dir="ltr">The Fifth Circuit first found that the district court abused its discretion by failing to conduct a “good-faith” choice-of-law analysis to ascertain which jurisdiction’s law would apply to the state law claims. Id. at *23.</li><li dir="ltr">The panel also found that the district court abused its discretion by finding that it was more capable of deciding claims arising under Texas law without considering whether those laws were so “exceptionally arcane” that the Northern District of California would be less equipped to handle them. Id. at *23-24.</li></ul></ul>Having weighed these factors, the Fifth Circuit summarized the case as one “concern[ing] Chinese intellectual property that was allegedly infringed and misappropriated by employees located in China” and remarked that “[t]he only individuals in the United States who have any documented connection to this dispute are located outside the district.” Id. at *25. It held, therefore, that “[t]he Northern District of California is a clearly more convenient venue to adjudicate this case.” Id.In concluding, the opinion noted that “the Federal Circuit has reached conflicting outcomes in reviewing mandamus petitions from the Western District of Texas” over the last few months before characterizing the instant opinion as a means to “improve ‘consistency of outcomes’ by further instructing when transfer is—or, for that matter, is not—warranted in response to a § 1404(a) motion.” Id. at *27 & n.15.

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Brian Nash co-chair's Morrison Foerster’s global IP Litigation Group and cross-disciplinary Intellectual Property Group.

Brian C. Nash

Brian Nash

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Associate

Regan Rundio is an associate in the Intellectual Property Litigation Group, based in the Austin office. He draws on his experience as a former federal district court clerk and patent examiner at the U.S. Patent & Trademark Office (USPTO) to develop favorable litigation strategies for clients. Regan’s background is in the semiconductor devices, consumer electronics, robotics, and fintech industries.

Regan J. Rundio

Regan Rundio

Fifth Circuit Weighs In on Transfer Factors In High-Tech IP Case

The Federal Circuit is charged with disposing of the mandamus petitions that regularly arise from decisions denying transfer under 28 U.S.C. § 1404(a) in Texas patent litigation. 

Federal Circuit Insights

Now that we’re nearing the end of 2022 (crazy, right?), we thought we’d update our data on when Federal Circuit judges sit. We looked at this in early 2021 (<a href="https://federalcircuitry.mofo.com/topics/When-Do-Federal-Circuit-Judges-Sit">When Do Federal Circuit Judges Sit?</a>), and we’ve twice looked at data on how often the judges sit (<a href="https://federalcircuitry.mofo.com/topics/how-often-do-federal-circuit-judges-sit-2022" target="_self">How Often Do Federal Circuit Judges Sit 2022?</a>and <a href="https://federalcircuitry.mofo.com/topics/how-often-do-federal-circuit-judges-sit" target="_self">How Often Do Federal Circuit Judges Sit?</a>).As a reminder, we’re looking at when Federal Circuit judges sit for oral argument. We count each oral argument panel a judge sits on. But we exclude panels that hear just one case, sometimes called plus panels because they’re often identified on the schedule with a plus (like Panel D+). One-case panels can happen for a variety of reason, such as for the rare oral argument on a motion or when a case comes back after a remand (so some portion of the original panel is reconvened).Based on that criteria, the chart below shows the total panel days sat each month across all judges (active and senior) through August 2022. Since this is totaling the sittings across all judges, each typical panel in a month adds three to a month’s total (one unit for each judge who sat on the panel).<div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/bltef680b5f6dbd6933/6362b996fd32d07c578ddec3/221102-blog-post-graph.PNG?format=auto&amp;quality=60" alt="blog post graph"/></div>As we previously found, the chart confirms that the Federal Circuit tends to sit less frequently in the summer, especially in July and August. But the chart shows something new since our last look—although panel sittings continued at a relatively steady pace throughout the many pandemic-related shutdowns in 2020 and 2021, 2022 has been different. Every month in 2022 so far has consistently had the fewest number of judge sittings in our data compared to previous years. And the drop in sittings is fairly significant, often around two-thirds the number of judge sittings in a given month relative to pre-pandemic numbers. These results match what many readers probably had already anecdotally noticed. Although in past years, in non-summer months the Federal Circuit tended to have three oral argument panels per day during argument week, this year the Court has consistently had only two panels per day.The results also line up with our recent observations about how quickly the Federal Circuit is scheduling oral arguments (<a href="https://federalcircuitry.mofo.com/topics/will-your-appeal-have-argument-soon-part-ii">Will Your Appeal Have Argument Soon? Part II</a>). Since back in 2021, the Federal Circuit had been scheduling oral argument fairly quickly once briefing ended. That seemed to be because the Court had worked through any backlog of cases and because the number of new appeals had dipped. The drop in judge sittings per month in 2022 seems to be a delayed result of the same thing. But as we also observed, in more recent months, the time to schedule oral argument has significantly increased. That may mean that the number of appeals is picking back up, which could translate to a return to the previous norm of three panels per day during argument week. If that happens, you can be sure as always that it’ll show up in our data.

When Do Federal Circuit Judges Sit (2022)?

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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When Do Federal Circuit Judges Sit (2022)?

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Now that we’re nearing the end of 2022 (crazy, right?), we thought we’d update our data on when Federal Circuit judges sit.

Now that the Court is open to the public—not just for arguing counsel but for anyone to watch arguments and visit the Court—I thought it was time to take a look at argument timing again.Back in April 2021, I first looked because it seemed that cases were getting scheduled for argument more quickly (see post <a href="https://federalcircuitry.mofo.com/topics/will-your-appeal-have-argument-soon">here</a>). My perception was a reality, as cases were in fact being scheduled quicker when I compared argument timing year to year. And that was confirmed by judges who have noted in speeches that there is no backlog and cases are being set two to three months after the reply brief.Fast forward to today, that no longer seems to be the case. Appeals you might expect to be calendared haven’t been calendared yet. So that begs the question:are things slowing down? I decided to take a look again. And at least over the past three sittings, they are.Just taking district court and PTAB cases, the median time from appendix filing to argument for October was 172 days, for November 169 days, and for December 185 days. (I used the median, rather than the average, in order to account for outliers that might skew the results, such as expedited cases or comeback cases that might require some of the original panel.) By comparison, if we look at the first three sittings of the year, things were quicker: January 2022 was 122 days, February 2022 was 134 days, and March 2022 was 132 days. Going even further back, when I looked back in April 2021, the numbers for all appeals were even faster: 100 days for March 2021, 88 days for April 2021, and 81 days for May 2021.After we pulled the data, my co-editor Sam Goldstein wondered, maybe the Court always slows down at the end of the year. So I grumbled, and appellate paralegal Mia Harris and I took a look at the same months last year. As the chart below illustrates, the results were mostly the same. It’s taking longer and the end of the year isn’t an outlier from the beginning of the year:<div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/bltc2292b767dadbf40/635ffc811fb4e757e1111897/appealcharts2.jpg?format=auto&amp;quality=60" alt="District Court and PTAB Appeals chart"/></div>What, of course, does this all mean? I think if you currently have an appeal fully briefed and waiting for argument, it may take closer to six months than three months for argument. In fact, it doesn’t seem like it has been three months for some time. While we didn’t do the calculation every month, it seems that things were quicker in the early part of 2021 than they were a year ago, or certainly now. Whether this continues, who knows? If anything, the Court has shown it’s quite efficient and effective in getting cases to argument, so we very well could get back to the quicker pace in early 2021. That said, there’s one thing to keep in mind. From January 7, 2017 to March 3, 2022, the MSPB had no quorum and could issue no final decisions; now that a quorum exists and the MSPB can issue those decisions, it remains to be seen if there will be a flood of decisions subject to Federal Circuit review.

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Will Your Appeal Have Argument Soon? Part II

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Now that the Court is open to the public—not just for arguing counsel but for anyone to watch arguments and visit the Court—I thought it was time to take a look at argument timing again.

Will Your Appeal Have Argument Soon? Part II

Last week marked the start of the Supreme Court’s October 2022 Term. That meant another “long conference” order list acting on most of the petitions that had accumulated over the summer. The Court did not grant any new cases from the Federal Circuit. But it called for the views of the Solicitor General in two such cases—one of which may give our readers a sense of déjà vu. We’ve discussed the CVSG process in more detail in a <a href="https://federalcircuitry.mofo.com/topics/Federal-Circuitry-Jan-11-2022-A-CVSG-on-Claim-Construction-Procedures-and-Jury-Trial-Rights.html">previous</a> post.One CVSG came in <a href="https://www.supremecourt.gov/docket/docketfiles/html/public/21-1281.html">Interactive Wearables, LLC v. Polar Electro Oy</a>. The petition there asks the Court to consider questions including:1. What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step one of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?2. Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?Sound familiar? If so, that’s because those questions are nearly word-for-word identical to the questions presented in American Axle. As our readers may <a href="https://federalcircuitry.mofo.com/topics/supreme-court-refuses-again-to-jump-back-into-the-101-fray">recall</a>, in American Axle, a split Federal Circuit panel held a manufacturing-method claim ineligible under Section 101. The Federal Circuit denied en banc rehearing by a 6-6 vote. The Supreme Court then CVSGed the case. The Solicitor General recommended granting review, noting that the Supreme Court’s existing Mayo/Alice patent-eligibility framework “has given rise to substantial uncertainty.” But in an anticlimactic end to the saga, the Court nonetheless denied the petition.Compared to American Axle, Interactive Wearables seems to be an unlikely candidate for review. In American Axle, there were strong dissents at the panel and rehearing stages. In Interactive Wearables, the Federal Circuit panel summarily affirmed under Rule 36, and there were no noted dissents from the denial of rehearing. And American Axle involved a method for manufacturing automobile parts; as the government’s CVSG brief noted, “such industrial techniques have long been viewed as the paradigmatic examples” of patentable inventions. Interactive Wearables, by contrast, involves a “wearable content player” with what the district court described as “generic computer components.” Those sorts of claims can raise greater eligibility concerns.So what could explain the CVSG in Interactive Wearables just a few months after the American Axle cert denial? Perhaps the Justices had second (or third) thoughts about declining to enter the Section 101 fray. Or perhaps it had something to do with Justice Jackson replacing Justice Breyer in the interim. It will be interesting to see whether the Solicitor General recommends a grant again in Interactive Wearables—and, either way, whether the petition meets the same fate as American Axle.The other CVSGed Federal Circuit case was <a href="https://www.supremecourt.gov/docket/docketfiles/html/public/22-37.html">Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline LLC</a>. Some quick background: the Hatch-Waxman Act lets generic drug manufacturers market their products with a so-called “skinny label” that “carves out” uses covered by the brand manufacturer’s patents. In Teva, a jury found the generic manufacturer liable for induced infringement despite its use of such a carve-out. The brand manufacturer had argued that other parts of the generic’s label and the generic company’s marketing materials still encouraged physicians to prescribe the drug for infringing uses. A divided Federal Circuit panel upheld the jury’s verdict, and the Federal Circuit denied en banc rehearing over the dissent of three judges.The generic manufacturer is now asking the Supreme Court to step in. The question presented in its petition is:If a generic drug’s FDA-approved label carves out all of the language that the brand manufacturer has identified as covering its patented uses, can the generic manufacturer be held liable on a theory that its label still intentionally encourages infringement of those carved-out uses?There is no formal deadline for the CVSG briefs in these cases. But based on past practice, the briefs could come by next spring, in time for the Supreme Court to consider the petitions before it recesses at the end of June 2023.

Another Term, Another Section 101 CVSG

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Another Term, Another Section 101 CVSG

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Last week marked the start of the Supreme Court’s October 2022 Term. That meant another “long conference” order list acting on most of the petitions that had accumulated over the summer. 

Patent Term Adjustment (PTA) is additional patent term for U.S. patents to compensate for delay in issuance. The statute (35 U.S.C. § 154(b)) provides three bases for PTA: delayed response by the USPTO (“A delay”), failure to issue a patent within three years (“B delay”), and delay due to appeal (“C delay”). For C delay, patent term is extended for “appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability.”Read the <a href="https://lifesciences.mofo.com/topics/sawing-through-patent-term-the-federal-circuit-s-recent-decision-in-sawstop" target="_self">full blog post</a>.

Sawing Through Patent Term—the Federal Circuit’s Recent Decision In Sawstop

Mehran Arjomand is chair of the firm's Patent Trial and Appeal Board Practice and heads the firm's technology patent practice. Mr. Arjomand began his legal career as a litigator. After five years, he 

Mehran Arjomand

Mehran Arjomand is chair of the firm's Patent Trial and Appeal Board Practice and heads the firm's technology patent practice. Mr. Arjomand began his legal career as a litigator. After five years, he joined Morrison & Foerster, where he developed a strong foundation in USPTO prosecution and procedure. With his combined litigation and prosecution experience, he is able to counsel clients on end-to-end strategies—from patent creation to patent challenges.

Dr. Meghan Poon counsels clients on patent preparation and prosecution, portfolio strategy, and IP due diligence in the areas of biotechnology and biologics. She has significant experience in diverse technologies including antibodies, cell therapies, gene therapies, diagnostics, and gene-edited plants. 

Meghan McLean Poon Ph.D.

Dr. Meghan Poon counsels clients on patent preparation and prosecution, portfolio strategy, and IP due diligence in the areas of biotechnology and biologics. She has significant experience in diverse technologies including antibodies, cell therapies, gene therapies, diagnostics, and gene-edited plants.

Meghan Poon

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Sawing Through Patent Term—the Federal Circuit’s Recent Decision In Sawstop

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Patent Term Adjustment (PTA) is additional patent term for U.S. patents to compensate for delay in issuance.

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

How Often Do Federal Circuit Judges Sit 2022?

How Often Do Federal Circuit Judges Sit 2022?

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

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

Is It Ever Too Late To Be Rule 36’d?

Brian Matsui co-chairs Morrison Foerster’s Appellate and Supreme Court practice. Brian is a go-to appellate advocate for sophisticated clients in complex appeals nationwide. 

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Is It Ever Too Late To Be Rule 36’d?

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

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

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

Jurisdictional Ping-Pong Averted

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

As we’ve written about multiple times, a petition for certiorari from the Federal Circuit’s starkly divided decision in American Axle has been pending at the Supreme Court for some time (see <a href="https://federalcircuitry.mofo.com/topics/The-Latest-on-Federal-Circuit-Cases-before-the-Supreme-Court.html">here</a>, <a href="https://federalcircuitry.mofo.com/topics/CVSG-in-American-Axle-and-Cases-in-General-What-Does-It-Mean-A-QA-With-Deanne-Maynard.html">here</a>, and <a href="https://federalcircuitry.mofo.com/topics/Federal-Circuit-CVSG-Update.html">here</a>).  Many thought this would be the case in which the Supreme Court finally provided some clarification on Section 101.  After all, the Federal Circuit split six-to-six in denying rehearing, with opinions stating the need for revisiting the Supreme Court’s precedent.  Well now the Supreme Court has finally acted, but perhaps not in the way many had hoped:  it denied the petition this morning, perhaps signaling that the Federal Circuit will need to resolve the thorny 101 issues on its own en banc or Congress will need to act. Although expectations were high for a cert. grant, the denial was not entirely a surprise.  To be sure, the Supreme Court had called for the views of the Solicitor General in the case a year ago, which is usually a sign of at least some interest in the case at the Court.  And when the Solicitor General finally filed her brief, she urged the Court to grant the petition.  When the Solicitor General recommends a grant of certiorari, the Court almost always does so.So why are we not surprised (or at least not shocked)?  Well, two years ago the Supreme Court had a similar opportunity to clarify 101 in Hikma or Athena, and it declined.  Like American Axle, the Court called for the views for the Solicitor General in Hikma. And while the Solicitor General didn’t recommend granting in that case, the government said the Court’s 101 standards needed clarification and identified another case (Athena) that the Court should review.  At the time, the betting money would have expected a grant.  Instead, the Court said no.  We wondered then if the Court wanted to just take itself out of the 101 business (see our discussion <a href="https://federalcircuitry.mofo.com/topics/200714-supreme-court-review-sometimes-what-is-not-decided-matters-more-than-what-is.html">here</a>).All of this begs the question of what happens next given the sharp division in the Federal Circuit on 101.  It could be that the Supreme Court is just waiting for the right vehicle to address the issue.  It didn’t need to call for the views of the Solicitor General if it really was just opting out of 101 after denying cert. in Athena, which the Solicitor General said should have been granted two years ago.  And while the propeller shaft manufacturing claims in American Axle involve a relatively accessible technology in the mechanical arts—like the gas pedal claims in KSR—the Court might have concluded that the mechanical arts are not where 101 guidance is really needed.  There’s some support for that kind of speculation—the Supreme Court could have denied cert. in its June 27 Order List but instead waited until the June 30 one.  That suggests that someone in the Court may have been taking a second look at the petition.Going forward, the truth is we don’t know what the Supreme Court’s appetite will be for these kinds of patent cases.  Justices Kennedy and Breyer seemed particularly interested in patent cases. But now that they’ve retired, we don’t know if the current Court will have that same affinity in the future.

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Supreme Court Refuses (Again) to Jump Back into the 101 Fray

Supreme Court Refuses (Again) to Jump Back into the 101 Fray

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As we’ve written about multiple times, a petition for certiorari from the Federal Circuit’s starkly divided decision in American Axle has been pending at the Su

We’ve been updating our stats pretty frequently but haven’t had a recent post about what—if anything—has changed in affirmance rates as more data has been compiled.  So with basically 2½ years of data, I thought we could look again at affirmance rates across various different types of cases, mainly in the Court’s patent docket.When I first did this about two years ago (<a href="https://federalcircuitry.mofo.com/topics/200714-who-wins-who-loses.html">here</a>), I wasn’t surprised by the high affirmance rate (particularly in PTAB appeals).  But I was surprised by the fact that patent owners did substantially worse in appeals—when patent owners appealed, the Court affirmed 79% of the time, but when a defendant or patent challenger appealed, the Court affirmed 54% of the time.So what’s going on now, with our more robust data of almost 1800 cases?  The short answer is that patent owners continue to face a tough road on appeal, and non-patent owners do much better, at least as a matter of statistics.  For instance, in district court appeals, it’s basically a coin flip when it comes down to whether the judgment is affirmed or not for a non-patent owner appeal.So the details:  the overall affirmance rate for patent cases now is 72%.  For patent owner appeals, the affirmance rate is 78%.  And for non-patent owner appeals, the affirmance rate is a little over 59%.  That’s pretty similar to what we first saw when we had less data.If you just look at PTAB appeals, the affirmance rate is 76%.  And patent owners continue to struggle on appeal, with the Board being affirmed 83% of the time.  Conversely, patent challengers (non-patent owners) continue to do better, getting affirmed 62% of the time.In district court appeals, the affirmance rate remains lower at 67%, with patent owner appeals losing (getting affirmed) 71% of the time.  Remarkably, the non-patent owner appeal gets affirmed 54% of the time, which means that the appellant is getting some relief almost half the time.I also thought it would be interesting to look at Rule 36s.  About a third (34%) of all patent cases are Rule 36’d.  PTAB appeals are Rule 36’d more, at 39% compared to 28% for district court appeals.  And for non-patent owners, once you get a week or so past oral argument (when it’s less likely there will be a Rule 36), the appellant becomes the favorite—as the affirmance rate falls to 46% in PTAB non-patent owner appeals and 39% in district court non-patent owner appeals.One final caveat:  our data can tell us outcomes, not what those outcomes mean.  An appellee getting an affirmance certainly “won” the appeal.  But the same can’t be said about every appellant that doesn’t get affirmed.  As every lawyer knows, getting some relief in an appeal as an appellant doesn’t automatically mean you won the appeal.  Losing on all the big issues, but winning on a side issue doesn’t mean that you “won”—even though that’s how our stats view it.And, of course, if you want to play with the data on your own, you can do so <a href="https://federalcircuitry.mofo.com/statistics">here</a>.

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Who Wins, Who Loses – Still Worse To Be the Patent Owner on Appeal

Who Wins, Who Loses – Still Worse To Be the Patent Owner on Appeal

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We’ve been updating our stats pretty frequently but haven’t had a recent post about what—if anything—has changed in affirmance rates as more data has been compi