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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What Makes a Case Exceptional?

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

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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 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>.

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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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

Federal Circuit Insights

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

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Federal Circuit CVSG Update

Viking River Is Victorious in Compelling Individual PAGA Claim to Arbitration

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

Federal Circuit CVSG Update

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

Seth Lloyd, a member of Morrison Foerster’s Appellate and Supreme Court practice, has been counsel in more than a hundred appeals in federal and state courts nationwide.

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

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

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

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

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A Cert Grant On Veterans' Benefits And Equitable Tolling

A Cert Grant On Veterans' Benefits And Equitable Tolling

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

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

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One Last look at Patent Cases in January

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

One Last look at Patent Cases in January

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

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A CVSG on Claim Construction Procedures and Jury Trial Rights

A CVSG on Claim Construction Procedures and Jury Trial Rights

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

Now that it’s been roughly a month since the Federal Circuit issued mass sua sponte Arthrex orders (which we discussed in <a href="/topics/Early-Hints-About-What-Happens-Next-After-Arthrex" target="_self">Early Hints About What Happens Next After Arthrex</a>), we thought it was worth checking in on what’s happening post-Arthrex.As many readers probably saw, the PTO quickly issued guidance for parties who wish to seek Director (or right now, Acting Director) review under Arthrex.But since we’re focused on all things Federal Circuit, we wanted to report on what’s happening at the Court. Last week we saw filings from the PTO solicitor’s office giving its view of what Arthrex requires. The PTO took the position that, in cases where the issue is preserved, the Supreme Court’s decision warrants only a limited remand to give a party the opportunity to seek Director review. The limited remand would not require vacating the original PTAB panel’s decision, which would be a reversal from what the Federal Circuit did under its original Arthrex decision. And during the limited remand, the Federal Circuit would retain jurisdiction over the appeal so that the appeal could proceed promptly if the Director denies review.This week, the Federal Circuit began issuing orders that largely track the PTO’s suggested approach. In a per curiam order by the original Federal Circuit Arthrex panel (Chief Judge Moore and Judges Reyna and Chen), the Federal Circuit recalled its mandate from its original Arthex decision. That recall undoes the Federal Circuit’s earlier vacatur and remand of the PTAB’s decision for a new hearing before a new PTAB panel. The Court instead ordered a remand “for the limited purpose of allowing appellant the opportunity to request Director rehearing of the final written decision.” The Court gave the appellant 30 days to file a request for Director rehearing. But as suggested by the PTO, the original PTAB decision remains in effect pending any action by the Acting Director. And the Federal Circuit has otherwise retained jurisdiction over the appeal. It ordered the parties to inform the Court within 14 days of any action on the rehearing request, with the Federal Circuit Clerk to automatically reactivate the appeal upon notice that the Acting Director denied the rehearing request.In light of this order (and as many expected), the Supreme Court’s Arthrex decision is shaping up to be much less favorable to parties who preserved an Appointments Clause challenge than the Federal Circuit’s original decision. Because it appears that the Acting Director is unlikely to grant rehearing in the vast majority of cases, a remand under the Supreme Court’s Arthrex decision seems likely to lead only to delay rather than any real chance of a different outcome. Indeed, it appears several parties that had raised Arthrex earlier are coming to the same conclusion—we’ve seen multiple instances now where patent owners that previously raised an Arthrex challenge have now told the Federal Circuit they are no longer pursuing that challenge and instead wish their appeals to go forward.

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Arthrex Looks to Be Going Out With a Whimper

Arthrex Looks to Be Going Out With a Whimper   

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Now that it’s been roughly a month since the Federal Circuit issued mass sua sponte Arthrex orders (which we discussed in Early Hints About What Happens Next Af

Arthrex Looks to Be Going Out With a Whimper

What happens when two courts of appeal each think the other has exclusive jurisdiction over an appeal? Confusion and inter-circuit criticism. The latest chapter in such a dispute between the Federal and Fifth Circuits on the scope of the Federal Circuit’s exclusive jurisdiction in patent cases is unfolding now.Chandler v. Phoenix Services involves a so-called Walker Process claim. Walker Process monopolization claims are antitrust—not patent—claims based on the enforcement of patents procured by fraud. In Chandler, the defendants’ patent had been found unenforceable due to inequitable conduct in an earlier case. While that case was making its way to the Federal Circuit, the Chandler defendants allegedly took several steps to enforce the patent against competitors (including the Chandler plaintiffs), such as sending cease and desist letters, advertising the patent on their website, and asserting the patent in litigation. The Chandler plaintiffs then brought a Walker Process claim, alleging that the defendants were trying to enforce a patent they knew to be unenforceable. The district court granted summary judgment to defendants, finding that the plaintiffs lacked standing and that the statute of limitations had expired. The Chandler plaintiffs appealed to the Federal Circuit. But in a precedential order issued last month, the Federal Circuit declined jurisdiction and transferred the case to the Fifth Circuit—the regional circuit for this case arising from district court in Texas.In the transfer order, the Federal Circuit recounted blow-by-blow its previous dispute with the Fifth Circuit over which one had appellate jurisdiction over a similar claim. By way of background, 28 U.S.C. § 1295(a)(1) gives the Federal Circuit exclusive jurisdiction over appeals “arising under[] any Act of Congress relating to patents.” In Xitronix Corporation v. KLA-Tenco Corporation, the Federal Circuit issued a precedential order holding that it lacked appellate jurisdiction over a Walker Process case on the ground that it arose under antitrust law, not patent law. 889 F.3d 1075, 1078 (Fed, Cir. 2018) (“Xitronix I”). As the court explained, “patent claims will not be invalidated or reviewed based on the results of this case.” The Federal Circuit thus transferred the appeal to the Fifth Circuit.The Fifth Circuit, however, disagreed and shipped the Xitronix appeal back to the Federal Circuit. In doing so, it took a more expansive view of the Federal Circuit’s jurisdiction than the Federal Circuit itself had. The Fifth Circuit concluded that the case belonged in the Federal Circuit because it “touched on” patent law in that the plaintiff’s antitrust claim turned in part on whether the patent at issue was enforceable. Xitronix Corporation v. KLA-Tenco Corporation, 916 F.3d, 429, 441 (5th Cir. 2019) (“Xitronix II”).After receiving the bounce-back from the Fifth Circuit, the Federal Circuit in Xitronix accepted jurisdiction in a non-precedential decision. In doing so, however, it characterized the Fifth Circuit’s reasoning as “incorrect,” “untenable,” and based on a “misread[ing]” of Federal Circuit precedent. Xitronix Corp. v. KLA-Tencor Corp., 757 Fed. Appx. 1008, 1009 (Fed. Cir. 2019). Fast-forward to June 2021 and the Chandler appeal. The Federal Circuit again found itself with an appeal in a Walker Process case arising from a district court from within the Fifth Circuit. So what did it do? It adhered to the position articulated in the first (and precedential) Xitronix order, concluded it lacked appellate jurisdiction, and transferred the appeal to the Fifth Circuit. In doing so, it recounted its dispute with the Fifth Circuit in Xitronix. The Federal Circuit explained that while it had ultimately acquiesced to jurisdiction in Xitronix it had not backed down from its view that the appeal had actually belonged in the Fifth Circuit. The Federal Circuit defended its reasoning in Xitronix I, noting that in Gunn v. Minton 568 U.S. 251 (2013), the Supreme Court held that a state court had jurisdiction over a malpractice suit because it did not “arise under” federal patent law, despite requiring a patent law issue to be resolved. Drawing on Gunn, the Chandler court re-stated its position that “the risk of another circuit making an erroneous or inconsistent patent law decision within a Walker Process claim is not enough to trigger [Federal Circuit] jurisdiction over federal patent law cases.”What will happen next in Chandler? It seems likely that the jurisdictional ping-pong between Washington and New Orleans will not resume here and that the Fifth Circuit will take the case. As the Federal Circuit’s transfer order notes, the Fifth Circuit should have jurisdiction over Chandler even under the Fifth Circuit’s own reasoning in Xitronix II. That is so because the patent-at-issue had previously been ruled unenforceable, leaving no live patent law issues to be decided.  If the Federal Circuit’s prediction is correct, the underlying disagreement between the circuits will likely remain unresolved. And future appeals involving Walker Process and other patent-adjacent claims could continue to bounce between the two courts—unless and until one of them recedes from its view or the Supreme Court steps in.

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Joe Palmore co-chairs Morrison Foerster’s Appellate and Supreme Court practice. Chambers USA describes him as “an outstanding oral advocate,” who is “calm, focused, effective and doesn’t back down,” and has “complete command of the facts.” Joe “writes great briefs” (Chambers USA), with one client recounting that “the Court mirrored the language he thoughtfully chose in its ultimate order” (Legal 500).

Joseph R. Palmore

Joseph R. Palmore is co-chair of the firm's Appellate and Supreme Court Practice Group and Managing Partner for the Washington, D.C. office. Before joining Morrison Foerster, Joe was an Assistant to the Solicitor General at the United States Department of Justice and the Deputy General Counsel of the Federal Communications Commission (FCC).

Joseph Palmore

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Return to Sender: When Courts of Appeals Disagree on Which One Has Jurisdiction

Return to Sender: When Courts of Appeals Disagree on Which One Has Jurisdiction

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What happens when two courts of appeal each think the other has exclusive jurisdiction over an appeal? Confusion and inter-circuit criticism. The latest chapter

The Supreme Court issued its long-awaited decision today in United States v. Arthrex, Inc., Nos. 19‑1434, -1452, -1458. Although a majority of the Court held that Congress’s statutory scheme violated the Constitution, the Supreme Court once again preserved the availability of inter partes reviews for challenging issued patents. Still unknown is whether Arthrex will have any practical effect on practice at the Patent Trial and Appeal Board going forward.Read our <a href="https://www.mofo.com/resources/insights/210621-finding-constitutional-violation.html">client alert.</a>

Supreme Court Preserves (Again) Inter Partes Review Despite Finding Constitutional Violation

Alex Yap co-chairs the firm’s Patent Trial and Appeal Board (PTAB) practice and is a member of Morrison Foerster’s IP Litigation practice. 

Alex S. Yap

Alex Yap

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Supreme Court Preserves (Again) Inter Partes Review Despite Finding Constitutional Violation

CVSG in American Axle and Cases in General: What Does It Mean? A Q&A With Deanne Maynard

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The Supreme Court issued its long-awaited decision today in United States v. Arthrex, Inc., Nos. 19‑1434, -1452, -1458. Although a majority of the Court held th

Some of the big news a couple weeks ago was the Supreme Court’s decision to invite the Solicitor General (SG) to file a brief expressing the views of the United States in American Axle, a Section 101 case involving an industrial process for manufacturing. This action—commonly referred to as a CVSG (Call for the Views of the Solicitor General)—provides a strong indication that the Supreme Court is seriously considering granting review in a case.As readers no doubt know, the Supreme Court often CVSGs in patent cases before granting cert. The Court recently CVSG’d two 101 cases only to deny review last Term (discussed in our article <a href="https://federalcircuitry.mofo.com/topics/200714-supreme-court-review-sometimes-what-is-not-decided-matters-more-than-what-is.html">here</a>). Given the importance of CVSGs and the fact they are intermediate stopping points for many patent cert petitions that actually get granted, we decided to catch up with the co-chair of MoFo’s Appellate and Supreme Court practice, <a href="https://www.mofo.com/people/deanne-maynard.html">Deanne Maynard</a>, to discuss them. Before joining the firm, Deanne was an Assistant to the Solicitor General for five years, representing the United States in the Supreme Court.Brian Matsui: I know you’re well-versed in CVSGs, both from being in the SG’s office and in private practice when cases get CVSG’d. So generally speaking, what does it mean when the Supreme Court CVSGs?Deanne Maynard: In the simplest terms, it means the Supreme Court is interested but wants more guidance. Some Justices on the Court are considering granting the petition, but there may be something holding the Court back. So they invite the views of the SG. And although it’s called an “invitation,” the SG views it as an order to file a brief on the cert-worthiness of the case and the question presented.As for what it means, it often allows the Court to get the views of an “honest broker,” a non-party who doesn’t have its own axe to grind in the case but still knows and cares a lot about the question presented. And the SG can tell the Court whether the case is a good vehicle to resolve the question or if there might be some obstacle that might get in the way. That can be helpful for the Justices. Of course, in patent cases, the United States may have more of an interest in how the question comes out: the government issues patents, handles agency patent challenges, owns patents itself, and is sometimes sued on others’ patents.Brian: So how does the process work? The Court asks for a brief, and after some period of time, one is filed?Deanne: There’s no deadline for CVSG briefs. But often you can tell, depending on the time of year of the invitation order, when the SG might file the brief. Generally, the SG tries to file briefs in time for cert petitions to be considered for certain Conferences, where the Justices discuss the petitions and decide which ones to grant. So some briefs will be filed in time for the Court to consider them before it recesses in July. Others will be filed over the summer, in time for the long summer Conference in September. And then in December, the SG might file briefs so that they can be granted in time for them to be heard before the last oral argument in April.So for American Axle, it’s too soon for the SG to file a brief before the Court recesses this summer. That means the first possibility would be over the summer before the September Conference. The Office generally will try to file the brief by then. But since there’s no deadline, it could take longer. If we look at the 101 cases denied last Term, the Court CVSG’d one several months before the other. But the second invitation came before the SG had responded to the first, so the SG decided to file both briefs at the same time so the government could coordinate its views across the two cases.Brian: How does the SG go about figuring out what the views of the United States should be? Does the SG’s Office have patent expertise?Deanne: As soon as the SG gets an invitation, the Office sends a request for the views of every affected agency as well as various Justice Department divisions. In patent cases, that often includes at least the PTO, the Department of Commerce, and the FTC, which often has views on intellectual property issues relating to competition. Depending on the case, it may also include agencies like the FDA and NIH. For the DOJ, it would include several parts of the civil division, which often deals with government IP issues, and the antitrust division. These agencies and divisions will send written views to the SG on what they think the United States’ position should be, on both the cert-worthiness and the merits of the question presented. But ultimately, it’s the SG who will decide what the view of the United States should be, and who will resolve any competing interests within the government. The Office currently has the benefit of a Deputy Solicitor General, Malcolm Stewart, who has supervised the patent docket for over decade. Before filing an invitation brief, the Office often meets with counsel for the parties to the case. If either party requests a meeting, the Office will meet with both sides. But if neither party makes a request, the Office generally doesn’t reach out to them. The meeting is a chance for the parties to explain why the cert petition should be granted or denied. In addition to the Deputy SG, the Assistant to the SG assigned to the case will be at the meeting, as well as representatives from the interested federal agencies and DOJ divisions. The meetings are often set up so the Office will meet with each party separately, followed by a government-only meeting so the Office can discuss with the other government entities what position the SG’s brief should take.Brian: Does the Court pretty much always follow the SG’s recommendation?Deanne: It depends on what the SG recommends. Yes, the Court almost always grants cert if the SG recommends grant. It’s confirmatory, as the Justices were already interested.But if the SG recommends deny, then it might depend on why the SG says deny. Sometimes the SG’s brief might recommend deny but say that the issue itself is really important and should be reviewed, just not in this case. In that situation, the SG might identify some possible reason why the case isn’t the right vehicle to resolve the question presented and say the Court should wait for a later case. The Court might grant anyway.The Court also might grant review if the SG says the case was wrongly decided but cert should be denied. For example, the SG might say the issue won’t have any widespread significance or the disagreement in the lower courts might resolve itself. But because the Court was already interested in the case when it CVSG’d, it might grant anyway. Still, we never know for sure why the Court grants or denies review because those orders are unexplained.Brian: So what do we make of American Axle given the cert denials on the 101 cases last Term?Deanne: Obviously the Court is interested, given the CVSG in American Axle. And on a superficial level, three CVSGs in 101 cases over the past couple of years suggests the Court sees something of interest.But I’m not sure how much you can draw from the other CVSGs or the cert denials last Term. The SG recommended deny in both 101 CVSGs, but it identified and recommended granting a third petition addressing methods of treating diseases. Of course, the Court denied that one too, and there’s no way to know why. But given the difference between the mechanical arts issues in American Axle and methods of treating diseases, I don’t think the Acting SG (or the SG, if one is confirmed before the brief is filed) will feel constrained by the prior grant recommendation. That recommendation was pretty closely tied to patent eligibility questions related to methods of treating diseases, even though the brief noted broader confusion stemming from the Supreme Court’s 101 jurisprudence. And while the Deputy SG is the same, the Administration is different. And we don’t yet know if the Biden Administration will feel differently about these issues.One thing to keep an eye on is how the SG views American Axle from a simplicity of technology perspective. In recommending deny in one of the CVSGs last Term, the brief noted that the Supreme Court in particular had less experience addressing patent eligibility questions in the software context. The SG suggested taking a case involving industrial processes, which is more like the issues in American Axle. But now that a case actually is before the Court, it will be interesting to see if the Office has any concerns that the technology and issues aren’t the best vehicle to address some of the 101 confusion the previous SG identified.

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Deanne Maynard, Washington, D.C.-based co-chair of our Appellate and Supreme Court practice, is one of the nation's most accomplished appellate advocates.

Deanne Maynard

Deanne Maynard | Appellate + Supreme Court Lawyer

For more than 20 years, Deanne Maynard, co-chair of Morrison Foerster’s Appellate and Supreme Court practice, has briefed and argued significant appeals in the United States Supreme Court and appellate courts across the country. She has argued 14 cases before the Supreme Court and filed over 100 briefs in that Court.

Deanne E. Maynard

CVSG in American Axle and Cases in General: What Does It Mean? A Q&A With Deanne Maynard

Some of the big news a couple weeks ago was the Supreme Court’s decision to invite the Solicitor General (SG) to file a brief expressing the views of the United