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

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

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Partner

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

Brian Matsui

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

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

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

Seth Lloyd

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

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Many petitions for rehearing are filed; only the smallest handful are granted. Rather than track every filed petition, we track those that have a chance. Our database tracks petitions for rehearing once the Federal Circuit has called for a response (CFR). A CFR is the first real indication that the Court might have interest in the petition, as it indicates that at least one judge on the Court may be taking a second look. Our En Banc Tracker allows you to see the amount of time it takes for various cases to get a CFR, and you can sift through the data to see what types of cases have captured the potential attention of the Court. Our data goes back to January 2020.<div data-reactroot=""><iframe allowfullscreen="" frameBorder="0" height="2350" width="100%" src="https://public.tableau.com/views/RehearingCFRsandSubstantiveOrders/RehearingCFRs?:language=en&amp;:display_count=y&amp;:origin=viz_share_link&amp;:showVizHome=no&amp;:embed=yes&amp;:showShareOptions=false"></iframe><style media="(min-width:48.0625em)">#embed-wrapper-204954215{padding: 0 0 2350px;}</style></div>

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Many orders from the Federal Circuit are not reported but can affect practice and procedure before the Court. We track and reproduce those orders here, highlighting ones that may be of significant interest to those who have cases before the Federal Circuit.<div data-reactroot=""><iframe src="https://public.tableau.com/views/RehearingCFRsandSubstantiveOrders/SubstantiveOrders?:language=en&amp;:display_count=y&amp;:origin=viz_share_link&amp;:showVizHome=no&amp;:embed=yes&amp;:showShareOptions=false" width="100%" height="3030" allowfullscreen="" frameBorder="0"></iframe></div>

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

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Recently in the Federal Circuit: Broadening Claims in IPRs

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Last week, the Supreme Court closed the book on its October 2019 Term, issuing its final opinions after the Fourth of July holiday. For all the notable features of this term—including the Court’s first-ever telephonic arguments, numerous questions from Justice Thomas, and many high profile cases (almost all of which had the Chief Justice in the majority)—the Federal Circuit had a relatively quiet term at the Supreme Court. Yes, the Supreme Court reviewed four cases from the Federal Circuit (reversing or vacating in three), but none appears to have had a profound effect on practice before the Federal Circuit, particularly with respect to its bread-and-butter patent docket.Take, for example, <a href="https://www.supremecourt.gov/opinions/19pdf/18-801_o758.pdf" target="_blank">Peter v. NantKwest Inc.</a>: there, the Supreme Court reaffirmed the bedrock “American rule” that litigants must pay their own way with respect to attorney’s fees, unless some statute or contract provides otherwise. The Court rejected the Patent Office’s aggressive statutory interpretation argument that “expenses” included “attorney’s fees.” This never seemed like a close case—more of a layup. And indeed the Supreme Court was unanimous in its decision affirming the Federal Circuit. It was the second opinion from an argued case handed down this term (typically, the first several opinions are from some of the most straightforward cases on the docket).Not to diminish the other decisions this term, but there was no case that came close to the likes of Alice, KSR, eBay, Teva, Oil States, or Cuozzo. To be sure, <a href="https://www.supremecourt.gov/opinions/19pdf/18-916_new_g3bi.pdf" target="_blank">Thryv, Inc. v. Click-to-Call Technologies, LP</a> became a Cuozzo-lite follow-on—addressing whether the one-year time bar to file a petition for inter partes review after being served with a complaint was judicially reviewable (35 U.S.C. § 315(b)). The Court reiterated its holding in Cuozzo: that when Section 314(d) bars appeals of a decision whether to institute an inter partes review, that bar includes “matters closely tied to the application and interpretation of statutes related to the institution decision.” Applying that same holding, it held that Section 315(b)’s time bar “is integral to, indeed a condition of, institution” and thus final and not appealable under Section 314(d).Outside of patents, the Supreme Court addressed willful infringement in the trademark context in <a href="https://www.supremecourt.gov/opinions/19pdf/18-1233_5he6.pdf" target="_blank">Romag Fasteners, Inc. v. Fossil, Inc.</a> The Court concluded that—based on the text of the Lanham Act—a plaintiff need not prove willfulness to recover lost profits for false or misleading uses of a mark. By concluding that willfulness was no prerequisite to lost profits, the Supreme Court side-stepped the more significant issue as to what willfulness meant, which could have had implications far outside the Lanham Act. (As an aside, although Romag is a loss in the Federal Circuit’s win-loss column, that’s hardly fair: the Federal Circuit was applying Second Circuit law on the trademark issue reviewed by the Supreme Court.) And in its fourth and final case from the Federal Circuit, the Supreme Court held that the government had to reimburse health insurers that suffered losses when offering policies on exchanges under the Affordable Care Act in <a href="https://www.supremecourt.gov/opinions/19pdf/18-1023_m64o.pdf" target="_blank">Maine Community Health Options v. United States</a>.If anything, the cases the Supreme Court chose not to hear were in some ways more profound than the cases it actually heard. We know the Supreme Court took a very hard look at several 101 decisions when it Called for the Views of the Solicitor General (CVSG) in two cases. In Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc., the Court CVSG’d the question of whether methods of using drugs to treat medical conditions are patent eligible under Section 101. The <a href="https://www.supremecourt.gov/DocketPDF/18/18-817/124768/20191206151701002_18-817%20-%20Hikma%20-%20CVSG%20-%20v28.pdf" target="_blank">Solicitor General’s brief</a> agreed that the particular patent claims at issue are patent eligible, but noted that the Federal Circuit’s ruling “implicates important and recurring questions on which the [Supreme] Court’s recent Section 101 decisions have fostered substantial uncertainty.” The Solicitor General stated that the Supreme Court’s Mayo decision has “sent conflicting signals.” And he explained that the “confusion created by [the Supreme] Court’s recent Section 101 precedents warrants review in an appropriate case.” Although the Solicitor General suggested Hikma was not the right vehicle for review, he identified another more appropriate case that was already pending before the Supreme Court: Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, No. 19-430. Given that the Supreme Court usually grants review when the Solicitor General, after being CVSG’d, recommends it, conventional wisdom suggested that Athena would be the next blockbuster 101 case. But, for reasons we can’t know, the Court ended up denying review in both Hikma and Athena.That leaves HP Inc. v. Berkheimer, which suffered the same fate on the same day as Hikma and Athena. The question presented in Berkheimer was “[w]hether patent-eligibility is 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 the art at the time of the patent.” When the Federal Circuit issued its Berkheimer decision, many practitioners began to wonder if 101 challenges were going to be more difficult to make on a motion to dismiss. In its CVSG <a href="https://www.supremecourt.gov/DocketPDF/18/18-415/124825/20191206211755583_18-415%20-%20HP%20v.%20Berkheimer.pdf" target="_blank">Berkheimer brief</a>, the Solicitor General reiterated the point he made in his Hikma brief: “The Court should grant review in an appropriate case to clarify the substantive Section 101 standards.” Once those standards were resolved, he explained, the Court could “then address any ancillary issues that remain”—which would presumably include whether patent eligibility is a question of law or fact. Most likely, once the Supreme Court decided to deny review in Hikma and Athena, there was no reason to grant review of the “ancillary” issue raised in Berkheimer.The Solicitor General’s Berkheimer brief offered one interesting tidbit. He cautioned against review in Berkheimer based, at least in part, on its subject matter. He noted that the claims were directed to “the software-system context.” And he suggested that other, “more familiar types of innovations—such as industrial processes or methods of medical treatment”—might be easier for the Supreme Court to distinguish between patent eligible and ineligible subject matter. To hammer the point home, he said: “courts (and this Court in particular) have less experience addressing such questions in the context of software systems.” Interestingly, the Federal Circuit has been considering for some time now a pending rehearing/en banc petition in American Axle & Manufacturing v. Neapco Holdings, a case in which a divided Federal Circuit panel struck down on 101 grounds patent claims to a method of manufacturing driveline propeller shafts. Depending on what happens at the Federal Circuit, perhaps a case like that involving the mechanical arts (a la KSR) could be a better vehicle for the Supreme Court to address these issues. Or perhaps, after having recently addressed 101 several times already, the Supreme Court just wants to take itself out of that business.So that’s a wrap for the October 2019 Supreme Court Term. We will have to wait and see if next year brings more excitement in reviewing Federal Circuit decisions. Just remember to unmute your telephone line and avoid flushing the toilet.

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. 

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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Supreme Court Review: Sometimes What Is Not Decided Matters More Than What Is

Supreme Court Review: Sometimes What Is Not Decided Matters More Than What Is

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Last week, the Supreme Court closed the book on its October 2019 Term, issuing its final opinions after the Fourth of July holiday. For all the notable features

Federal Circuit Insights

With the start of the Federal Circuit’s July oral arguments, we thought it made sense to look back at the Court’s first three months of telephonic hearings (April, May, and June). What do those sittings show about how the COVID pandemic is affecting the Court? Does the Court’s choice to cancel (or keep) arguments indicate something about its view of the merits? Are there any trends worth keeping an eye on? We answer these questions and more below.Breakdown of argued casesFrom April through June, the Federal Circuit initially scheduled oral argument in 164 cases but then canceled argument and submitted on the briefs in 84, just over half. Yet as shown below, the canceled arguments were not distributed evenly across each month. Instead, the percentage of cases in which the Court canceled a scheduled argument declined each month—in April, the Court canceled argument in 34 cases and heard telephonic arguments in 19, but by June those numbers basically flipped, with the Court canceling argument in just 19 cases and hearing telephonic arguments in 35.<div class="embedded-entry redactor-component block-entry" type="entry" data-sys-entry-uid="blte32cbfa0d50f89ed" data-sys-entry-locale="en-us" data-sys-content-type-uid="image_content" sys-style-type="block"><div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/bltc8dbd884cbda55ca/6273ee507198441d81b3be95/200706-telephone-arguments-graph-1.jpg?format=auto&amp;quality=60" alt="Chart"></div></div>Note: “Submitted cases” excludes cases where the Court never scheduled oral argument (which usually occurs when one party appears pro se).One possible reason for this trend is that judges, clerks, and court staff have become more comfortable with telephonic arguments over time. That may be leading the Court gradually to drift back to its usual practice of hearing argument in most cases where both parties are represented by counsel.Case outcomes for submitted and argued casesAt least so far, the Court’s choice to cancel argument strongly correlates with a likely complete loss for the appellant (e.g., an outright affirmance, dismissal for lack of jurisdiction, etc.). Based on MoFo’s tracking of Federal Circuit outcomes, since November 2019 the appellant has suffered a complete loss about 73% of the time. But for cases where the Court canceled scheduled arguments in April, May, or June of this year, that percentage jumps to more than 92%, as illustrated below (for cases decided as of July 1, 2020).<div class="embedded-entry redactor-component block-entry" type="entry" data-sys-entry-uid="blt470ae1df6a50baa6" data-sys-entry-locale="en-us" data-sys-content-type-uid="image_content" sys-style-type="block"><div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/blt3cb2eaeac1a6dbcc/6273ee514886af2aa2be2755/200706-telephone-arguments-graph-2.jpg?format=auto&amp;quality=60" alt="Chart"></div></div>The numbers from submitted cases are perhaps unsurprising but may not yet tell the whole story. It might be expected that cases in which the Court cancels oral argument and issues a quick decision tilt overwhelmingly against the appellant. The Court’s choice to cancel argument suggests the judges saw the outcome as clear, and it may be quicker for the Court to issue an affirmance than to grant relief because in affirming the Court is maintaining the status quo. But that also suggests the strong correlation between canceled arguments and affirmance may be short-lived. There are still many undecided cases from these months. It’s reasonable to think those undecided cases may bring the affirmance average closer to the historical average—delayed decisions may be more likely to involve some relief for the appellant, because it may take more time to explain why a judgment is wrong, especially where the Court needs to give guidance for a remand.It’s harder to draw inferences about argued cases, in part because more of those remain undecided. For argued cases from April, May, or June’s sitting, appellants have suffered a complete loss in 75% of cases decided as of July 1, 2020, right around the historical average. Almost three-fourths of those losses (19/26) have been affirmances without opinion under Federal Circuit Rule 36.That may suggest that the judges keep different cases for argument for different reasons. In some cases, the judges may keep argument because a case’s outcome is unclear and they have questions. In other cases, the outcome may be clear, but the judges prefer to hold argument and issue a Rule 36 affirmance rather than skip argument and draft a short opinion. Of course, there are other reasons judges may keep cases for argument, and those reasons likely vary from judge to judge. Also, the Court has issued Rule 36 affirmances in two cases that were submitted without argument, so at least for some judges hearing argument in a case is not necessarily a prerequisite for affirming without an opinion.Case timingThe switch to telephonic arguments raises several timing issues. First, the Court continues to issue its notice that a case has been scheduled for oral argument roughly six weeks in advance. The Court appears to issue those notices in all cases that would have had oral argument under the pre-pandemic practice.Second, over the next few weeks after the initial notice, the clerk’s office issues notices for those cases where the Court has canceled oral argument; the office often seems to issue cancellation notices on the same day for cases scheduled before the same argument panel. In general, the office seems to issue the last of the notices to cancel argument at least two weeks before the scheduled argument week.Third, the Court continues to issue timely decisions following an argument or submission date. Especially for cases submitted without argument, decisions can often come quickly. As shown in the chart below, many decisions issue within a week or two of the scheduled submission date. That suggests some judges and clerks may be using the time they would have needed for oral argument preparation to instead prepare draft opinions that are ready for release on or shortly after the scheduled submission date.<div class="embedded-entry redactor-component block-entry" type="entry" data-sys-entry-uid="blt8c24a32432af8810" data-sys-entry-locale="en-us" data-sys-content-type-uid="image_content" sys-style-type="block"><div data-reactroot=""><img src="https://media2.mofo.com/v3/images/blt5775cc69c999c255/blta60d3d3dd37ec400/6273ee51deee7329767e90e2/200706-telephone-arguments-graph-3.jpg?format=auto&amp;quality=60" alt="Chart"></div></div>Finally, the move to telephonic hearings does seem to have affected argument timing. For one, argument sessions often begin a few minutes before the scheduled 10 a.m. Eastern Time start. And—at least anecdotally from participating in and listening to multiple telephonic hearings—telephonic hearings also seem less likely to go over time than in-person hearings. Regardless of whether your case is the first or last of the session, if you have a telephonic hearing it’s important to advise your clients and co-counsel to be on the line early so they don’t miss the beginning of the argument.

Fun with Numbers from the Federal Circuit’s First Three Months of Telephonic Arguments

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Fun with Numbers from the Federal Circuit’s First Three Months of Telephonic Arguments

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With the start of the Federal Circuit’s July oral arguments, we thought it made sense to look back at the Court’s first three months of telephonic hearings (April, May, and June). What do those sittings show about how the COVID pandemic is affecting the Court? 

As courts across the country grapple with the COVID-19 pandemic, the Federal Circuit has streamlined its docket and moved oral arguments from the courtroom to conference calling. Early indications suggest that is changing how the Court decides cases —cases in the past that would have been affirmed without an opinion under Federal Circuit Rule 36 may now be decided by short non-precedential opinions.The Federal Circuit, unlike many other courts of appeals, normally allows oral argument in every case in which all parties are represented by counsel. In mid-March, however, the Federal Circuit announced that it would remove some of those cases from the April argument calendar and submit them on the briefs. In the remaining cases, the Court would hold oral argument by telephone. In all, 35 of the 54 cases originally scheduled during the Court’s April session were submitted on the briefs, and oral argument was held in only 19 cases. In at least one of the cases submitted on the briefs, the Court issued a few written questions to the parties and asked for letter briefing.Last week, the Federal Circuit conducted its first round of telephonic oral arguments. They proceeded much like the Court’s in-person arguments. There was no uniform practice of allowing the advocates to speak uninterrupted for the first few minutes of argument or each judge asking all their questions before moving to the next judge, as some other courts have done in their telephonic arguments. Rather, the judges generally acted as they did during in-person arguments, with some particularly active questioners jumping in before advocates could complete their first sentence and others asking relatively few questions. The most notable difference was that few arguments lasted longer than their scheduled duration, likely because an audible chime sounded at the end of each advocate’s allotted time. Overall, the new system worked without any noticeable technical difficulties.The Federal Circuit’s cancellation of oral arguments may lead to a concomitant change in its disposition of cases: there may end up being fewer cases in which the Court issues an affirmance without an opinion under Federal Circuit Rule 36. Before COVID-19, the Court regularly issued so-called Rule 36 affirmances in argued cases. In recent years, nearly half the Court’s patent cases were decided as Rule 36 affirmances. By contrast, the Court issued written opinions in almost all cases submitted without oral argument.So far, the Court’s April sitting has produced almost no Rule 36 affirmances. In cases originally scheduled for oral argument but later submitted on the briefs, the Court has issued relatively short, non-precedential opinions, many within a few days of when the case was scheduled to be heard. To date, all those opinions have been affirmances, though the sample size is still relatively small. Of the cases where the Federal Circuit still held oral argument, the Court has issued only two Rule 36 affirmances, both in patent appeals from the U.S. Patent and Trademark Office. One possible explanation for this lower-than-usual rate of Rule 36 affirmances is that cases that previously would have been disposed of under Rule 36 instead were submitted on the briefs after the panel prescreened the cases and determined that oral argument was unnecessary. Because the Court held no argument in those cases, it appears to have followed its past practice of writing in cases submitted without oral argument and drafted short summary affirmances explaining its reasoning.As the COVID-19 pandemic continues, the Federal Circuit likely will continue this new system for the foreseeable future. The Court has already started to cancel oral arguments and submit cases on the briefs for its May sitting. This approach seems to be allowing cases to progress toward oral argument at roughly the same pace as before the pandemic — the Court has not automatically extended briefing deadlines, and it continues to request scheduling conflicts from the parties shortly after the filing of the joint appendix in each case. Of course, once the pandemic ends, it will remain to be seen whether the Court makes any of these changes permanent, such as whether the Court will revert back to its pre-COVID-19 practice of holding oral argument in every case where parties are represented by counsel.Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship.

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The Federal Circuit Goes Remote

Virginia Becomes the First State to Adopt COVID-19 Workplace Safety Mandates

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As courts across the country grapple with the COVID-19 pandemic, the Federal Circuit has streamlined its docket and moved oral arguments from the courtroom to c

The Federal Circuit Goes Remote

UPDATE:  As predicted below, the Federal Circuit denied the petitions for rehearing en banc, over several dissents, on March 23.While the rest of us wait on the Federal Circuit’s decision on the rehearing petitions in Arthrex, Inc. v. Smith & Nephew, Inc., there are signs that the Federal Circuit judges themselves may already have moved on.In October 2019, a three-judge panel of the Federal Circuit issued a decision in Arthrex holding that the America Invents Act violated the Appointments Clause of the U.S. Constitution. 941 F.3d 1320, 1325. The Act gave the Secretary of Commerce the authority to appoint the Patent Trial and Appeal Board Administrative Patent Judges (APJs) who oversee and decide inter partes reviews. Yet at the same time, the Act granted APJs significant authority—the power to issue final written decisions on behalf of the United States adjudicating property rights. And the Act limited the U.S. Patent and Trademark Office Director’s authority to oversee and review APJs’ decisions or to remove them from office. The Federal Circuit concluded that those circumstances made APJs principal officers who, under the Constitution, must be appointed by the President and confirmed by the Senate. Id. at 1334-35. To remedy the constitutional violation, the Federal Circuit severed the portion of the Patent Act restricting removal of the APJs. Id. at 1337-39. It also limited the reach of its decision to final decisions reached by APJs who were not constitutionally appointed and where parties timely raised an Appointments Clause challenge on appeal—either in their opening appeal brief or by motion before filing the opening brief. Id. at 1339-40.Much has happened since Arthrex. Multiple judges who were not on the Arthrex panel have authored opinions disagreeing with various aspects of the decision. Polaris Innovations Ltd. v. Kingston Tech. Co., 792 F. App’x 820, 820-31 (Fed. Cir. 2020) (Hughes, J., concurring, joined by Wallach, J.); Bedgear, LLC v. Fredman Bros. Furniture Co., 783 F. App’x 1029, 1030-34 (Fed. Cir. 2019) (Dyk, J., concurring in the judgment, joined by Newman, J.). In December 2019, all parties in Arthrex, including the government, sought rehearing and rehearing en banc. Arthrex, the appellant, challenged the panel’s severability analysis and argued that the constitutional violation remained. The government and the appellees argued that the panel was wrong to find a violation and wrong to adopt the remedy it did. Despite calling for responses in January, the Federal Circuit to date has taken no further action in Arthrex.Yet the Federal Circuit has acted in related cases, and its action in those cases may suggest that it plans to deny any rehearing in Arthrex. In late February, the Federal Circuit began denying rehearing en banc in cases raising the same Appointments Clause issues decided and still pending on petitions for rehearing in Arthrex. Order, Polaris Innovations Ltd. v. Kingston Tech. Co., 18-1831 (Fed. Cir. March 16, 2020) (ECF 106); Order, Image Processing Techs. v. Samsung Elecs. Co., 18-2156 (Fed. Cir. Feb. 24, 2020) (ECF 75); Order, Image Processing Techs. v. Samsung Elecs. Co., 19-1408 (Fed. Cir. Feb. 24, 2020) (ECF 72). In each of those cases, Federal Circuit panels had vacated and remanded APJ final written decisions based on Arthrex. In each, the government and one or more of the parties petitioned for rehearing en banc, raising the same or similar issues to the issues raised in the en banc petitions in Arthrex. The government also argued that, at the least, the Federal Circuit should hold these related cases pending a final decision in Arthrex. The Federal Circuit unanimously denied all those requests without calling for a response to the petitions and without any further explanation. The Federal Circuit also later denied government motions to stay the mandates while the government seeks writs of certiorari to the U.S. Supreme Court. Order, Image Processing Techs. v. Samsung Elecs. Co., 18-2156 (Fed. Cir. Feb. 24, 2020) (ECF 77); Order, Image Processing Techs. v. Samsung Elecs. Co., 19‑1408 (Fed. Cir. Feb. 24, 2020) (ECF 74).Should the government or any parties in the recently denied cases seek Supreme Court review, a curious timing anomaly could occur.  Those cases could leapfrog Arthrex while it remains pending in the Federal Circuit on petitions for rehearing.  The “Arthrex” issue could become defined by some other case name. Something similar to this happened when the Supreme Court decided the standard of review for district court claim construction decisions. After the Federal Circuit granted rehearing en banc in Lighting Ballast v. Phillips Electronics, but before it issued its en banc decision, a petition for a writ of certiorari was filed in Teva v. Sandoz challenging the Federal Circuit’s standard of review for district court claim construction decisions. And shortly after the Federal Circuit issued its en banc decision in Lighting Ballast in February 2014, the Supreme Court granted review in Teva in March 2014—months before a certiorari petition was due in Lighting Ballast.Of course, many possibilities might explain the Federal Circuit’s recent rehearing denials, including that the Federal Circuit denied further review for reasons unique to these cases. Yet the growing number of denials across multiple cases point to another possibility—that the Federal Circuit is denying review because a similar denial in Arthrex is forthcoming. The actual order in Arthrex may be delayed simply because one or more judges are authoring opinions concurring in or dissenting from a denial. But given the Federal Circuit’s apparent interest in limiting the effects of Arthrex and its desire for timely action in affected cases, these relatively rapid denials may signal that the U.S. Supreme Court is now the only possibility for further review on this Appointments Clause issue.

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Do We Already Know the Federal Circuit’s Final Answer in Arthrex?

Do We Already Know the Federal Circuit’s Final Answer in Arthrex?

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UPDATE:  As predicted below, the Federal Circuit denied the petitions for rehearing en banc, over several dissents, on March 23.
While the rest of us wait on th