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-254748447{padding: 0 0 2350px;}</style></div>

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

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

Recently in the Federal Circuit: More on Indefiniteness in IPRs

Recently in the Federal Circuit: Reasonable Expectation of Success May Not Be So Spooky After All

Recently in the Federal Circuit: Broadening Claims in IPRs

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Last week was argument week, and the Federal Circuit previewed its new YouTube channel for streaming live arguments (sadly, audio only for now).  Still, that didn’t slow the Federal Circuit down in issuing opinions, including six precedential ones.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 6Non-precedential opinions: 4Rule 36: 7Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/19-2261.opinion.3-4-2021_1742616.pdf" target="_blank">Safeguard Base Operations, LLC v. United States</a>, No. 19-2261 (241 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/19-2280.opinion.3-4-2021_1742622.pdf" target="_blank">Olaplex, Inc. v. L’Oreal USA, Inc.</a>, No. 19-2280 (55 days)Case of the week:<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1646.opinion.3-2-2021_1741285.pdf" target="_blank">Rain Computing, Inc. v. Samsung Electronics America, Inc.</a>, Nos. 20-1646, -1656Panel:  Judges Lourie, Dyk, and Moore, with Judge Moore writing the opinionYou should read this case if:  you have a claim term with functional language that may be subject to means-plus-function interpretationEveryone knows patents must end with claims that “particularly point out and distinctly” identify the invention.  35 U.S.C. § 112(a).  But some inventions don’t lend themselves to succinct delineation in the claims.  So Congress provided an alternative—rather than identify in the claims an exact structure or step that is an element of the invention, patentees can express the element as “a means or step for performing a specified function.”  35 U.S.C. § 112(f).  When they do, the claim will be “construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”  Id.  Congress thus allowed a sort of shorthand—patentees can detail the structure, material, etc. essential to their invention in other parts of the specification and use so-called means-plus-function (or step-plus-function) language to incorporate those details into the claims.This week’s case deals with when claims trigger means-plus-function interpretation and what details the specification must give about the corresponding structure, material, or acts.  Rain Computing owns a patent to a method for providing software over a network.  The claimed method requires a step of sending “a user identification module configured to control access” to software.Does that language trigger means-plus-function interpretation?  The Federal Circuit said yes.  It applied a rebuttable presumption that “user identification module” was not a means-plus-function term because it lacks the word “means.”  It held the presumption rebutted—“module” is “a well-known nonce word that can operate as a substitute for ‘means.’”  That was how the patent here used the term, as a “black box recitation of structure.”  The prefix “user identification” was no help—it “merely describes the function of the module: to identify a user.”  Nor did it matter that the applicant had amended the claims from “user identification module for accessing” to “user identification module configured to control access.”  The “configured to” phrasing was still “purely functional.”  The Court also clarified that method claims can include a “nested” means-plus function term.Because “user identification module” was a means-plus-function term, the Court asked whether other parts of the patent disclose adequate structure corresponding to the claimed function.  The Federal Circuit rejected the district court’s view that the patent’s disclosure of generic “computer-readable media or storage devices” was adequate structure.  “These computer-readable media or storage devices amount to nothing more than a general-purpose computer.”  But Federal Circuit precedent had long required more than a general purpose computer except in the “rare” situation where any general purpose computer can perform a claimed function “without any special programming.”  The Court held this was not that rare situation, as both the patent owner and the inventor agreed some programming would be required.  And under that precedent, Rain Computing’s claims were invalid for indefiniteness—the lack of adequate corresponding structure meant the patent failed to particularly point out and distinctly claim the invention.

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 (March 1-5): Purely Functional Claiming And Means-Plus-Function Elements

Last Week in the Federal Circuit (March 1-5):  Purely Functional Claiming And Means-Plus-Function Elements

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Last week was argument week, and the Federal Circuit previewed its new YouTube channel for streaming live arguments (sadly, audio only for now).  Still, that di

Last Week in the Federal Circuit

All eyes are on Arthrex this week, right?  So of course we decided to take a look at a Court decision reviewing the Board, and one that—so says the dissent—creates a circuit split.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 3Non-precedential opinions: 4Rule 36: 1Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/19-1704.opinion.2-22-2021_1736971.pdf" target="_blank">SynQor, Inc. v. Vicor Corp.</a>, No. 19-1704 (290 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1693.opinion.2-23-2021_1737903.pdf" target="_blank">MModal LLC v. Nuance Communications, Inc.</a>, No. 20-1693 (18 days)Case of the week:<a href="http://www.cafc.uscourts.gov/opinions-orders/19-1704.opinion.2-22-2021_1736971.pdf" target="_blank">SynQor, Inc. v. Vicor Corp.</a>, No. 19-1704 (Fed. Cir. Feb. 22, 2021)Panel:  Judges Dyk, Clevenger, and Hughes, with Judge Hughes writing the opinion and Judge Dyk dissenting.You should read this case if:  You’re interested in issue preclusion or have one of the 10 remaining inter partes reexamination casesLast week a divided Court took a look at issue preclusion in administrative proceedings, and that definitely caught our eye.  The appeal involves inter partes reexaminations—so if you haven’t had one, you aren’t likely to since they began their slow sunset after Congress passed the AIA and replaced them with inter partes reviews.  In this reexamination, the Board found the patent owner’s claims would have been obvious, ruling against the patent owner on whether certain prior art references were incompatible and on motivation.  The details don’t really matter for our purposes.  What does matter is that in another, earlier (and now final) reexamination involving a different but related patent and the same parties, the Board reached the opposite conclusion on those two issues.  So patent owner took an appeal in the later case, arguing that issue preclusion (also known as collateral estoppel) precludes relitigation of the issues that the patent owner won in the earlier case but lost in the later one.  Not to bury the lede:  the patent owner won.Much of the Court’s opinion addressed whether common law issue preclusion applied to inter partes reexaminations.  The Court noted it previously held preclusion applied to inter partes reviews, and that courts presume issue preclusion applies to administrative proceedings absent evidence of contrary intent from the statutory text.  We won’t pause long on this part of the decision.  The Court noted—on that front—that its decision would govern a limited number of cases.  How limited?  In a footnote, the Court noted that only 10 inter partes reexaminations remain pending before the Board.  So the short of it:  issue preclusion applies and is consistent with the now defunct statutory scheme governing inter partes reexaminations.Now for the slightly longer version:  the parties (and the Court) disputed whether issue preclusion could apply if inter partes reexaminations are “examinational” or “inquisitorial” proceedings rather than “adversarial” or “adjudicatory” ones—since the examiner, not the parties, frames and drives the proceeding.  The Court determined that inter partes reexaminations gave the patent owners and third-party requestors enough rights to present and rebut evidence and arguments, even though the parties have no discovery rights or subpoena powers, depriving the parties of deposing (and therefore cross-examining) witnesses.  On the latter point, the Court acknowledged the importance of cross-examination of witnesses, but said it’s not the only way to test credibility.  It pointed to the presentation of contrary evidence.  Of course, the Court noted that not everyone agrees with it that issue preclusion can apply without cross-examination or live testimony, and it cited other courts and commentators suggesting otherwise.Turning to the merits of whether preclusion applied to the facts before it, the Court recited the familiar requirements for issue preclusion:  “(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.”  The Court emphasized that the question is whether the issues are identical, not whether the patent claims in the earlier and later inter partes reexaminations are identical.  And on that point, the Court held that whether two prior art references were compatible and there was motivation to combine them were resolved in the earlier inter partes reexamination proceeding:  “The Board, acting as trier of fact, decided this issue.”  And because these issues were essential to the Board’s earlier patentability decision and both parties had a full and fair opportunity to litigate the issues, issue preclusion barred relitigation.  The Court emphasized that “collateral estoppel applies “even if new evidence exists” in the later proceeding.Finally, the Court addressed new claims that had been added during reexamination.  Because the patent expired before the new claims issued, the patent owner’s appeal over those new claims became moot.  The patent owner thus requested that the Board’s decision on the new claims be vacated under Munsingwear.  The Court agreed, and vacated the Board’s decision as to those new claims to prevent “an unreviewable decision from spawning any legal consequences”—like, for example, the issue preclusion issues the Court just decided.Of course there is more:  Judge Dyk dissented.  He disagreed that issue preclusion applies to inter partes reexaminations because they are examinational (or inquisitorial) and not adjudicatory and fail to include court-like procedures.  For support, Judge Dyk pointed to Supreme Court and Federal Circuit precedent describing inter partes reexamination proceedings as inquisitorial rather than adjudicative.  He zeroed in on the absence of any right to cross-examine witnesses, stating that the Supreme Court has emphasized the importance of cross-examination for the discovery of truth and that other circuits have refused to apply issue preclusion when cross-examination was unavailable.  And here, Judge Dyk highlighted the importance of cross-examination in this case.  He noted that one difference potentially explaining the different outcomes in the first versus the second Board decision was that the patent owner’s witnesses had been deposed in related district court litigation after the first case and before the second case.

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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Last Week in the Federal Circuit (February 22-26): Who Needs Cross Examination? Issue Preclusion Before the PTAB

Healthcare, Biologics, and Severability: Will the ACA—and the BPCIA—Survive the Latest Challenge?

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All eyes are on Arthrex this week, right?  So of course we decided to take a look at a Court decision reviewing the Board, and one that—so says the dissent—crea

Last Week in the Federal Circuit (February 22-26):  Who Needs Cross Examination?  Issue Preclusion Before the PTAB

The Federal Circuit had a slow week, issuing only 8 decisions (just 3 of them precedential).  But among those was an interesting case with a question of first impression about the doctrine of equitable intervening rights.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 3Non-precedential opinions: 5Rule 36: 0Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/19-1927.opinion.2-18-2021_1735559.pdf" target="_blank">Canfield Scientific, Inc. v. Melanoscan, LLC</a>, No. 19-1927 (316 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1552.opinion.2-16-2021_1733600.pdf" target="_blank">Takeda Pharmaceutical Company v. Torrent Pharmaceuticals Ltd.</a>, No. 20-1552 (11 days)Case of the week:<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1090.opinion.2-19-2021_1736234.pdf" target="_blank">John Bean Technologies Corp. v. Morris & Associates, Inc.</a>, No. 20-1090Panel:  Judges Lourie, Reyna, and Wallach, with Judge Reyna writing the opinionYou should read this case if:  you have a case involving a reissued or reexamined patent, where there might be a defense of equitable intervening rightsMorris and John Bean make poultry chillers—a business so exciting they are the only two companies in the country to do it.  Their presumably fierce rivalry spilled into the Federal Circuit in our case of the week.In 2002, John Bean obtained a patent.  Believing the patent was invalid, Morris made poultry chillers with features described in the patent.  Eleven years later, John Bean obtained reexamination of its patent.  Armed with the amended claims, John Bean sued Morris for infringement.To Morris, this seemed unfair:  It had invested in making poultry chillers based on the patent as it stood in 2002, then the reexamination pulled the rug out from under it.  So Morris asserted the affirmative defense of equitable intervening rights under 35 U.S.C. § 252.  That defense allows a would-be infringer to continue making, using, or selling a product if it did so before reissuance or reexamination.  But that is allowed only “to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.”To John Bean, this defense seemed inapplicable:  While the doctrine protects investments made in reliance on earlier circumstances, Morris’s investment had already paid off.  Morris had sold enough poultry chillers since 2002 to recoup all the money it invested in this line of business.The question for the Federal Circuit was whether a defendant is barred from asserting the defense of equitable intervening rights when it has already recouped all monetary investments made before the reexamination or reissue.  No, the Court held, a court can still grant this equitable remedy even in that scenario. Addressing the statute, the Court observed that this was its first “opportunity to examine the boundaries of the phrase ‘protection of investments’ in § 252.”  Noting that the “text does not specify” any “precise[]” limits, the Court saw “no indication” that monetary investments “are the only investments that a court may deem sufficient to protect.”  The Court therefore held that recoupment is only one “factor that a court may consider” in the equitable analysis—not a per se bar.The Court also emphasized that equitable remedies are “flexible.”  (Apparently, “equity abhors a defendant who has already recouped all monetary investments” is not on anyone’s list of equitable maxims.)  The Court stopped short of setting forth a comprehensive standard for the equitable analysis.  Instead, it held only that the district court did not abuse its discretion, without expressly adopting the district court’s seven-factor test.The opinion contains another important holding.  John Bean had argued that willful infringement makes a defendant a bad actor unable to assert equitable defenses like equitable intervening rights.  The Court rejected that proposed bar on the equitable-intervening-rights defense, too.  It held instead that a defendant satisfying § 252’s requirements for the equitable-intervening-rights defense is not an infringer at all, and therefore cannot willfully infringe.

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Last Week in the Federal Circuit (February 15-19): Equitable Intervening Rights

Last Week in the Federal Circuit (February 15-19):  Equitable Intervening Rights

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The Federal Circuit had a slow week, issuing only 8 decisions (just 3 of them precedential).  But among those was an interesting case with a question of first i

Did you remember to send your favorite examiner a Valentine’s Day card?  Okay, so maybe that’s not the typical applicant/examiner relationship.  But this week we do look at some potential consequences from the back and forth between examiners and applicants.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 7Non-precedential opinions: 16Rule 36: 4Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/19-2196.opinion.2-12-2021_1732513.pdf" target="_blank">Synchronoss Technologies, Inc v. Dropbox, Inc.</a>, No. 19-2196 (191 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1261.opinion.2-10-2021_1730972.pdf" target="_blank">Caterpillar Paving Products v. Wirtgen America, Inc.</a>, No. 20-1261 (8 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1833.opinion.2-8-2021_1729415.pdf" target="_blank">Chudik v. Hirshfeld</a>, No. 20-1833Panel:  Judges Taranto, Bryson, and Hughes, with Judge Taranto writing the opinionYou should read this case if:  you have a matter involving patent term adjustment, particularly delays due to PTAB appealsOur case of the week deals with the exciting world of patent term adjustment, which allows patent owners to ask the Patent Office to extend a patent’s term because of delays during examination.  By statute and regulation, only some kinds of delays qualify for an adjustment.Chudik focuses on one type of delay, called C-delay (based on the relevant statutory provision defining it).  C-delay allows patent owners to seek adjustment for delays caused by “appellate review” that “reverses” an earlier adverse determination of unpatentability.  The relevant provision (35 U.S.C. § 154(b)(1)(C)(iii)) applies to delay due to:appellate review by the Patent Trial and Appeal Board or by a Federal Court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability.The issue in Chudik was whether a C-delay occurs when an applicant appeals a rejection to the Board but, before the Board hears the case, the examiner withdraws the rejection and reopens prosecution.  Chudik got a patent on a guide for shoulder surgery, but not without some sprains, strains, and tears.  During the examination, he appealed four times to the Board from examiner rejections, only to have the examiner withdraw the rejection each time and re-open prosecution.  Although the examiner finally allowed the claims after the fourth appeal, Chudik claimed he was entitled to 655 days of “C-delay” for the period when his four appeals were pending.  The PTO denied his request and the district court upheld the PTO’s decision.The Federal Circuit affirmed based on the statute’s plain language.  According to the Federal Circuit, there was no C-delay because Chudik’s patent did not result from an appeal decision “reversing” an examiner determination of unpatentability.  Rather, Chudik was (un)lucky enough to have an examiner reconsider an earlier position and back down before the Board heard his case.  The ordinary usage of a “decision” following “appellate review” leading to reversal required that “a distinct reviewing authority” take action to modify the examiner’s decision, not that the examiner herself decide to reconsider.The Court noted that another type of delay, B-delay, would normally be available in situations where an examiner unilaterally acts before an appeal decision.  B-delay typically allows adjustments for prosecution time beyond three years.  But B-delay excludes adjustments for “time consumed by continued examination … requested by the applicant.”  That meant Chudik could not benefit from a B-delay adjustment—before beginning the merry-go-round of appeal-withdrawal-reopen-rejection, he had received an earlier final rejection and requested continued examination rather than filing an appeal.  The Federal Circuit thus concluded with a cautionary note:  “The unavailability of B-delay for nearly two years (655 days) of delay in the PTO illustrates what applicants should understand when deciding whether to request a continued examination rather than take an immediate appeal.  The potential benefit of immediate re-engagement with the examiner through such continued examination comes with a potential cost.”

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Last Week in the Federal Circuit (February 8-12): Patent Term Adjustments When Examiners Back Down

Last Week in the Federal Circuit (February 8-12): Patent Term Adjustments When Examiners Back Down

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Did you remember to send your favorite examiner a Valentine’s Day card?  Okay, so maybe that’s not the typical applicant/examiner relationship.  But this week w

Since yesterday was the Super Bowl, we assume that all of our readers spent today as we did, thinking about the Federal Circuit's recent decision in M&K Holdings about a video compression patent. If not, we've got you covered.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 3Non-precedential opinions: 9Rule 36: 9Longest pending case from argument:  Tie between <a href="http://www.cafc.uscourts.gov/opinions-orders/19-2302.opinion.2-1-2021_1726127.pdf" target="_blank">P.K. Management Group, Inc. v. HUD</a>, No. 20-1260 and <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1924.opinion.2-4-2021_1728126.pdf" target="_blank">Nika Technologies, Inc. v. US</a>, No. 20-1924 (57 days)Shortest pending case from argument (non-Rule 36):<a href="http://www.cafc.uscourts.gov/opinions-orders/19-2302.opinion.2-1-2021_1726127.pdf" target="_blank">Trustees of Columbia Univ. v. Illumina, Inc.</a>, No. 19-2302 (25 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1160.opinion.2-1-2021_1726200.pdf" target="_blank">M&K Holdings, Inc. v. Samsung Electronics Co., LTD.</a>, No. 20-1160. Panel:  Judges Moore, Bryson, and Chen, with Judge Bryson writing the opinionYou should read this case if:  you have a matter involving a challenge to whether a reference qualifies as a prior art printed publicationCongress limited inter partes review invalidity challenges to anticipation and obviousness based only on “patents or printed publications.”  So determining what is a printed publication can be paramount.  While journal articles are usually an easy call, other content often falls in a grey zone.  Our case this week illustrates how documents posted online by an industry standards working group can qualify as printed publications. M&K owns a patent to a method for compressing video files.  In an IPR brought by Samsung, the Patent Trial and Appeal Board held one claim invalid based in part on two prior art references, Park and Zhou.  Those references came from a joint task force that establishes industry standards for video coding.  The task force’s members submitted Park and Zhou and discussed them at the organization’s quarterly meeting.  200-300 interested persons typically attended those meetings.  The references were also uploaded to the task force’s public website.  On appeal, the Federal Circuit explained that whether a reference is a printed publication requires “a case-by-case inquiry into the circumstances under which the reference was disclosed to the public.”  Although the ultimate question was legal, the “key inquiry” was the factual question whether the reference was publicly accessible at the relevant time.  The Court held that substantial evidence supported the Board’s finding of public accessibility, which was enough to affirm.The Court viewed the case as falling in the overlap of two lines of precedent, one addressing references presented orally at conferences, the other involving publications available in repositories, like the internet or a library.  Like past conference material found to be publicly accessible, Park and Zhou were presented to hundreds of conference participants, the meeting reports summarized the discussion of those references, and meeting participants had no expectation of confidentiality.  And like past repository material, full copies of Park and Zhou were hosted on a public website where routine searching was likely to find them.  The Court also relied on the Board’s finding that the task force “was prominent in the community of those skilled in video-coding technology.”  That prominence increased the likelihood that skilled artisans interested in the references’ subject matter could have located them with reasonable diligence.The Federal Circuit rejected M&K’s contrary arguments.  M&K argued that no evidence showed the Park and Zhou references themselves were prominent in the community.  The Court held that it was enough that the channel through which the references were publicized, i.e., the task force itself, was prominent or well-known among persons of ordinary skill in the art.  M&K also argued against public accessibility because the task force’s website was difficult to navigate and allowed searching only by title rather than document content.  The Federal Circuit rejected that argument, too.  It emphasized that searchability is merely one factor in the analysis.  Even so, it held that the Board could reasonably find that searching by title supported the public accessibility of Park and Zhou because those documents had titles describing their content. The Court disagreed that another recent case affirming a Board finding that similar documents were not publicly accessibly required a different conclusion. The challenger had developed a better record in M&K.  And under the deferential substantial evidence standard, the Court could not say it was unreasonable for the Board to find public accessibility even if it also would have been reasonable to find no public accessibility.

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Last Week in the Federal Circuit (February 1-5): The Growing Universe of Printed Publications

Last Week in the Federal Circuit (February 1-5): The Growing Universe of Printed Publications 

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Since yesterday was the Super Bowl, we assume that all of our readers spent today as we did, thinking about the Federal Circuit's recent decision in M&K Holding

Last Week in the Federal Circuit (February 1-5): The Growing Universe of Printed Publications

Despite no precedential patent decisions at the Federal Circuit, the Court still addressed some interesting issues last week, including whether a license agreement from 1993 bars patent infringement claims on LTE technology 25 years later.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 1Non-precedential opinions: 4Rule 36: 0Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1305.opinion.1-26-2021_1723270.pdf" target="_blank">Monk v. Tran</a>, 20-1305 (83 days)Shortest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/19-2410.opinion.1-28-2021_1724652.pdf" target="_blank">L’Oreal USA, Inc. v. Olaplex, Inc.</a>, 19-2410 (20 days)Case of the week:<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1335.opinion.1-26-2021_1723311.pdf" target="_blank">Evolved Wireless, LLC v. HTC Corp.</a>, Nos. 20-1335, 1337, 1339, 1340, and 1363. Panel:  Judges Dyk, Plager, and Moore, with Judge Dyk writing the opinionYou should read this case if:  you have a matter involving standard-essential patents and license agreements that include later-developed or acquired intellectual property.  Our case this week features the standard-essential power players of quarantine: cell phones and tablets.  If you’re wondering how your trusted devices fared, please do read on. Evolved owns a standard-essential patent (SEP) covering 4G/LTE technology for mobile devices.  In 2015, Evolved sued several mobile device manufacturers for infringement based on their use of Qualcomm chipsets to make multi-mode, or LTE, mobile devices.But here’s the catch.  The patent’s original owner, LGE, had granted a license to Qualcomm back in 1993.  This license agreement barred patent infringement claims against Qualcomm and its customers for use of LGE patents that are technically or commercially necessary to make, sell, or use a “Subscriber Unit.”  The (multi-) million dollar question, then, is whether defendants’ accused products are “subscriber units” under the 1993 LGE-Qualcomm license.  The district court said “yes.”  As a result, it granted defendants summary judgment of noninfringement based on the license agreement and the doctrine of patent exhaustion. Here’s another catch.  Evolved alleged that the 1993 agreement was terminated at the end of 2018, after the parties filed cross-motions for summary judgment.  Evolved filed a notice of supplemental facts to alert the court in 2019.  Defendants argued that the late-filed notice was procedurally inappropriate and should be excluded from the summary judgment record.  So a second million-dollar question: does Evolved’s late-filed evidence of license termination revive Evolved’s infringement claims for the post-termination period?  The district court remained silent on this issue.  Instead, it granted summary judgment of noninfringement without addressing whether the license had been terminated.  The Federal Circuit affirmed in part.  It agreed with the district court that the defendants’ accused products are covered “subscriber units” under the 1993 license.  The original 1993 license predated both the issuance of Evolved’s patent and the 4G/LTE technology at issue.  But the license had evolved with the technology.  Later amendments expanded the license’s scope to cover not only products using the 3G Code Division Multiple Access (CDMA) standard, but also “any subsequent generation products,” including “multi-mode” devices.  The amendments were broad enough to cover 4G/LTE products, which were the logical next generation to 3G products.  But the Court held that the license precluded infringement claims during only its temporal term. The Court then turned to whether the district court’s silence as to Evolved’s after-arising notice of the license termination constituted an abuse of discretion.  In reviewing the hearing transcript, the Court gleaned that the district court assumed that the license would have been replaced after it was terminated in 2018 and did not address whether the license had been terminated.  Instead of applying the abuse of discretion standard, the Court remanded the issue to the lower court to address both a procedural question and a substantive one: (1) whether Evolved’s evidence about termination should be part of the summary judgment record; and (2) if so, how any termination affects Evolved’s claims of post-termination infringement. As for our beloved devices, the saga will continue back in the district court.  But here are my parting words a la Bridgerton, another standard-essential power player of quarantine.  Rest assured, gentle reader.  How the parties shall bode in the district court is yet to be determined, but if anyone should reveal the circumstances of this match, it is we, yours truly.

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Last Week in the Federal Circuit (January 25-29): Year 1993 and LTE Technology

Last Week in the Federal Circuit (January 25-29): Year 1993 and LTE Technology

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Despite no precedential patent decisions at the Federal Circuit, the Court still addressed some interesting issues last week, including whether a license agreem

Although the Federal Circuit has had a busy January, last week was light on precedential decisions (just one, in a case from the MSPB). Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 1Non-precedential opinions: 8Rule 36: 1Longest and shortest pending case from argument:<a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1364.RULE_36_JUDGMENT.1-21-2021_1720172.pdf">SIPCO, LLC v. Emerson Electric Co., No. 18-1364</a> (2 days)Case of the week:<a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1333.OPINION.1-21-2021_1720145.pdf">Infineum USA L.P. v. Chevron Oronite Company LLC</a>, No. 20-1333Panel:  Judges O’Malley, Taranto, and Stoll, with Judge Stoll writing the opinionYou should read this case if:  you have a matter involving common IPR issues, like procedural and factual obviousness challenges, or a constitutional challenge under ArthrexInfineum owns a motor oil patent. Roughly a week after the Federal Circuit’s decision in Arthrex—<a target="_blank" href="https://federalcircuitry.mofo.com/search/?s=arthrex">which we’ve discussed before</a>—the Patent Trial and Appeal Board found Infineum’s claims unpatentable for obviousness.On appeal, the Federal Circuit rejected Infineum’s allegations of error. Although Inifineum argued the Board wrongly relied on new arguments, the Federal Circuit drew a line between new arguments and new evidence. Both the America Invents Act and the Administrative Procedure Act expect parties to introduce new evidence during administrative proceedings. The Federal Circuit found that was all the Board had permitted in this case.The Federal Circuit also rejected Inifineum’s challenge that the petitioner’s expert was not sufficiently qualified to opine on the disputed technology. The Court held that admitting the expert was an issue within the Board’s discretion, and the Board had appropriately exercised that discretion in reviewing the expert’s credentials and experience. The Court also made clear that the weight to give the expert’s testimony given the expert’s background and experience was an issue for the Board.The Court similarly dismissed Infineum’s challenge that the Board accepted a “hindsight analysis” because the petitioner’s expert relied on certain prior-art examples when other examples performed better: “We have rejected the notion that a patent challenger seeking to demonstrate obviousness must prove that a person of ordinary skill would have been motivated to select one prior art disclosure over another.”Finally, the Court refused to send the case back to the Board under the Federal Circuit’s Arthrex decision. Although the Supreme Court is reviewing Arthrex (<a target="_blank" href="https://federalcircuitry.mofo.com/topics/Supreme-Court-to-Review-Arthrex.html">Supreme Court to Review Arthrex: Big Deal or Ho Hum?</a>), as we previously observed (<a target="_blank" href="https://federalcircuitry.mofo.com/topics/201124-orders-of-interest-roundup-arthrex-style.html">Orders of Interest Roundup, Arthrex Style</a>), the Federal Circuit continues to apply Arthrex when presented with materially identical facts. In Infineum’s case, the Board issued its final written decision after the Federal Circuit issued its Arthrex decision holding that Board judges going forward are inferior officers properly appointed by a department head. As a matter of Federal Circuit precedent, that foreclosed Infineum’s argument that Board judges remain unconstitutionally appointed after Arthrex. The Court had already concluded in an earlier case that there is no Appointments Clause violation for Board decisions “issued after Arthrex was decided,” meaning after the opinion issued.

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Last Week in the Federal Circuit (January 18-22): Factual Obviousness and Yet Another Arthrex Challenge

Last Week in the Federal Circuit (January 18-22): Factual Obviousness and Yet Another Arthrex Challenge

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Although the Federal Circuit has had a busy January, last week was light on precedential decisions (just one, in a case from the MSPB). Below we provide our usu

The Federal Circuit issued just one precedential opinion last week.  But it’s an interesting one:  The Court exercised its discretion to reach (or rather, avoid) a constitutional issue not pressed or passed upon by the trial court.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 1Non-precedential opinions: 16Rule 36: 2Longest pending case from argument:Land Shark Shredding, LLC v. US, Nos. <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1230.opinion.1-11-2021_1715077.pdf" target="_blank">20-1230</a> and <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1231.opinion.1-11-2021_1715107.pdf" target="_blank">20-1231</a> (187 days).Shortest pending case from argument (non-Rule 36):<a href="http://www.cafc.uscourts.gov/opinions-orders/19-2448.opinion.1-15-2021_1718149.pdf" target="_blank">Beck v. Wilkie</a>, No. 19-2448 (9 days)Case of the week:<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1175.opinion.1-11-2021_1715125.pdf" target="_blank">Veterans4You LLC v. United States</a>, No. 20-1175Panel:  Judges Lourie, Clevenger, and Chen, with Judge Clevenger writing the opinionYou should read this case if:  you’re interested in the separation of powers and statutory interpretation—or you have a case with a waiver issueOur case of the week is not your typical bid protest.  This one is unusually interesting for reasons both academic (the separation of powers) and practical (the law of waiver).The dispute concerns a printing contract.  The Department of Veterans Affairs (VA) wanted to print information about suicide prevention on gun locks.  To find a vendor, it enlisted the Government Printing Office (GPO) to run a solicitation.  The VA did so against the backdrop of a statute—which the Court calls the “printing mandate”—providing that “[a]ll printing” for executive agencies shall be done through the GPO.  44 U.S.C. § 501.  The GPO ran the solicitation, but it determined its regulations prevented it from employing the “Rule of Two” (which in other solicitations requires setting aside contracts for certain veteran-owned contractors).A veteran-owned business filed a bid protest, contending that the VA was not obligated to send the solicitation to the GPO, and that the VA violated the Rule of Two.  The Court of Federal Claims granted judgment to the government, concluding that the printing mandate required the VA to use the GPO for the solicitation, and that the VA had complied with the Rule of Two by securing the GPO’s compliance to the maximum extent feasible.The Federal Circuit reversed.  It held that the printing mandate does not apply to the printed gun locks here, because to construe the statute otherwise would raise constitutional concerns. But first, the Court had to address waiver.  The bid protestor was advancing a constitutional challenge to the printing mandate that was never raised or addressed in the trial court.  The Federal Circuit, however, explained that “the rule of waiver is prudential,” and it decided to exercise its discretion to reach the issue anyway.  It explained that the constitutional issue “is a pure question of law which has been fully briefed by the parties before our Court, and we perceive no prejudice to any party in considering this issue now, nor any purpose to be served by remand.”  Interestingly, the Court declined to decide whether the bid protestor could avoid waiver by characterizing the constitutional issue as “a new argument in support of an existing claim.”Reaching the merits, the Court noted doubt about the constitutionality of the printing mandate.  The separation of powers limits Congress’s ability to control non-legislative actors.  The statutory mandate that executive agencies procure printing through the GPO—a congressional entity controlled by members of Congress—implicates that principle.  For that reason, the Office of Legal Counsel has opined that the printing mandate is unconstitutional, and government counsel in this case adhered to that position.  (While the Court recounted those views, it appears to have tiptoed around declaring its own view of the statute’s constitutionality.)With the parties apparently agreeing that the printing mandate standing alone is unconstitutional, the Court was left with two ways to avoid the constitutional defect.  First was the path urged by the government:  It argued that even apart from the printing mandate, a regulation independently required the VA to use the GPO for printing here.  The Court rejected that view, concluding that the regulation merely “parrots” the statute and therefore “does not obviate any potential separation of powers concern.”  Instead, the Court took a second path.  It construed the statute narrowly under the canon of constitutional avoidance so that the printing mandate does not apply to this case.  In particular, the Court construed “printing” to apply “only to the production of written or graphic published materials,” not the production of the gun locks in this solicitation. Thus, under the Court’s construction of the statute, the VA was not required to send the solicitation to the GPO, undercutting the premise of the trial court’s decision.  The Federal Circuit declined to go further and address how the Rule of Two should have applied, instead sending the case back to the trial court.  It is not immediately obvious, though, what will happen on remand, as the solicited goods have already been procured.  The Court held that the case is not moot because of the exception for controversies “capable of repetition, yet evading review,” but the Court did not address what relief could still be available to the bid protestor.

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Last Week in the Federal Circuit: Waiver and Constitutional Avoidance

Last Week in the Federal Circuit: Waiver and Constitutional Avoidance

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The Federal Circuit issued just one precedential opinion last week.  But it’s an interesting one:  The Court exercised its discretion to reach (or rather, avoid

Now that the new year has started, we’re seeing an uptick in precedential opinions.  This week we decided to turn back to patent appeals, taking a look at IPRs and Article III—always a fun topic.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 4Non-precedential opinions:  16Rule 36: 6Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/19-2404.opinion.1-8-2021_1714382.pdf" target="_blank">James-Cornelius v. HHS</a>, No. 20-1969 (127 days)Shortest pending case from argument (non-Rule 36):<a href="http://www.cafc.uscourts.gov/opinions-orders/19-2411.opinion.1-5-2021_1711937.pdf" target="_blank">SIMO Holdings Inc. v. Hong Kong uCloudlink Network</a>, No. 19-2411 (60 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-2051.opinion.1-6-2021_1712970.pdf" target="_blank">ABS Global, Inc. v. Cytonome/ST, LLC, No. 19-2051</a>Panel: Chief Judge Prost and Judges Moore and Stoll, with Judge Stoll writing the opinion and Chief Judge Prost dissenting in partYou should read this case if: you want to read another decision on Article III standing and mootness in IPR appealsWhat happens to an IPR appeal when the patent owner loses on infringement in the district court and says it won’t appeal?  The Federal Circuit answered that question in ABS.  And for those who don’t want to read further, here’s the answer:  the appeal, at least in this case, became moot.  But there’s an interesting back-and-forth about vacatur at the end, so keep reading.IP litigators know this story well.  Patent owner sues accused infringer.  Accused infringer then challenges some of patent owner’s asserted patent claims in an IPR.  The PTAB invalidates some claims, but it also finds that accused infringer failed to prove other claims were not unpatentable.  So accused infringer decides to appeal.Of course, here’s where the story takes a turn and gets a little interesting.  While the IPR was humming along, the district court granted summary judgment that the patent owner failed to prove infringement on the claims at issue in the IPR.  And when the patent owner filed its response brief in the IPR appeal, it included an affidavit from its counsel stating that the patent owner “has elected not to pursue an appeal of the district court’s finding of non-infringement … and hereby disclaims such an appeal.”  Having made that declaration, the patent owner argued that the formerly accused infringer lacked Article III standing to appeal the IPR final decision.  In turn, the accused infringer argued that the issue wasn’t one of standing, but instead went to mootness.  As to mootness, the accused infringer contended that its IPR appeal wasn’t moot.So what did the Federal Circuit do?  It agreed with the accused infringer that this issue was one of mootness, not standing.  But that’s pretty much where the Court’s agreement with the accused infringer ended.  The Federal Circuit looked to the Supreme Court’s burden-shifting framework in Already v. Nike, 556 U.S. 85 (2013).  First, the Federal Circuit held that the party asserting mootness (here, the patent owner) due to voluntary cessation bears the formidable burden of showing that it will not assert the patent claims against the accused infringer.  The Court held that the patent owner met that burden, because its disavowal barred future infringement actions based on the same patent claims against the same or essentially the same accused infringer’s products.  Second, the Court held that the burden shifted to the other party (the accused infringer) to demonstrate any evidence of an injury sufficient to support an ongoing case or controversy.  The accused infringer failed to meet that burden.  If anything, its statements all indicated that it didn’t believe it would infringe the patent in the future and that it would have strong preclusion arguments if the patent owner reasserted the claims again.  (Although one would imagine that the accused infringer had little incentive to argue that its products in development were likely to infringe, given that it had won non-infringement in the district court action.) The Court also rejected the accused infringer’s argument that there was a patent law exception to mootness under Fort James v. Solo Cup, 412 F.3d 1340 (Fed. Cir. 2005).  The accused infringer argued that a patent owner who strategically waits until after the resolution of its claim for patent infringement to offer a covenant not to sue (and not to appeal) does not moot a challenge to the patent’s validity.  While the several-page discussion is interesting and definitely worth a read, for our purposes it’s probably enough to say that the Court rejected any patent-specific exception to mootness.Finally, the Court refused to vacate the challenged portions of the PTAB’s decision.  The Court faulted the accused infringer for not raising vacatur until oral argument.  On this last point, Chief Judge Prost dissented.  She noted that “[t]ime and time again the Supreme Court has explained that vacatur is in order when the prevailing party below unilaterally moots an appeal.”  Citing the Supreme Court’s Munsingwear line of cases, she explained it “is only fair” to vacate.  She noted that this “appeal was not mooted by mere happenstance but by the unilateral act of an adversary to cement its victories below.”  The mere dismissal deprives the accused infringer of appellate review through no fault of its own, while vacatur clears the path for future relitigation of the appealed determinations.  And Chief Judge Prost excused the delay in the accused infringer’s request for vacatur.  She noted that the majority’s forfeiture ruling “ignores that [the patent owner’s] theory was a moving target throughout this appeal.  [The patent owner’s] response brief argued that [the accused infringer] lacked ‘standing,’ which does not trigger the Munsingwear analysis.”  And while the majority faulted the accused infringer for not requesting vacatur in its reply, the patent owner “had not yet even argued the case was moot.”

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Last Week in the Federal Circuit (January 4-8): Mooting your opponent’s appeal

Last Week in the Federal Circuit (January 4-8): Mooting your opponent’s appeal

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Now that the new year has started, we’re seeing an uptick in precedential opinions.  This week we decided to turn back to patent appeals, taking a look at IPRs 

Last week, we got what may be the last big batch of Federal Circuit opinions of 2020.  (In 2019, only six more opinions issued between this time and the end of the year.)  Although most of last week’s decisions were issued pretty speedily after argument, one case had been on the Court’s plate for a while.  After pending for over a year since argument, Biogen v. Iancu, an IPR appeal, ended anticlimactically in a Rule 36 affirmance.  (For more on opinion timing, see <a href="https://federalcircuitry.mofo.com/topics/We-Updated-Our-Stats-and-Looked-at-the-Timing-of-Appeals.html">our stats post last week</a>.)  As we haven’t discussed a patent case since November, we decided to remedy that deficiency—even if that means writing about a non‑precedential decision.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 2Non-precedential opinions:  12Rule 36:  5Longest pending case from argument:Biogen, Inc. v. Iancu, No. 19-1364 (376 days)Shortest pending case from argument (non-Rule 36):<a href="http://www.cafc.uscourts.gov/opinions-orders/19-2306.opinion.12-18-2020_1704269.pdf" target="_blank">Caterpillar Inc. v. ITC</a>, No. 19-2306 (42 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1387.opinion.12-17-2020_1703604.pdf" target="_blank">Bracco Diagnostics Inc. vs. Maia Pharmaceuticals, Inc.</a>, No. 20-1387Panel: Judges Lourie, Clevenger, and Chen, with Judge Lourie writing the opinionYou should read this case if: grammar gets you goingDoes “X/Y” mean “X and Y,” “X or Y,” or both?  The Federal Circuit took on the meaning of a slash in our case of the week.The case concerns drug patent claims referring to “a surfactant/solubilizer.”  Whether the defendant infringed the patent turns in part on the meaning of the slash.  According to the accused infringer, the slash means “and”:  To be “a surfactant/solubilizer,” a substance must be both a surfactant and a solubilizer.  According to the patentee, the slash captures both “and” and “or”:  To be “a surfactant/solubilizer,” a substance can be a surfactant or a solubilizer, or both.  (Nobody argued for the third possibility that the slash means only “or”:  The substance must be either a surfactant or a solubilizer but not both.)  Because this is an issue of claim construction and the parties didn’t resort to extrinsic evidence, the case called for an answer to the meaning of the slash as a matter of law.The district court sided with the patentee.  With no apparent sense of irony, the court construed the term to mean a “surfactant and/or a solubilizer.”  The district court then showed off even more uses of this beguiling punctuation mark, explaining that a surfactant can change the properties of a substance “at air/liquid or liquid/solid interfaces.”The Federal Circuit agreed that the slash in “surfactant/solubilizer” captures both “and” and “or.”  (The Court actually called it a “backslash,” which ordinarily <a href="https://www.dictionary.com/browse/backslash">refers to</a> a different punctuation mark, “\”.  Maybe we should be saying “slash/backslash” in this post, but we’re sensitive to our readers’ pain tolerance.)Had the Court looked outside of the patent, it could have surveyed the varied uses of slashes in common parlance.  We often understand slashes to mean “and”—as in “JD/MBA” and “I’m working remotely from my bedroom/office.”  Slashes can also mean “or”—as in “he/she.”  And they can mean, as the Court held here, both “and” and “or”—as in “Please bring food/drinks.”  (There are still <a href="https://www.thepunctuationguide.com/slash.html">more possibilities</a>.)  Is one of these the slash’s plain ordinary meaning?The Court didn’t go there, instead focusing only on contextual clues in this patent bearing on the slash’s meaning.  Other claims in the patent, the Court concluded, indicated that “surfactant/solubilizer” can include a substance that is only a “surfactant.”  Also, the specification used slashes with other words, and the Court found those uses consistent with the slash capturing “or.”This opinion won’t put an end to debates over slashes.  Not only was the opinion’s analysis tailored to this patent, but the Court also made the opinion non-precedential.  We hope that when the Federal Circuit takes on the next greatest linguistic debate of the modern era, it will issue its view on whether <a href="https://www.foodandwine.com/news/ruth-bader-ginsburg-hot-dog-sandwich">a hot dog is a sandwich</a> in a binding opinion.

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Last Week in the Federal Circuit (December 14-18): And/or confusion

Last Week in the Federal Circuit (December 14-18): And/or confusion

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Last week, we got what may be the last big batch of Federal Circuit opinions of 2020.  (In 2019, only six more opinions issued between this time and the end of 