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 nine 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-7402970{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, 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.

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 (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 

Last Week in the Federal Circuit

This week we talk about the most important standing decision decided by any court last week.  Ok, perhaps, it was the second most important standing decision.  Last week’s case addresses who may sue, and when they must sue by.  It was decided by an initial en banc Court.  And it led to an “Emergency Amendment” to the Federal Circuit Rules.  What’s not to love about that?  So 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: 11Rule 36:  7Longest pending case from argument:  Tie between <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1882.opinion.12-7-2020_1697072.pdf" target="_blank">Harrington v. DVA</a>, No. 19-1882 and <a href="http://www.cafc.uscourts.gov/opinions-orders/19-2359.opinion.12-7-2020_1697100.pdf" target="_blank">SiOnyx LLC v. Hamamatsu Photonics K.K.</a>, No. 19-2359 (62 days)Shortest pending case from argument (non-Rule 36):<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1321.opinion.12-8-2020_1698083.pdf" target="_blank">NOVA v. Secretary of Veterans Affairs</a>, No. 20-1321 (61 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1321.opinion.12-8-2020_1698083.pdf" target="_blank">NOVA v. Secretary of Veterans Affairs</a>, No. 20-1321Panel: En banc, with Judge Dyk writing the opinionYou should read this case if: you’re challenging an agency determination and your standing has been questioned.What better way to start the week than to talk about an initial en banc opinion, standing, and the Federal Circuit overruling one of its own local rules—all for the benefit of those who have served our country.  We love it.  It’s like Christmas, Chanukah, Kwanzaa, and Festivus all wrapped up in one!So what’s the big deal here?  Well, long story short: the VA promulgated two interpretative rules related to knee joints and knee replacements.  We’re not going to get into the nitty gritty details of those rules, but they ended up being challenged in a petition for review by the National Organization of Veterans’ Advocates, Inc. (“NOVA”) and some individuals.  NOVA faced hurdles.  Prior Federal Circuit precedent said there was no jurisdiction to review these types of rules.  Federal Circuit Rule 15(f) said that anyone who wants to challenge this kind of rule pre-enforcement needs to do so within 60 days of its issuance—not several years later.  And if that wasn’t enough, the Court sua sponte questioned whether NOVA had standing.Usually a petitioner facing that many threshold challenges—not the least of which was to get initial en banc review—is doomed.  But NOVA cleared them all.  We’ll focus on the issues of most interest to us:  standing and the Court’s own rules.  That’s not to diminish the other relief the petitioners obtained.  We recommend you read the whole decision.Standing.The Court sua sponte ordered the parties to address whether NOVA had standing, whether its members had standing, and whether NOVA had standing independent of its members.  Two things stand out.  The Court rightly needs to ensure it has Article III jurisdiction, and it has become particularly vigilant in the agency review context.  For example, the Court’s decision repeatedly cited Phigenix v. Immunogen—an IPR appeal in which a patent-challenger appellant’s standing was successfully challenged by a patent-owner appellee on appeal.  At one point, the Court even referred to the “Phigenix standard.”  And it explained that Phigenix created a summary judgment standard for standing—that is, the party asserting standing must meet a burden of production with affidavits or other evidence of “specific facts,” which for standing purposes will be taken to be true.NOVA responded by arguing that it had Article III standing because its members had standing, even though it identified no particular member who had standing.  Overruling past precedent, the Court explained that Article III requires more specificity; the association must identify an affected member, the nature of the member’s injury or threatened injury, and the reason why the challenged rule adversely affected that member.  The Court held:  “the organization must show that the veteran member has an actual or potential claim and that this claim is sufficiently affected by the particular challenged rule to meet the requirements of actual or imminently threatened concrete harm and the other requirements for that member to have Article III standing.”NOVA met this requirement by submitting declarations from its members who suffered injuries traceable to the VA’s regulations.  The government complained that none of those members had a claim pending before the VA.  But the Court brushed that complaint aside.  It explained that “Supreme Court precedent makes clear that standing does not require a pending adjudicative proceeding in order to generate a cognizable Article III injury.”  And it noted that “[i]n the patent context, a pending infringement action is not required to establish standing to challenge patent validity.”We won’t dwell on the other two issues for organizational standing.  It suffices to say that the Court found both satisfied.  NOVA showed that the interests it sought to protect were germane to the organization’s purpose.  And it showed its challenge to the VA’s rules didn’t require “individualized proof”—NOVA was making a purely legal challenge to the rules under the APA.Timeliness.  The Court also addressed whether NOVA’s petition was timely.  NOVA challenged the VA’s rulemaking under 38 U.S.C. § 502, which has no specific statute of limitations.  The Court noted that 28 U.S.C. § 2401 provides that “every civil action commenced against the United States shall be barred unless the complaint is filed within six years after the right of action first accrues.”  While that should have given NOVA six years to challenge the rule, Federal Circuit Rule 15(f) significantly shortened the time for challenges like NOVA’s:  “A petition for judicial review of an action of the Secretary of the Department of Veterans Affairs under 38 U.S.C. § 502 must be filed with the clerk of court within sixty (60) days after issuance of the action challenged in the petition.”  To state the obvious:  six years versus sixty days is a pretty big difference.So can a court’s local rule set a shorter limitations period that the one set by Congress?  Nope.  The Court held that Congress’s six-year limitations period “alone governs the time” to bring the action.  The Court noted that it was “aware of no appellate decisions that have approved a local rule either expanding or limiting the time to file a claim where a statutory time limit applies.”  It explained that courts of appeals have “uniformly” rejected district court local rules setting time limits inconsistent with the Federal Rules of Civil Procedure.  And it noted that the Supreme Court has resisted judicial efforts to depart from statutory time limits.So what happens when the Court invalidates its own rule like this?  It issues an “Emergency Amendment” to those rules.  The Court did that <a href="https://cafc.uscourts.gov/wp-content/uploads/Announcements/PublicNotices/Notice-EmergencyRuleAmendment-12092020.pdf" target="_blank">here</a>, striking the 60-day limitations period and replacing it with the 6 years required by 28 U.S.C. § 2401(a).

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 (December 7-11): Standing and Invalidating the Court’s Own Local Rule

Last Week in the Federal Circuit (December 7-11): Standing and Invalidating the Court’s Own Local Rule

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This week we talk about the most important standing decision decided by any court last week.  Ok, perhaps, it was the second most important standing decision.  

Apparently it’s a <a href="https://www.nytimes.com/2015/11/26/science/no-the-tryptophan-in-turkey-wont-make-you-sleepy.html">myth</a> that Thanksgiving turkey makes you sleepy.  We beg to differ, judging from how much time it took us to shake off the food coma.  The Federal Circuit seemingly was in the same boat:  It had a slow post-Thanksgiving week, issuing only 5 decisions.  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: 2Rule 36: 0Longest case pending from argument: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2078.OPINION.12-1-2020_1693794.pdf">Albright v. United States</a>, No. 19-2078 (91 days)Shortest case pending from argument (non-rule 36): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2293.OPINION.12-4-2020_1696173.pdf">Esparraguera v. Army</a>, No. 19-2293 (56 days)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2293.OPINION.12-4-2020_1696173.pdf">Esparraguera v. Army</a>, No. 19-2293Panel: Chief Judge Prost and Judges Lourie and Moore, with Chief Judge Prost writing the opinionYou should read this case if: you have an appeal from an unusual type of agency order“This is a case about jurisdiction.”  That’s how our case of the week begins, and we were instantly hooked.  (Others might have the opposite reaction.)  Specifically, this is a case about appellate jurisdiction—even more specifically, whether the agency order appealed from was “final.”The case involves an uncommon type of agency proceeding:  an “informal hearing” before the Merit Systems Protection Board for a career appointee removed from the Senior Executive Service.  Let’s unpack that a bit.  The Senior Executive Service (SES) is a small, elite category of government employees—as the name suggests, these are the civil service’s senior executives.  For a career government employee, appointment to an SES position is a boon:  more pay and more power.  But like all good things, SES appointments can come to an end.  Career appointees can be removed from the SES and demoted to a non-SES position for “less than fully successful executive performance.”That’s what happened to the appellant in this case.  Maria Esparraguera was the top labor lawyer in the Army, an SES position.  The Army removed her from that position based on concerns about her leadership.  (She had taken unorthodox steps when filling a vacancy in her organization that advantaged one candidate over the others.)  The Army demoted her to a non-SES (but still senior) position.Esparraguera invoked 5 U.S.C. § 3592(a)(2), which entitled her to an “informal hearing” “at which the career appointee may appear and present arguments.”  The Merit Systems Protection Board heard her arguments and issued an order.  But that order did not say whether the removal was proper; it merely summarized the proceedings and referred the record to the Army for further consideration of the removal decision.  In response, the Army stuck to its guns.When Esparraguera appealed the Board’s order, the Federal Circuit held that it lacked appellate jurisdiction.  The Court has appellate jurisdiction over the Board only for “a final order or final decision.”  “Final,” the Court explained, has the same meaning in this context as it usually does in federal appellate procedure.  The question here was thus whether the Board’s order in Esparraguera’s hearing under § 3592(a)(2) was “final” under ordinary appellate principles.The Court held that it was not.  Esparraguera was challenging her removal, so the Court asked whether the Board’s order was final “with respect to Ms. Esparraguera’s removal.”  It was not, the Court explained, because the order “did not dispose of the ‘case’ of her removal.”  Recall that the Board’s order simply referred the record to the Army for its consideration without deciding whether the removal was proper.  Indeed, the Board could not have made that decision, as the Court held that performance-based SES removals are unreviewable by the Board.Esparraguera invoked the presumption in favor of judicial review, but the Court was unpersuaded.  It said that even if she was entitled to judicial review of the Board’s order in some court, the Federal Circuit was not the one.  But the Court also stopped short of deciding whether judicial review was in fact available elsewhere.  The presumption thus seems to have carried little weight in the Court’s eyes, but perhaps that’s just because the Court thought this order was so clearly unreviewable.

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Last Week in the Federal Circuit (November 30-December 4): Appellate Jurisdiction Over Agency Orders

Last Week in the Federal Circuit (November 30-December 4):  Appellate Jurisdiction Over Agency Orders

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The Federal Circuit eased back into business after Thanksgiving with an interesting case about appellate jurisdiction.

It’s a few days before Thanksgiving and the sunsets are shorter and earlier, so we thought we’d discuss a CBM case before the sun completely sets on that procedure. 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: 3Rule 36: 1Longest case pending from argument: Tie between <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-1852.opinion.11-19-2020_1688201.pdf">Whitewater West Industries v. Alleshouse</a>, Nos. 19-1852, 19-2323 and <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/20-1054.opinion.11-19-2020_1688174.pdf">Vectura Limited v. GlaxoSmithKline LLC</a>, No. 20-1054 (45 days)Shortest case pending from argument (non-rule 36): <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-2040.opinion.11-17-2020_1686702.pdf">Koninklijke Philips N.V. v. Iancu</a>, No. 19-2040 (15 days)Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/18-1635.opinion.11-17-2020_1686726.pdf">SIPCO, LLC v. Emerson Electric Co., No. 18-1635 (Nov. 17, 2020)</a>Panel: Judges O’Malley, Reyna, and Chen, with Judge Chen authoring the opinionYou should read this case if: you filed a CBM case before the statutory sunset in September.Even though Halloween is long gone (as is our candy), we thought we’d discuss a zombie case this week. First decided in September 2019, the original Federal Circuit decision in this case held that the Board erred in instituting CBM review on SIPCO’s patent—that is, the Board erroneously determined SIPCO’s patent recited a business method that was not excluded from review as a “technological invention.” That meant that SIPCO had beat the long odds (see post <a href="https://federalcircuitry.mofo.com/topics/201021-who-wins-who-loses-revisited.html">here</a>) and prevailed as a patent owner in a PTAB case. (For those that don’t know what CBM is, it’s probably a little late now. The procedure sunset in September 2020, which means there are no more future cases although the Board and Court will still be deciding the pending ones.)Emerson Electric, however, said not so fast. It filed a cert petition raising whether the Patent Office’s threshold determination that SIPCO’s patent qualified for CBM review was reviewable in an appeal from a PTAB final decision. That issue, of course, was similar to a then-pending case in the Supreme Court: Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020). And in Thryv, the Supreme Court held that the Patent Office decision as to whether earlier litigation bars institution of inter parties review under 35 U.S.C. § 315(b) is “final and nonappealable” under the “No Appeal” provision of 35 U.S.C. § 314(d). And as is common when the question presented in a pending cert petition may be affected by a recently decided Supreme Court decision, the Supreme Court GVR’d (granted the petition, vacated the decision, and remanded), here, in light of Thryv.So SIPCO came back to life in the Federal Circuit. The Court noted that CBM review is subject to the near-identical “No Appeal” provision in 35 U.S.C. § 324(e), which states that “[t]he determination by the Director whether to institute a post-grant review under this section shall be final and nonappealable.” And the Court explained that the determination whether a patent qualifies for CBM review—that is, whether it claims a business method and is not a “technological invention”—is “expressly and exclusively tied to the decision to institute the proceeding.” The Federal Circuit thus concluded that Thryv makes clear that the threshold determination that a patent qualifies for CBM review is non-appealable under 35 U.S.C. § 324(e).Having held that it couldn’t review whether SIPCO’s patent was a CBM, the Federal Circuit had to address patentability. The PTAB had determined the claims ineligible under § 101 and unpatentable under § 103. The Court side-stepped eligibility and addressed only obviousness—which really amounted to three claim construction issues, although the Court noted that substantial evidence supported the Board even under two of SIPCO’s preferred constructions. We’re not going to dive into those case-specific claim construction issues here—one of which briefly touches upon the ever-present issue of trying to import limitations from the specification into the claims. But as an aside, it you’ve been looking for a case stating the what-should-be-unremarkable proposition that just because a claim term had one meaning in one case doesn’t mean it has to have the same meaning in another case, this case is for you. The Court noted that just because it construed the term “low power RF signal” one way in an earlier case involving the same parties doesn’t mean that a similar term has the same meaning in a later case. The Court noted: “that case involved different patents, in entirely different patent families, with different specifications. We find it unsurprising that similarly worded claims may be construed differently when presented in such different contexts and different records.”Enjoy Thanksgiving everyone.

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Last Week in the Federal Circuit (November 16-20): A Beautiful Sunset for CBMs

Last Week in the Federal Circuit (November 16-20): A Beautiful Sunset for CBMs

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It’s a few days before Thanksgiving and the sunsets are shorter and earlier, so we thought we’d discuss a CBM case before the sun completely sets on that proced

Last week, the Federal Circuit was relatively busy, issuing five precedential opinions and three other written decisions.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 5Non-precedential opinions: 3Rule 36: 6Longest case pending from argument: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2291.OPINION.11-9-2020_1682328.pdf">Hessami v. MSPB</a>, No. 19-2291 (189 days)Shortest case pending case from argument (non-rule 36): <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1828.OPINION.11-13-2020_1684550.pdf">In re: Google Technology Holdings LLC</a>, No. 19-1828 (38 days)Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1104.OPINION.11-9-2020_1682293.pdf">Donner Technology, LLC v. Pro Stage Gear, LLC</a>, No. 20-1104Panel: Chief Judge Prost and Judges Dyk and Hughes, with Chief Judge Prost writing the opinionYou should read this case if: you have an obviousness issue where the prior art comes from a different fieldIn deciding whether a claimed invention is obvious, the Federal Circuit has held, the prior art that matters is the “analogous art.”  What is “analogous art”?  The Court took up that question in our case of the week.This case involves a patent for a guitar effects pedalboard.  An electric guitar can be connected to pedals that make sound effects.  A pedalboard, as the name suggests, is a board that houses the pedals.  According to the patent, prior art pedalboards made it difficult to swap or rearrange pedals because of how the wiring was laid out.  The claimed invention aims to solve that problem with a different way of mounting pedals and routing wires.The IPR petition in this case challenges various claims as obvious in light of a patent relating to electrical relays.  That patent—we’ll follow the Court’s lead and call it the “Mullen” patent—issued several decades earlier and describes a structure that provides space for wiring channels.The PTAB rejected the obviousness challenge because it determined that the Mullen patent is not “analogous art.”  The Federal Circuit vacated the decision, finding multiple errors in the PTAB’s “analogous art” analysis.The Mullen patent, all agreed, is not from the “same field of endeavor” as the claimed invention (one concerns electrical relays; the other concerns guitar pedalboards).  Therefore, under Federal Circuit precedent, the reference is analogous art only if it “still is reasonably pertinent to the particular problem” addressed by the patent.  The Court held that this means “the problems to which both relate” (meaning both the reference and the claimed invention) “must be identified and compared.”The PTAB failed to do so, the Court held.  For one, the PTAB never identified the problem addressed by the prior art reference.  For another, the PTAB didn’t properly identify the problem addressed by the claimed invention.  According to the PTAB, the patent’s purpose was “to mount guitar effects on a pedal board.”  The Court rejected this as a factual matter, finding it not supported by substantial evidence.  The Court also found legal error, holding that the PTAB’s characterization of the patent’s purpose “is so intertwined with the patent’s field of endeavor that it would effectively exclude consideration of any references outside that field.”  Future cases may hash out just how broadly to define the problem a patent is trying to solve.The Court also noted yet another reversible error for good measure:  The PTAB appeared to have ignored arguments and evidence presented by the petitioner.The Court went on to address three considerations the PTAB had relied on.  First, the PTAB noted “significant differences” between the Mullen patent and the claimed invention.  Second, the PTAB concluded that the relevant person of ordinary skill would have had a poor understanding of the Mullen technology.  Third, the Mullen patent was much older than the claimed invention.  These considerations were insufficient standing alone to make the Mullen patent irrelevant, the Federal Circuit held, because the PTAB failed to connect these observations to the governing legal standard.By this point, the Court had all but held that the Mullen patent was analogous art.  Yet the Court stopped short of saying so.  Instead, it vacated the PTAB’s decision and left it to the Board to apply the clarified legal standard to these facts.  The Court may have been driven by scrupulous adherence to principles of judicial modesty.  Or maybe the panel members disagreed over whether the Mullen patent was indeed analogous art, and this narrow result was an effective compromise that yielded this instructive—and unanimous—opinion.

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Last Week in the Federal Circuit (November 9-13): Analyzing Analogous Art

Last Week in the Federal Circuit (November 9-13): Analyzing Analogous Art

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For obviousness, what counts as relevant prior art?  The Federal Circuit explains in our case of the week.

Last week was argument week at the Federal Circuit, which as usual meant the Court issued several Rule 36 affirmances and short non-precedential decisions. But tucked in between those was at least one case—a Hatch-Waxman case—with important ramifications going forward. 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: 9Rule 36: 6Longest pending case from argument: <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-1530.opinion.11-4-2020_1680467.pdf">Chevron U.S.A. Inc. v. University of Wyoming Research</a>, No. 19-1530 (155 days)Shortest pending case from argument (non-Rule 36): <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-2129.opinion.11-6-2020_1681764.pdf">Perfectus Aluminum, Inc. v. United States</a>, No. 19-2129 (32 days)Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-2402.opinion.11-5-2020_1681030.pdf">Valeant Pharmaceuticals North America LLC v. Mylan Pharmaceuticals Inc.</a>, No. 19-2402 (Nov. 5, 2020)Panel: Judges Newman, O’Malley, and Taranto, with Judge O’Malley writing the opinion.You should read this case if: you have a venue issue in a Hatch-Waxman case.Since the Supreme Court’s TC Heartland decision in 2017, patent litigants and courts have grappled with venue questions that the Supreme Court left unanswered. In pharmaceutical patent suits between brand-name and generic drug companies under the Hatch-Waxman Act, one of these questions was where the relevant “acts of infringement” occur, since that location is critical under the patent venue statute:Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.28 U.S.C. § 1400(b) (emphasis added).In Hatch-Waxman cases, the act of infringement is statutorily defined under 35 U.S.C. § 271(e)(2)(A) as the submission of an abbreviated new drug application (“ANDA”) for a patented drug or use. When suit is filed, the generic drug has yet to be approved by the FDA or marketed in the United States, so more traditional acts of infringement (e.g., selling the infringing product) have yet to occur. Instead, a Hatch-Waxman suit seeks to resolve in advance whether the future distribution of the generic drug would infringe the asserted patent claims.This aspect of the Hatch-Waxman statutory scheme led to the question in Valeant: for venue purposes, is the location where “acts of infringement” occured limited to where the defendant committed acts relating to the submission of the ANDA, or does it also include the locations where the defendant contemplates future distribution of the generic drug that allegedly would infringe the patent claims? Practically speaking, the “future distribution” theory would have placed few restrictions on venue (beyond the “regular and established place of business” requirement) given that pharmaceutical companies typically seek to market their drugs throughout the United States after FDA approval.The Federal Circuit went with the more restrictive answer based on a “plain language” reading of the statutes. It held that § 1400(b)’s “has committed acts of infringement” language focuses on the location of a past act of infringement—where an act preceding the filing of suit occurred. And it held that only the submission of the ANDA constitutes an act of infringement under § 271(e)(2). Thus, other than where a defendant is incorporated, venue is proper “only in those districts that are sufficiently related to the ANDA submission—in those districts where acts occurred that would suffice to categorize those taking them as a ‘submitter’ under § 271(e).” This holding significantly limits venue options for Hatch-Waxman cases.The Federal Circuit acknowledged some of the policy concerns with this approach: generic companies could “game” the system to avoid certain jurisdictions, and brand-name companies might have to file identical suits against different generic companies in multiple districts. But the Federal Circuit found that these concerns could not override the plain language of the statutes and left it to Congress to decide whether to revise them. It remains to be seen whether generic companies actually will try to avoid certain jurisdictions by moving their operations (and possibly changing their place of incorporation as well).Interestingly, in answering the big-picture venue question for Hatch-Waxman cases, the Federal Circuit left some more nuanced questions unanswered. It explicitly declined to say precisely what acts are sufficient to make a company a “submitter” under § 271(e), leaving future cases to “define what all relevant acts involved in the preparation and submission of an ANDA might be.” It also left open the question of whether an act of infringement occurs in the District of Maryland based on the FDA’s receipt of the ANDA there. It did not need to address these questions in Valeant because the district court found that no act involved in the submission of the ANDA occurred in the district where the suit was filed (New Jersey). The Federal Circuit did note that “acts protected by the safe harbor provisions in § 271(e) are non-infringing for all purposes, including venue.” But district courts following Valeant will have to sort out for themselves the precise contours of the acts that make one a “submitter” for venue purposes.

Amgen Inc., et al. v. Sandoz Inc., et al. (Northern District of California).

Applied Biosystems Group v. Illumina (Northern District of California).

Nevro v. Stimwave (District of Delaware).

Nevro v. Boston Scientific (Northern District of California).

The Medicines Company v. APP Pharmaceuticals (District of Delaware).

Alzheimer’s Institute of America v. CoMentis (Western District of Oklahoma).

Trimble Navigation Ltd. v. Hemisphere GPS (Northern District of California).

Intellectual Ventures v. Altera (District of Delaware).

Confidential Wireless Telecommunications Arbitration (International Centre for Dispute Resolution).

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Eric Pai focuses his practice on intellectual property litigation, with particular emphasis on life sciences disputes regarding biotechnology, medical devices, and biologics and pharmaceuticals. He ha

Eric C. Pai

Eric Pai

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

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

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Last week was argument week at the Federal Circuit, which as usual meant the Court issued several Rule 36 affirmances and short non-precedential decisions. But 

In what seems to be a pattern, the week before argument week was again light on output at the Federal Circuit. The Court issued just two opinions and two dispositive orders. 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: 1 opinion and 1 precedential orderNon-precedential opinions: 1 opinion and 1 non-precedential orderRule 36: 0Longest and shortest case pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1526.OPINION.10-27-2020_1675813.pdf" target="_blank">Corcamore, LLC v. SFM, LLC</a>, No. 19-1526 (236 days) (only decision this week in which argument was held)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-142.ORDER.10-28-2020_1676855.pdf" target="_blank">In re Nitro Fluids LLC</a>, No. 20-142 (Oct. 28, 2020)Panel: Judges Reyna, Wallach, and Chen, with Judge Reyna authoring the order.You should read this case if: you have a client accused of infringement in multiple forums by the same plaintiff.This week we look at another grant of a mandamus petition from the Federal Circuit, which seems to be a bit of a trend (see <a target="_blank" href="https://federalcircuitry.mofo.com/topics/last-week-in-the-federal-circuit-september-14-18-a-tale-of-two-mandamus-petitions.html">A Tale of Two Mandamus Petitions</a>). In this week’s order, the Federal Circuit sent back Judge Albright’s denial of a motion to transfer a case from the Western District to the Southern District of Texas and gave guidance on the first-to-file rule.Cameron International Corp. first sued Nitro Fluid for patent infringement in the Southern District of Texas. That court stayed the case pending an inter partes review. Cameron then sued Nitro Fluid in the Western District of Texas on related patents but based on the same products.Despite the pending Southern District case, the Western District court rejected a motion to transfer or decline jurisdiction based on the first-to-file rule. That rule generally says that “the court in which an action is first filed is the appropriate court to determine whether subsequently filed cases involving substantially similar issues should proceed.” But the Western District court thought there were “sufficiently compelling circumstances” to overcome the rule based on applying the traditional transfer factors.The Federal Circuit vacated that order, holding that the district court had abused its discretion. The Federal Circuit accepted that, under Fifth Circuit law, “compelling circumstances” could overcome the first-to-file rule and that the 1404(a) transfer factors could in some cases amount to compelling circumstances. But it held that the district court got “matters backwards” by placing the burden on Nitro Fluid and asking whether the factors favor transfer. Instead, the district court should have placed the burden on Cameron and asked whether “the balance of transfer factors favors keeping the case in the second-filed court.”The Federal Circuit also held that the district court had committed “clear errors” in analyzing two of the transfer factors. First, in considering court congestion, the district court wrongly focused on the fact that it could hear cases more quickly than the Southern District. But it failed to consider whether that was because of “an appreciable difference” in congestion, as required, or instead due to other factors, like a stay in favor of Patent Office proceedings. Second, the district court erred in considering judicial economy. It wrongly elevated “its own views on the importance of speed of resolution” above the premium that the first-to-file rule places “on the importance of allowing one court to resolve substantially overlapping cases.” As the Federal Circuit explained, “there is no reason to think that even if the second-filed court could more quickly resolve this case than the first-to-file court that would alleviate the need for two courts to resolve the overlapping issues.” The Federal Circuit thus remanded to the district court to reconsider the factors under the correct test.

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Last Week in the Federal Circuit (October 26-30): Another Texas Mandamus Grant

Last Week in the Federal Circuit (September 14-18): A Tale Of Two Mandamus Petitions

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This week we look at yet another mandamus grant from a Texas district court on a transfer motion. This time the Court provides guidance on both the first-to-fil

Last Week in the Federal Circuit (October 26-30): Another Texas Mandamus Grant

Last week we <a href="https://federalcircuitry.mofo.com/topics/Supreme-Court-to-Review-Arthrex.html">discussed</a> the first Federal Circuit case added to the Supreme Court’s docket this Term, and we wondered when we’d have the opportunity to discuss whatever cases might be next in the pipeline. Lucky for us, that opportunity came a little sooner than expected. We got a precedential order with a concurring opinion teeing up the latest Section 101 challenge for the Supreme Court to consider (or not). Below we provide our usual weekly statistics and our case (or in this instance, order) of the week.Precedential opinions: 2Non-precedential opinions: 3Rule 36: 4Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1094.opinion.10-20-2020_1672276.pdf" target="_blank">Monk v. Wilkie</a>, No. 19-1094 (323 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1837.opinion.10-20-2020_1672247.pdf" target="_blank">Finjan, Inc. v. Juniper Networks, Inc.</a>, No. 19-1837 (13 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/18-1763.order.10-23-2020_1674428.pdf" target="_blank">American Axle & Manufacturing, Inc. v. Neapco Holdings LLC</a>, No. 18-1763 (precedential order denying motion to stay the mandate)Panel: Judges Dyk, Moore, and Taranto, with Judge Dyk authoring the order and Judge Moore filing a concurring opinionYou should read this case if: you’re trying to stay a mandate or you’re following American AxleThis week is about some process and a little substance. First, process: we all know about American Axle (which we discussed <a href="https://federalcircuitry.mofo.com/topics/Agreeing-to-Disagree-en-Banc-Style--How-Often-Do-Judges-Dissent-From-Denial-of-Rehearing-En-Banc.html">here</a>), where the Federal Circuit sharply divided in denying rehearing en banc and which may present the Supreme Court with an opportunity to address Section 101 challenges outside the software and diagnostic context. In Friday’s precedential order, the Federal Circuit denied patent owner American Axle’s motion to stay the mandate pending the filing of a cert. petition. Some circuits are rather generous in granting such relief, but others (including the Federal Circuit) have tended to be more stingy. Friday’s order was no exception.What makes the order noteworthy is that the Federal Circuit adopted a standard for evaluating these motions, and it did so as a matter of Federal Circuit law rather than looking to regional circuit law. It looked to how the Supreme Court and individual Justices’ in-chambers opinions have examined similar requests for relief. And it concluded that, to stay the mandate, a movant must show: “(1) a reasonable probability that four Justices will consider the issue sufficiently meritorious to grant certiorari; (2) a fair prospect that a majority of the [Supreme] Court will vote to reverse the judgment below; and (3) a likelihood that irreparable harm will result from the denial of a stay.” And in close cases, the Federal Circuit should balance the equities and weigh the relative harms between the parties. Importantly, the Court emphasized the need to show irreparable harm, and that a request to stay the mandate can be (and has been) denied on that basis alone. The Court cited an in-chambers opinion by Chief Justice Roberts refusing to stay a mandate—even after the Supreme Court had granted certiorari—because the patent owner seeking to prevent generic competition had failed to show irreparable harm.Given that, the Federal Circuit’s focus on irreparable harm in the American Axle order was hardly surprising. One might have thought that American Axle could satisfy the “reasonable probability of cert.” prong of the Court’s test, given that the Federal Circuit itself sharply divided over the issue in denying rehearing and that the Supreme Court has expressed recent interest in 101 issues (discussed <a href="https://federalcircuitry.mofo.com/topics/200714-supreme-court-review-sometimes-what-is-not-decided-matters-more-than-what-is.html">here</a>). But for the casual observer, it was difficult to see how the patent owner could show irreparable harm. And that’s where American Axle’s request faltered. It based its assertions of irreparable harm on the expected continuation of potentially expensive district court litigation that might need to be redone if the Supreme Court were to review and reverse the Federal Circuit’s decision. The Federal Circuit noted that mere litigation costs, even if substantial, aren’t irreparable harm. (But as Judge Moore noted in her concurrence, district court judges have discretion to stay or slow down litigation even after a mandate issues. In our experience, some judges will do so, especially where there’s a basis for a credible cert. petition.)And then for some substance: Judge Moore’s concurring opinion emphasized that American Axle had satisfied the first two prongs of the Court’s test: (1) a reasonable probability that certiorari will be granted and (2) a fair prospect that the Supreme Court will reverse. She explained that the Federal Circuit’s 101 decision is primed for Supreme Court review—no doubt providing American Axle with more good quotes for its upcoming cert. petition. Here are a few: Judge Moore noted that “[t]he Supreme Court often grants certiorari to resolve circuit splits that render the state of the law inconsistent and chaotic. What we have here is worse than a circuit split—it is a court bitterly divided.” (Internal citations omitted.) She stated that, “[a]s the nation’s lone patent court, we are at a loss as to how to uniformly apply § 101.” “There is very little about which all twelve [active judges on the Federal Circuit] are unanimous, especially when it comes to § 101.” Yet she said they were “unanimous” in their “unprecedented plea for guidance.” And she emphasized that American Axle differs from some of the Supreme Court’s past 101 cases, involving business methods or diagnostics. The claims here “are directed to a process for manufacturing car parts—the type of process which has been eligible since the invention of the car itself.”With that, we’re sure there’s more to come—regardless of what the Supreme Court does with any cert. petition here. Under the Supreme Court’s current COVID-19 deadline <a href="https://www.supremecourt.gov/orders/courtorders/031920zr_d1o3.pdf" target="_blank">extensions</a>, American Axle has 150 days from the July 31, 2020 rehearing denial to seek cert.

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

Deanne Maynard

Deanne Maynard | Appellate + Supreme Court Lawyer

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

Deanne E. Maynard

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Last Week in the Federal Circuit (October 19-23): Still More Axes to Grind in American Axle

Last Week in the Federal Circuit (October 19-23): Still More Axes to Grind in American Axle

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Last week we discussed the first Federal Circuit case added to the Supreme Court’s docket this Term, and we wondered when we’d have the opportunity to discuss w

Perhaps the biggest Federal Circuit news last week didn’t come from the Federal Circuit; it happened when the Supreme Court granted review in Arthrex (read our <a href="https://federalcircuitry.mofo.com/topics/Supreme-Court-to-Review-Arthrex.html" target="_blank">insight</a>).  In the Federal Circuit, the Court not surprisingly issued a smattering of Rule 36s in the week following oral arguments and more precedential opinions than the week before.  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: 2Rule 36: 3Longest pending case from argument: Tie between <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1583.OPINION.10-14-2020_1668711.pdf">Warsaw Orthopedic, Inc. v. SASSO</a>, No. 19-1583 and <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1213.OPINION.10-15-2020_1669685.pdf">POSCO v. United States</a>, No. 19-1213 (343 days each).Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2108.OPINION.10-15-2020_1669672.pdf">St. Jude Medical, LLC v. Snyders Heart Valve LLC</a>, Nos. 19-2108, -2109, -2140 (41 days)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2108.OPINION.10-15-2020_1669672.pdf">St. Jude Medical, LLC v. Snyders Heart Valve LLC</a>, Nos. 19‑2108, ‑2109, ‑2140 (Oct. 15, 2020)Panel: Judges Newman, O’Malley, and Taranto, with Judge Taranto writing the opinion.You should read this case if: you have a matter involving the meaning of a claim term defined functionally.Perhaps because it’s almost Halloween, this week we’re focusing on a case that is very much for the faint of heart. The opinion addresses several issues, but we’re going to discuss just one—the construction of a claim term defined primarily by function under the broadest reasonable interpretation.Snyder owns a patent claiming an artificial heart valve that is implantable without surgery and without removing the damaged valve. St. Jude challenged the validity of several of Snyder’s claims in inter partes reviews. The parties disputed, among other things, the meaning of a claim term requiring an artificial heart valve with a “frame sized and shaped for insertion between the upstream region and the downstream region” of the native heart valve. Applying the broadest reasonable interpretation standard, the Board refused to limit the claim to artificial valves “sized and shaped for insertion into a damaged heart valve.” It instead read the “sized and shaped” language to require merely a valve sized and shaped to fit “in a position between” the upstream and downstream valve regions, regardless of whether the damaged valve remained or had been removed. On this basis, the Board found Snyder’s claims anticipated by a prior-art reference describing an artificial valve that entirely replaced the damaged native valve.The Federal Circuit held that the Board’s construction of the “sized and shaped” limitation was at odds with the specification’s clear disclosures. The Court began with the claim language, reasoning that “[t]he requirement that the frame be ‘sized and shaped’ a certain way suggests a focus on how the frame is fitted to the surrounding material (which depends on whether the native valve remains).” The Court also noted that the claim preamble refers to “repairing a damaged heart valve having a plurality of cusps.” That reference to “cusps” of the damaged valve “appears superfluous if claim 1 is interpreted to include embodiments where the damaged valve and its cusps are removed.”Although the claim language was helpful, it was the specification that ultimately “resolve[d] the interpretive question” in the Court’s view. The specification stated that “the frame is sized and shaped for insertion between the plurality of cusps C of the damaged heart valve.” To the Court, that language went beyond describing only the valve’s placement between upstream and downstream regions (as the Board had held), it tied the “sized and framed” claim language to the artificial valve’s specific function of “fitting between the cusps of the intact native valve.” Other specification passages confirmed the importance of that sizing and fitting to the invention by consistently describing how the invention “can be inserted without removing the native heart valve and that this is an improvement on the prior art.” Indeed, for that very reason the specification had distinguished the prior art that the Board held anticipatory under its construction. As the specification explained, the purportedly anticipatory reference required “removal of the native valve,” but the invention was designed to overcome the need for removal. Based on these passages, the Court held that it was “unreasonable” to read the “sized and shaped” limitation as covering an artificial valve fitted only to occupy the space left after removing a damaged native valve. That changed construction was enough to reverse the Board’s anticipation holding.

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Last Week in the Federal Circuit (October 12-16): The Federal Circuit on Matters of the Heart

Last Week in the Federal Circuit (October 12-16): The Federal Circuit on Matters of the Heart

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Perhaps the biggest Federal Circuit news last week didn’t come from the Federal Circuit; it happened when the Supreme Court granted review in Arthrex (read our 

Last week was court week, and as we noted in our <a target="_blank" href="201008-federal-circuitry-brief-insights-october-8-2020.html">video insights</a>, the Federal Circuit was very busy hearing arguments (not many were cancelled). Given that, it is perhaps no surprise that there weren’t many precedential opinions. 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: 9Rule 36: 5Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1602.opinion.10-8-2020_1666448.pdf" target="_blank">Ecoservices, LLC v. Certified Aviation Services</a>, No. 19-1602 (184 days).Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1878.opinion.10-6-2020_1664931.pdf" target="_blank">Exmark Manufacturing Company v. Briggs & Stratton Corp.</a>, No. 19-1878 (154 days).Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-2244.opinion.10-7-2020_1665798.pdf" target="_blank">AntennaSys, Inc. v. AQYR Technologies, Inc.</a>, No. 2019-2244 (Oct. 7, 2020).Panel: Judges O’Malley, Bryson, and Reyna, with Judge O’Malley writing the opinion.You should read this case if: you have a patent-owner joinder issue (or you’re the sort of person who slows down to look at an accident on the other side of the road).This case has all the hallmarks of a law school exam. The plaintiff-appellant patent owner briefed this appeal as a straightforward claim construction dispute—in district court, it had received an unfavorable claim construction ruling and then effectively conceded non‑infringement so it could appeal. The Federal Circuit thought there were antecedent questions that needed to be answered first, but weren’t. Judge O’Malley’s opinion for the Court starts by saying, “[t]here is little more frustrating for a district court judge than to have the parties jointly lead you down a wrong, and possibly unnecessary, path. That is what occurred here.” (Once a district court judge herself, she may know a thing or two about that.)In its simplest form, this case involves plaintiff patent owner AntennaSys suing for patent infringement. But the case is far from that simple: AntennaSys did not own the patent alone. It had only a ½ interest, with one of the defendants (Windmill) originally owning the other ½ interest. And Windmill (not AntennaSys) originally possessed the exclusive rights in the patent under a license, so long as it met certain sales requirements (which it did not). The license required Windmill to create an LLC (GBS Positioner) to hold Windmill’s patent and license interests. Given that AntennaSys ended up in a dispute with Windmill, things obviously didn’t work out. AntennaSys sued Windmill’s wholly owned subsidiary, AQYR, for infringement of the patent that Windmill (or perhaps GBS Positioner) partially owned. And AntennaSys also raised state law claims against Windmill based on Windmill’s alleged failure to pay royalties.If you’re confused, maybe this will clear things up:<ul><li>AntennaSys is the plaintiff, has a ½ patent interest, and is suing AQYR for infringement and Windmill for failure to pay royalties.</li><li>AQYR is a defendant owned by Windmill.</li><li>Windmill is a defendant and has (or had) a ½ patent interest.</li><li>GBS Positioner is not in the lawsuit, but maybe has Windmill’s ½ patent interest.</li></ul>Or maybe not.To unravel things, the Federal Circuit recited some basic principles: under 35 U.S.C. § 262, patent co‑owners are essentially at each other’s mercy. One co-owner can extinguish another co‑owner’s ability to seek infringement damages by granting a license. And an action for patent infringement must join as plaintiffs all co-owners (subject to a couple exceptions). Finally, the Court noted that a non-consenting co-owner can never be involuntarily joined in an infringement action (although on this point, Judge O’Malley stated that she disagreed with this rule but was bound by Federal Circuit precedent).The problem, the Court noted, was that these issues were threshold considerations (before you get to claim construction and infringement) and were not developed by the parties in the district court, and they were potentially intertwined with other issues. So the Court decided its best course was to let the district court deal with them in the first instance on remand. For several paragraphs, the Court noted some of these issues, which included:<ul><li>Did Windmill waive its right as a co-owner not to join the suit against its subsidiary AQYR?</li><li>Did AQYR have a license (express or implied) from Windmill to practice the patent as a defense to infringement?</li><li>What role does GBS Positioner play? And if GBS Positioner owns Windmill’s interest then why wasn’t GBS Positioner an indispensable party to the litigation?</li></ul>Finally, the Court noted that if plaintiff’s infringement claim ends up being dismissed on remand, then the district court would lack subject matter jurisdiction over the state-law royalty claims. Applying settled law, the Court rejected plaintiff’s argument that whenever a state-court cause of action requires a court to engage in claim construction, the cause of action necessarily arises under the Patent Act. The Court noted that, if that were enough to support federal subject matter jurisdiction, “we would find jurisdiction in any case implicating a patent law issue.”

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Last Week in the Federal Circuit (October 5-9): A Tangled Knot of Patent Ownership and Required Parties

Last Week in the Federal Circuit (October 5-9): A Tangled Knot of Patent Ownership and Required Parties

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In this week’s case, the Federal Circuit tries to unravel a tangled knot of patent ownership and required parties. Or rather, the Federal Circuit identifies som