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

Brian Matsui

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

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

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

Seth Lloyd

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

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

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

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

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 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.”

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

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

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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

Last Week in the Federal Circuit

The Supreme Court is abuzz, kicking off a new term this morning and announcing several cert grants last week.  Things have been calmer across town at the Federal Circuit—which, unlike the Supreme Court, has been working all summer.  The Federal Circuit issued only three precedential opinions last week and accounted for none of the recent cert grants.  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: 3Rule 36: 0Longest pending opinion from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1133.opinion.9-28-2020_1659873.pdf" target="_blank">Biogen MA Inc. v. EMD Serono, Inc</a>., No. 19-1133 (206 days)Shortest pending opinion from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-2367.opinion.9-28-2020_1659915.pdf" target="_blank">Mote v. Wilkie</a>, No. 19-2367 (55 days)Case of the week:  <a href="http://www.cafc.uscourts.gov/opinions-orders/18-1976.opinion.10-2-2020_1663180.pdf " target="_blank">Biogen MA Inc. v. EMD Serono, Inc.</a>, No. 19-1133 (Sep. 28, 2020)Panel:  Judges Newman, Linn, and Hughes, with Judge Linn writing the opinion.You should read this case if:  you have a novelty challenge to a “product by process” claim.The Federal Circuit has a rule for “product by process” claims: An old product is not patentable even if it is made by a new process.  For example, a manmade version of a naturally occurring protein is not a patentable composition.  But what if the manmade protein is used in a method of treatment?  Is a method of treatment novel if it uses an old product made by a new process?  In our case of the week, the district court said “yes” but the Federal Circuit says “no.”Biogen owns a patent for a method of treating conditions like multiple sclerosis with a recombinant (lab-produced) version of a protein called interferon-beta.  This method, Biogen says, has advantages over using naturally occurring interferon-beta (for one, the natural version is scarce).  Biogen accused EMD Serono and Pfizer of infringing the patent with the sale of Rebif, a recombinant interferon-beta drug used to treat multiple sclerosis. The jury found the claims anticipated because using naturally occurring interferon-beta to treat viral diseases was known in the prior art.  The district court, however, disagreed and granted judgment as a matter of law.  The prior art, the district court reasoned, did not address the use of lab-made interferon-beta.  And the product-by-process doctrine, in the district court’s view, governs only claims to a product, not claims to a method of treatment.The Federal Circuit reversed.  The only difference between the claimed invention and the prior art was the use of interferon-beta produced in a lab rather than in the human body.  And under the product-by-process doctrine, patentability turns on the product, not the process.  So in the Federal Circuit’s view, the “key” to the anticipation inquiry is that the “recombinant product is identical to the prior art product.”Although composition and method-of-treatment claims are often analyzed differently, the Federal Circuit saw no reason to do so here.  The court saw this method-of-treatment claim as containing a “nested” product-by-process limitation.  Burying a product-by-process limitation within a claim “does not change the proper construction of the product-by-process limitation itself.”  The upshot: An “old method of administration of an old product made by a new process is not novel and cannot be patented.”The court went on to reject Biogen’s arguments that even under a product-by-process analysis, the products were not identical.  In Biogen’s view, recombinant and native interferon-beta are identical only if they have matching three-dimensional shapes—which the jury had insufficient evidence to find.  The court, however, saw no basis in the claims, specification, or jury instructions to focus on three-dimensional structure.  That case-specific resolution leaves open to future patentees to argue that recombinant proteins are not identical to their native counterparts if their three-dimensional shapes differ.

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Last Week in the Federal Circuit (September 28 – October 2): Product-by-Process Methods of Treatment

Last Week in the Federal Circuit (September 28 – October 2):  Product-by-Process Methods of Treatment

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100% artificial or 100% natural?  It makes 0% difference to the Federal Circuit in our case of the week.

The Federal Circuit had a fairly busy week as summer officially came to a close. It issued six written decisions last week, three precedential. 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: 3Rule 36: 0Longest pending opinion from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1035.opinion.9-24-2020_1658548.pdf" target="_blank">John Bean Technologies Corp. v. Morris & Associates, Inc.</a>, No. 20-1035 (145 days)Shortest pending opinion from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-2130.opinion.9-24-2020_1658501.pdf" target="_blank">Shea v. US</a>, No. 19-2130 (100 days).Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/18-2338.opinion.9-24-2020_1658534.pdf">Network-1 Technologies, Inc. v. Hewlett-Packard Co.</a>, No. 18-2238 (Sep. 24, 2020)Panel: Chief Judge Prost and Judges Newman and Bryson, with Chief Judge Prost writing the opinion.You should read these cases if: you have a district court case involving IPR estoppel under 35 U.S.C. § 315(e).This week’s case of the week addresses several issues, including two claim constructions, harmless error when a jury returns a general verdict, statutory estoppel, and invalidity for allegedly broadening claims during a reexamination. But we’re going to focus on just the statutory estoppel issue, so you’ll have to read the decision for the rest.As relevant here, Network-1 Technologies owns a patent for power-over-Ethernet technology. It sued HP and others for infringement. One of the defendants petitioned for IPR of Network-1’s patent and the PTAB instituted review based on two references. HP then filed the first of two petitions requesting joinder to the already-instituted IPR. That first petition asked the Board to add new unpatentability grounds beyond those that the PTAB had already instituted. The Board denied HP’s first request. HP then filed a second petition requesting joinder. That petition raised only identical grounds to the already-instituted IPR. Although 35 U.S.C. § 315(b) time-barred HP from seeking its own independent IPR, the Board allowed HP to join the already-instituted IPR under 35 U.S.C. § 315(c). The PTAB eventually upheld the challenged claims’ patentability, which the Federal Circuit affirmed without opinion under Rule 36.Back in the district court, the parties eventually went to trial on infringement and HP’s invalidity defense. The jury found that HP did not infringe any asserted claim and that HP had shown that all asserted claims are invalid. But the district court granted Network-1’s JMOL motion on invalidity. It held that 35 U.S.C. § 315(e) estopped HP from raising certain obviousness challenges because of HP’s involvement in the IPR. Although the obviousness grounds were based on different references from those in the IPR, the district court concluded that HP reasonably could have raised the obviousness grounds in the IPR.HP appealed that ruling and the Federal Circuit reversed (technically, HP cross-appealed and the invalidity issue mattered because the Federal Circuit vacated and remanded the non-infringement ruling). The Federal Circuit focused on whether HP “reasonably could have raised” additional grounds as a joined party to an existing IPR. Relying on the recent decision in Facebook, Inc. v. Windy City Innovations, LLC (which we discuss <a href="https://federalcircuitry.mofo.com/topics/200908-last-week-in-the-federal-circuit-august-31-september-4-same-party-joinder-still-not-thryv-ing.html">here</a>), the Court explained that “the joinder provision does not permit a joining party to bring into the proceeding new grounds that were not already instituted. Rather, it may only join the already-instituted proceeding as a party.” That was enough to defeat estoppel on the facts here: “Because a joining party cannot bring with it grounds other than those already instituted, that party is not statutorily estopped from raising other invalidity grounds.” Despite reversing the district court’s invalidity JMOL, the Court did not reinstate the jury’s verdict but remanded because the district court had not addressed Network-1’s alternative motion for a new trial on invalidity.The Federal Circuit’s estoppel ruling here seems similar to its ruling (pre-SAS) in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1116.Opinion.3-21-2016.1.PDF" target="_blank">Shaw Industries Group v. Automated Creel Systems, Inc.</a> There, the Court denied a mandamus petition seeking to force the PTAB to review a non-instituted alternative invalidity ground. The Federal Circuit reasoned in part that statutory estoppel under Section 315(e) would not bar the petitioner from raising its invalidity ground in another proceeding—because the PTAB had refused to institute on the alternative ground, that ground was not one that was raised or reasonably could have been raised. In both Shaw and Network-1, the Court seems to have ruled that when a rule, statute, or PTO practice prevent a petitioner from raising a ground, the statutory estoppel bar will not apply to that ground. One interesting possible effect from Network-1 may be that statutory estoppel applies differently to different parties in the same IPR proceeding—an original petitioner who had freedom to choose the grounds for review may be subject to a broader estoppel than parties who join later and are limited to the already-instituted grounds.

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Last Week in the Federal Circuit (September 21-25): Joinder and Statutory Estoppel

Last Week in the Federal Circuit (August 31-September 4): Same-Party Joinder Still Not Thryv-ing

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Joined an IPR after institution?  What’s the scope of statutory estoppel after a final decision for someone like you?  The Federal Circuit gives some clarity on

Last Week in the Federal Circuit (September 21-25): Joinder and Statutory Estoppel

While we’ll all remember last week because of Justice Ruth Bader Ginsburg’s passing, things were relatively quiet at the Federal Circuit. The Court issued just two written decisions in regular cases, two on mandamus petitions, and a handful of Rule 36 affirmances. 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: 1, plus two non-precedential orders on mandamus petitionsRule 36: 4Longest and shortest pending case from argument: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1534.OPINION.9-15-2020_1652582.pdf">Ramirez v. DHS</a>, No. 19-1534 (Sept. 15, 2020) (221 days) (all other cases were submitted on the briefs or affirmed by Rule 36 judgment).Cases of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-140.ORDER.9-15-2020_1652640.pdf" target="_blank">In re HP Inc.</a>, No. 20-140 (Sep. 15, 2020); <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-144.ORDER.9-18-2020_1655080.pdf" target="_blank">In re Google LLC</a>, No. 20-144 (Sep. 18, 2020)Panel: In re HP—Judges Newman, Lourie, and Hughes, with an unsigned per curiam opinion; In re Google—Judges Reyna, Wallach, and Chen, with Judge Reyna writing the opinion.You should read these cases if: you’re seeking mandamus on venue grounds.Given the light week at the Federal Circuit (just one precedential decision in a case from the MSPB), we decided to focus on two orders involving mandamus petitions on venue grounds. The Court granted one petition and denied the other.The grant was in HP, in which HP and its codefendants had moved to transfer venue from the Eastern District of Texas to the Northern District of California under 28 U.S.C. § 1404(a). They argued that HP employees with relevant knowledge were located in California, not Texas, and that only the California district court could compel third parties with relevant information to disclose that information. They also argued that the California court was already familiar with the technology because it had overseen a prior case involving one of the asserted patents.Yet the Texas district court (Judge Mazzant presiding) denied the transfer motion. It reasoned in part that, although some witnesses and physical evidence was in California, more were in Taiwan making Texas and California equally inconvenient. The district court also reasoned that it had already gained familiarity with the case and issues in deciding the defendants’ personal jurisdiction challenge, which it held weighed against transfer.The Federal Circuit held that HP was entitled to mandamus. It applied the standard mandamus factors—the petitioner must show it has “a clear and indisputable legal right” to relief, it lacks “any other method of obtaining relief,” and the “writ is appropriate under the circumstances.” But the Court said that “[i]n the transfer context, these requirements coalesce into one, because the possibility of an appeal after judgment is not an adequate remedy and mandamus is deemed an appropriate vehicle to correct patently erroneous transfer determinations.”Applying Fifth Circuit law on the factors for a Section 1404(a) transfer, the Court held that the district “court’s decision lies far outside the boundaries of a reasonable exercise of discretion.” In considering the location of evidence and witnesses, the district court wrongly considered evidence and witnesses in Taiwan even though Fifth Circuit law commands courts to compare only those in either the transferee or transferor forum. The district court also erred in weighing against transfer its familiarity with the case gained while deciding personal jurisdiction because motions to transfer must be judged “based on the situation which existed when suit was instituted.” These and other errors convinced the Federal Circuit to grant mandamus.The Court denied mandamus three days later in Google. Although the issue there was again venue, Google based its challenge on improper venue under 28 U.S.C. § 1400(b) rather than convenience grounds. The plaintiff had argued venue was proper in the Eastern District of Texas (Judge Gilstrap presiding) because Google had an agreement with a third party “to warehouse, refurbish, repair, and ship Google hardware products” from the third party’s Texas facility. Google argued that was insufficient to show an agency relationship creating a "regular and established place of business." Although the Federal Circuit commented that “Google raises viable arguments” and that the Court was “concerned that the district court did not move more quickly to resolve Google’s motion,” it still denied the petition. Without explaining, it concluded that Google failed to show a “clear and indisputable” right to relief and that “Google can obtain meaningful review of the district court’s venue ruling after final judgment.”Although the Court's reliance in Google on the availability of later review seems at odds with its apparent blanket statement in HP about the unavailability of review after judgment, the better reading is that HP’s statement must be read in context. The Court likely meant that convenience transfer motions are effectively unreviewable on appeal because of the high bar to showing prejudice from the lack of transfer. In contrast, a properly preserved lack-of-venue challenge is not subject to harmless-error analysis, making it reviewable on appeal after a trial. The irony is that, although lack of venue is non-discretionary and so seems like a stronger challenge than convenience, that strength makes it a harder issue to raise via mandamus, at least because it raises the bar for showing later review is unavailable.Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship.

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

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

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Two mandamus petitions walk into a bar and … well, if there’s a good joke in there, we couldn’t find it. But we do think there’s some interesting comparisons to

Maybe it was the end of summer and the start of fall, or the kids (kind of) going back to school. But whatever it was, last week the Court issued only one precedential decision, in a veteran’s benefits case. All said, the Court released 15 decisions, although 6 were Rule 36 summary affirmances in cases argued during the September sitting. And remarkably, just 1 of the 9 opinions was from an argued case. Other than the Arthrex remand we examine below, all the decisions were affirmances; that’s perhaps less remarkable, given that appellees do particularly well when argument is cancelled (as we’ve <a target="_blank" href="https://federalcircuitry.mofo.com/topics/Observations-on-Cancelled-Argument-Cases--Appellees-Always-Win-Right--Mostly.html">previously</a> discussed). Given the slim pickings, we’re going to go non-precedential this week. 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: 6 (all in argued cases)Longest and shortest pending case from argument (i.e., the only case this week decided after argument): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2116.OPINION.9-11-2020_1650980.pdf" target="_blank">Batcher v. Wilkie</a>, No. 19-2116 (102 days)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2111.OPINION.9-9-2020_1649522.pdf" target="_blank">Snyders Heart Valve LLC v. St. Jude Medical, LLC</a>, No. 19-2111 (Sept. 9, 2020) (non-precedential)Panel: Judges Newman, O’Malley, and Taranto, with the opinion issued per curiam.You should read this case if: You have a PTAB appeal involving an Arthrex issue.Federal Circuitry readers are no doubt familiar with Arthrex, which we’ve written about in several previous posts, <a href="https://federalcircuitry.mofo.com/topics/200713-last-week-in-the-federal-circuit-week-of-july-6-10-anthrex-strikes-again.html" target="_blank">here </a>and <a href="https://federalcircuitry.mofo.com/topics/200320-do-we-already-know-the-federal-circuits-final-answer-in-arthrex.html" target="_blank">here</a>. As a quick reminder, last October, the Federal Circuit <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-2140.Opinion.10-31-2019.pdf" target="_blank">held</a> that the administrative patent judges who decide inter partes reviews were unconstitutionally appointed principal officers. To remedy that violation, the Court severed the portion of the Patent Act restricting those judges’ removal and remanded for a new hearing before a constitutionally appointed PTAB panel. Since then, the Federal Circuit has vacated many IPR final written decisions issued before Arthrex and remanded them for another hearing before a new panel of PTAB judges.In our case of the week, the Federal Circuit rejected one patentee’s argument that the “unique circumstances” of its case required greater relief—outright dismissal of the IPR rather than vacatur and remand for a new hearing. The Patent Office’s current Director, Andre Iancu, had represented the IPR petitioner in district court litigation involving the challenged patent before his appointment as Director. He thus was recused from the IPR. The Board held all challenged claims unpatentable.On appeal (which included full briefing), the patent owner argued that the PTAB judges who decided the IPR were unconstitutionally appointed under Arthrex. But it argued that the standard Arthrex remedy would be inadequate—and the IPR should be dismissed rather than a new hearing held—because no properly appointed PTAB panel could be convened on remand. In particular, the patent owner argued that the Director’s conflict should be imputed to all Patent Office employees, as they could be biased against the patent owner due to “their loyalty to their boss, Director Iancu.”The Federal Circuit disagreed. It noted that the PTO’s Deputy Director has statutory authority to assume the Director’s responsibilities in case of the Director’s “incapacity,” which includes a conflict requiring recusal. The Court concluded that the Deputy Director’s involvement “sufficiently removes any potential taint of the Director’s conflict.” And it saw no reason why “the Director’s lack of participation otherwise impacts the Arthrex remedy analysis.” Thus, the Court held that the patent owner was “entitled to the same relief given to the Arthrex appellant and no more”: vacatur of the Board’s decision and remand for a hearing before a properly appointed panel.Of course, the Federal Circuit’s decision may not be the final say on the matter. As we previously <a href="https://federalcircuitry.mofo.com/topics/200713-last-week-in-the-federal-circuit-week-of-july-6-10-anthrex-strikes-again.html" target="_blank">mentioned</a>, there are now multiple petitions for certiorari challenging different aspects of Arthrex. Some of those petitions contend that Arthrex’s remedy did not cure the constitutional defect and that PTAB judges are still unconstitutionally appointed principal officers, even without removal protections. We may not have to wait long to see whether the Supreme Court will grant review: several Arthrex-related petitions are scheduled for consideration on September 29, at the first conference of the Supreme Court’s upcoming Term.Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship.

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Last Week in the Federal Circuit (September 7-11): Another Arthrex Follow-on

Last Week in the Federal Circuit (September 7-11): Another Arthrex Follow-on

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In our case of the week, the Court issued an Arthrex remand but held that the PTO Director’s involvement in related litigation before he became Director did not

Last week was September Court week, marking the unofficial end of summer for Federal Circuit practitioners. The Court issued a total of 25 decisions, including 8 Rule 36 summary affirmances in cases argued last week, as well as some opinions in September submitted cases and older cases. As you’ll <a target="_blank" href="https://federalcircuitry.mofo.com/topics/Observations-on-Cancelled-Argument-Cases--Appellees-Always-Win-Right--Mostly.html">recall</a>, the Court submitted fewer cases on the briefs this session, which probably led to the higher number of Rule 36s. 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: 11Rule 36: 8 (all in argued cases)Longest pending case from argument: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1400.OPINION.9-4-2020_1647920.pdf">Facebook, Inc. v. Windy City Innovations, LLC</a>, No. 18-1400 (394 days) (opinion modified after petition for rehearing)Shortest pending case from argument (non-Rule 36): <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1568.OPINION.9-2-2020_1646627.pdf">Google LLC v. Blackberry Ltd.</a>, No. 19-1568 (30 days)Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1400.OPINION.9-4-2020_1647920.pdf">Facebook, Inc. v. Windy City Innovations, LLC</a>, No. 18-1400 (issued Mar. 18, 2020; modified Sept. 4, 2020)Panel: Chief Judge Prost and Judges Plager and O’Malley, with Chief Judge Prost writing the opinion, and all three judges together filing “additional views.”You should read this case if: You have a matter involving an IPR joinder issue.As we mentioned in our <a target="_blank" href="https://federalcircuitry.mofo.com/topics/200904-orders-of-interest-roundup.html">previous post</a>, the Federal Circuit has been responding to the Supreme Court’s recent decision in Thryv, Inc. v. Click-to-Call Technologies, LP. That case held that the Patent Trial and Appeal Board’s determinations about whether an IPR petition is time-barred are not subject to judicial review. In our case of the week, the Federal Circuit modified a pre-Thryv opinion to explain that Thryv did not deprive it of jurisdiction to review the IPR joinder decision it had addressed.A brief statutory overview: 35 U.S.C. § 315(b) provides that an IPR may not be instituted if the petition is filed more than 1 year after the petitioner is served with a complaint alleging infringement of the challenged patent. But it specifies that this time limitation “shall not apply to a request for joinder under subsection (c).” Section 315(c), in turn, provides that after an IPR has been instituted, the Director (or the Board, to whom the Director has delegated authority), “in his or her discretion, may join as a party to that [IPR] any person who properly files a petition . . . that the Director . . . determines warrants the institution of an” IPR. And § 314(d) provides that “[t]he determination by the Director whether to institute an [IPR] under this section shall be final and nonappealable.”Next, a brief recap for readers who missed the earlier iteration of the decision: the plaintiff sued for patent infringement, but before the one-year deadline to file an IPR neared, the plaintiff had not yet specified which claims it was asserting. On the last day of the one-year window, the defendant filed IPR petitions challenging some (but not all) claims of the asserted patents, which the Board instituted. Several months later, the plaintiff identified its asserted claims. The defendant then filed two more IPR petitions challenging additional claims and asked the Board to join those proceedings to the already-instituted IPRs under § 315(c). The Board agreed, citing a precedential Board opinion interpreting § 315(c) to permit same-party joinder, and added the newly challenged claims to the existing proceedings. The Board eventually held some challenged claims unpatentable but upheld other claims. As relevant here, the plaintiff cross-appealed the Board’s joinder decision.The Court began with the “threshold issue” on which the defendant had sought rehearing and the Court had requested supplemental briefing after Thryv: whether it had jurisdiction to review the Board’s joinder decision. Answer: yes. The Court summarized Thryv as holding that decisions “closely related to” the Board’s “decision whether to institute” an IPR are nonappealable under § 314(d), but that decisions about “the manner in which the agency’s review proceeds once instituted” fall outside § 314(d)’s review bar.The Court went on to explain that joinder under § 315(c) requires “two different decisions.” First, the Director must determine whether the joinder applicant’s IPR petition “warrants” institution under § 314. The Court explained that § 314(d) bars review of this first decision, whether for timeliness or for the petitioner’s likelihood of success on the merits. Second, the Director must exercise his discretion to decide whether to “join as a party” the joinder applicant. This determination, the Court reasoned, is a “separate and subsequent decision” to the institution decision; it affects how an already-instituted IPR proceeds rather than the institution of an IPR. Thus, § 314(d) does not bar review of this second decision. Since the cross-appeal challenged whether the Board exceeded its statutory authority in making this latter, reviewable decision, the Court concluded that it had jurisdiction.The rest of the reissued opinion reiterated the Court’s pre-Thryv decision. The Court held that § 315(c) does not authorize joinder of a person to a proceeding in which that person is already a party. It primarily relied on § 315(c)’s text, which permits the Director to “join as a party to [an IPR] any person who” meets certain threshold requirements. The Court reasoned that the phrase “join as a party” could not be read as referring to persons who were already parties to the proceeding.The Court also held that § 315(c) does not permit joinder of new issues, such as new claims or new grounds. The Court noted that § 315(c) by its terms only authorizes joinder of a person “as a party” to an already instituted IPR, and the existing IPR “is governed by its own petition and is confined to the claims and grounds challenged in that petition.” Thus, the Court explained, § 315(c) “does not permit the joined party, by virtue of the joinder decision alone, to bring new issues from a second proceeding into the existing proceeding.” The Court also pointed out that § 315(d) specifically contemplates “consolidation” of two proceedings. It reasoned that “[c]onstruing § 315(c) to permit joinder of proceedings, and all the new issues therein, would render superfluous the reference to consolidation in § 315(d).”Because the Court determined that “the clear and unambiguous language of § 315(c)” compelled these statutory constructions, it concluded that it need not defer to the Board’s contrary interpretation. But in “additional views” following the opinion for the Court, all three panel members explained that they would reach the same result even if the statute were ambiguous. (Such “additional views” joined by all three judges are pretty unusual, though not unheard of; see, e.g., <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1559.Opinion.6-14-2019.pdf">this opinion</a> last year from Judges Dyk, Wallach, and Hughes.) They explained that the Board’s interpretation should not receive Chevron deference because the AIA does not expressly delegate authority to either the Director or the Board to undertake statutory interpretation through precedential Board opinions. And they also declined to give the Board’s interpretation Skidmore deference because, in their view, that interpretation was unpersuasive and inconsistent with the statute’s plain text.With the modification to the panel’s decision, the Court denied the defendant’s petition for rehearing en banc. So any further review will have to await the Supreme Court.Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship.

Last Week in the Federal Circuit (August 31-September 4): Same-Party Joinder Still Not Thryv-ing

In our case of the week, the Court reissued an earlier opinion about same-party joinder and added that an intervening Supreme Court case didn’t make the joinder

Last week the summer was winding down and the Federal Circuit was gearing up for its September argument session. But the Court still found time to hand down a number of decisions—17 in total. 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: 9Non-precedential opinions: 8Rule 36: 0Longest pending case from argument: <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-1527.opinion.8-27-2020_1643949.pdf">Baxalta Inc. v. Genentech, Inc.</a>, No. 19-1527 (206 days)Shortest pending case from argument (non-Rule 36): Tie between <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-2131.opinion.8-28-2020_1644569.pdf">OMG, Inc. v. United States</a>, No. 19-2131; <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-2226.opinion.8-28-2020_1644587.pdf">Midwest Fastener Corp. v. United States</a>, No. 19-2226; and <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-2403.opinion.8-28-2020_1644609.pdf">Simpson Strong-Tie Company v. United States</a>, No. 19-2403 (all 24 days)Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/opinions-orders/19-2015.opinion.8-28-2020_1644541.pdf">Egenera, Inc. v. Cisco Systems, Inc.</a>, No. 19-2015 (Aug. 28, 2020)Panel: Chief Judge Prost and Judges Reyna and Stoll, with Chief Judge Prost writing the opinion.You should read this case if: You have a matter involving means-plus-function claiming, correction of inventorship, or judicial estoppel.Our case of the week would make a great law school exam fact pattern, since it involves several interlocking (and interesting) issues running the patent-law gamut—from claim construction to statutory interpretation to estoppel.Egenera owns a patent covering a virtual network that can be quickly reconfigured as computing power needs change. An outside network may use different protocols from the virtual network, so there must be some way to modify outbound messages to be compatible with the external network. Thus, the claims recite a control node with “logic to modify said received messages to transmit said modified messages to the external communication network” (emphasis added). All the issues on appeal can be traced back to this “logic to modify” term.Egenera sued Cisco for patent infringement, and Cisco requested an inter partes review of the asserted patent. Egenera responded by petitioning the PTO to remove one of the listed inventors, Peter Schulter, as an inventor. In the Court’s words, it was “apparent that at least part of Egenera’s motivation” was to help Egenera swear behind a prior-art reference in the IPR: Mr. Schulter’s status as an inventor would have undermined Egenera’s asserted conception date, which preceded the start of Mr. Schulter’s employment there. While the inventorship petition was pending, the Board declined to institute Cisco’s IPR. It assumed that the asserted reference was prior art but concluded that Cisco had not established a reasonable likelihood of prevailing on the merits. The PTO subsequently granted Egenera’s petition and removed Mr. Schulter’s name from the patent.Back in district court, Cisco argued for the first time that that the “logic to modify” limitation should be construed as a means-plus-function term under § 112(f). The district court agreed and determined that the corresponding structure in the specification was a certain “tripartite structure.” Based on that construction, Cisco contended that the claims were invalid for improper inventorship under pre-AIA § 102(f), as Mr. Schulter allegedly invented the tripartite structure, but the patent no longer listed him as an inventor. Egenera responded by arguing that, if Mr. Schulter was an inventor, the patent’s inventorship should be corrected under § 256(b), which provides that “[t]he error of omitting inventors . . . shall not invalidate the patent” if the court can correct the list of inventors instead.After a bench trial on inventorship, the district court found that Mr. Schulter had conceived the tripartite structure and thus was an inventor. And it concluded that Egenera was judicially estopped from invoking § 256(b) to restore Mr. Schulter’s inventorship. Thus, it held the patent invalid. Egenera appealed the claim construction and the application of judicial estoppel.The Federal Circuit affirmed the claim construction but overturned the judicial-estoppel determination. To start, the Court held that the district court correctly construed “logic to modify” as a means-plus-function term. As our readers likely know, after the Court’s 2015 en banc decision in Williamson v. Citrix Online, a claim term without the word “means” is presumed not to be means-plus-function. But that presumption can be overcome if the claim term “fails to recite sufficiently definite structure,” as is the case for generic terms or abstractions such as “mechanism,” “element,” and “device.” The Court held that presumption was rebutted here. Even assuming that “logic” connotes software, firmware, or circuitry, as Egenera had argued, the Court concluded the term was still just a “black box” that did not provide sufficient structure for performing the associated modification function. And it rejected Egenera’s argument that “logic” is structural because it is part of the “control node,” reasoning that “[m]ere inclusion of a limitation within a structure does not automatically render the limitation itself sufficiently structural.”But the Court went on to hold that the district court erred in applying judicial estoppel to prevent correction of inventorship and thus invalidate Egenera’s patent. As a threshold matter, the Court rejected Cisco’s contention that inventorship could not be corrected, even absent judicial estoppel, because Egenera’s initial removal of Mr. Schulter was a “tactical ploy” and not an “error” within the meaning of § 256(b). “‘Error’ is simply the incorrect listing of inventors,” the Court explained, and includes not only “unintentional inaccuracy” but also “considered acts” and even “deceptive intention.” And Mr. Schulter’s omission was “error” because, under the district court’s claim construction and findings at trial, he was an inventor.On the merits of judicial estoppel, the Court concluded that the district court’s analysis of all three relevant factors was legally erroneous, and it vacated the invalidity judgment premised on the judicial-estoppel determination.First, the Court determined that Egenera had not advanced “clearly inconsistent” or “mutually exclusive” positions before the PTO and the district court. When Egenera petitioned the PTO to remove Mr. Schulter’s name, the district court had not yet determined that “logic to modify” was a means-plus-function term. Indeed, the Court observed, “it may well be that Mr. Schulter would not be an inventor” were that term not construed as means-plus-function, as Egenera had contended. So “at least due to the intervening claim construction,” Egenera’s successive requests for correction of inventorship were not premised on “mutually exclusive” positions.Second, the Court determined that Egenera had not “succeed[ed] in persuading a court or court-like tribunal to accept its” earlier position. It noted that the PTO examines a request for correction of inventorship “only for the presence of supporting statements and the required fee” and “does not consider the substantive adequacy of the petition.” Thus, the Court held, a § 256 petition, “without more,” does not count as “persuasion” of a “court” for judicial-estoppel purposes. But the Court emphasized that this holding was “narrow”: it acknowledged that positions taken before an administrative tribunal can give rise to judicial estoppel in some circumstances. And it left open the possibility that judicial estoppel could apply to statements made during “substantive prosecution, ex parte reexamination, or other quasi-adjudicatory proceedings,” and that other theories of estoppel could apply based on even “ministerial filings” with the PTO.Third, the Court concluded that “Egenera would gain no unfair advantage, and Cisco would suffer no unfair prejudice, if judicial estoppel were not applied.” Had Egenera succeeded in swearing behind the prior art based on its earlier § 256 petition, the Court stated, “[t]hings might be different.” There would be “clear” prejudice and inconsistency in the potential for two decisions based on contradictory inventorship statuses. But the Court pointed out that Egenera’s earlier position did not end up affecting the IPR, as the Board denied institution even without considering Egenera’s priority arguments.Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship.

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Last Week in the Federal Circuit (August 24-28): No Judicial Estoppel from Inventorship About-Face

Last Week in the Federal Circuit (August 24-28): No Judicial Estoppel from Inventorship About-Face

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Our case of the week would make a great law school exam fact pattern, since it involves interlocking and interesting issues running the patent-law gamut—from me

Last week, the Court did not have many precedential decisions as Washington, D.C., COVID‑19 or not, was in its usual August slowdown. Unlike the previous two weeks where we touched upon non-patent issues, we return (kind of, sort of) to patent law. So below we give our usual week’s statistics and case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 6Non-precedential opinions: 3Rule 36: 0Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1555.OPINION.8-17-2020_1637235.pdf" target="_blank">Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co.</a>, No. 17-1555 (Aug. 17, 2020) (805) (after vacate and remand from the Supreme Court)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1667.OPINION.8-21-2020_1640559.pdf" target="_blank">Burkhart v. Wilkie</a>, No. 19-1667 (Aug. 21, 2020) (80)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2118.OPINION.8-20-2020_1639752.pdf" target="_blank">Security People, Inc. v. Iancu</a>, No. 19-2118 (Aug. 20, 2020)Panel: Judges Lourie, Wallach, and Hughes, with Judge Hughes authoring the opinionRead this case if: you’re trying to be creative in setting aside a PTAB final written decision from an IPR.Our return to patent law is a little tangential this week. There’s no discussion of 101, 102, 103, 112, or infringement. We make no mention of damages, fees, or inequitable conduct. We instead address a patent owner’s district court Administrative Procedure Act (APA) challenge to a PTAB final written decision cancelling its patent claims in an IPR.By now you’ve heard this story before. Patent owner (Security People) sues accused infringer. Accused infringer challenges patent in IPR. PTAB finds patent claims unpatentable. The Federal Circuit affirms in a Rule 36. And the Supreme Court denies a petition for a writ of certiorari. Usually our story ends there (if not before the filing of a cert. petition), but in last week’s case, things took a bit of a turn.Undeterred by the Federal Circuit’s affirmance of the PTAB’s decision to cancel its claims, Security People brought an APA action against the PTO in district court. It asserted that the IPR cancelling its patent claims violated its constitutional rights. Unfortunately for Security People, its goal of prevailing in a lofty constitutional challenge went unrealized. The district court dismissed the suit for lack of subject matter jurisdiction. It held that because the AIA confers exclusive jurisdiction for the Federal Circuit to review IPR decisions Congress precluded district court collateral review of those same decisions. And the district court explained that the Federal Circuit could have addressed Security People’s constitutional challenge on the direct appeal from the PTAB’s decision (of course, that would have required Security People to raise such a challenge).On appeal, the Federal Circuit brushed aside Security People’s argument that the PTAB could not decide the constitutional issues. Even if the PTAB could not, the Federal Circuit held that it could have on direct appeal from the PTAB. The Court explained that there’s nothing unusual about a court reviewing the decision of an administrative agency to consider a constitutional challenge that the agency concluded the agency could not decide. Nor did the possibility of disputed factual questions tilt the analysis in favor of district court review. The Federal Circuit noted that it could take judicial notice of any necessary facts and the PTAB could resolve factual disputes even if it could not decide the ultimate constitutional question.The Federal Circuit also rejected Security People’s suggestion that it could only raise a constitutional challenge after the Court had affirmed the PTAB’s final written decision and the PTO had issued the certificate cancelling the patent. The Court explained that this “assertion misapprehends the law defining when an agency action becomes final for judicial review.” For IPRs, the Court held that the “PTO’s decision-making process in an IPR is complete after issuance of the final written decision.” And even though judicial review may set aside that agency action, that possibility has no effect on finality. The Court held: “a judicially mandated outcome occurring because of judicial review intrinsically is not agency decision-making.” Nor did the absence of the PTO’s certificate cancelling the patent matter. “Issuing the certificate of cancellation is a non-discretionary formality: the PTO is statutorily compelled to ‘publish a certificate canceling any claim of the patent finally determined to be unpatentable’ in a final written decision.” (quoting 35 U.S.C. § 318(b).) (As an aside, the Court’s statements regarding finality and the purely ministerial function of the PTO issuing a certificate cancelling a patent could have relevance when parties dispute the effect of a final written decision in parallel proceedings, such as those before the ITC. But that’s perhaps a discussion for another case, or another day.)“More generally,” the Court agreed with the district court that the Federal Circuit’s exclusive review of PTAB final written decisions precluded district courts from exercising jurisdiction over APA challenges to the constitutionality of such decisions. Not only did Congress provide the Federal Circuit with exclusive jurisdiction, it also “carefully considered the availability of judicial review in the AIA, opting to foreclose all judicial review of certain PTAB decision in IPRs.” And for the specific constitutional challenge that Security People raised, the Court held that it would have been fully capable of providing meaningful review had that challenge been raised in the appeal from the PTAB’s final written decision. Given that, the APA does not authorize “a collateral attack on an agency decision for which [a party] has already had the opportunity for comprehensive review.”

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Last Week in the Federal Circuit (August 17-21): Can Patent Owners Set Aside Adverse PTAB Decisions in District Court APA Challenges? (Nope)

Last Week in the Federal Circuit (August 17-21): Can Patent Owners Set Aside Adverse PTAB Decisions in District Court APA Challenges? (Nope)

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If you were planning to use an APA challenge in district court as an alternative way to attack an unfavorable PTAB decision, you may need to rethink your strate

Last week was apparently CFC week at the Federal Circuit, with several precedential decisions in government contracts and Tucker Act cases. Below we give our usual week’s statistics and case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 6 Non-precedential opinions: 2 Rule 36:  0Longest pending case from argument: Kisor v. Wilkie, No. 16-1929 (Aug. 12, 2020) (1163 days) (after remand from the Supreme Court) Shortest pending case from argument (non-Rule 36):  Dupuch-Carron v. HHS, No. 20-1137 (Aug. 11, 2020) (35 days) Case of the week:  <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2148.OPINION.8-10-2020_1633634.pdf">The Boeing Co. v. United States</a>, No. 19-2148 (Aug. 10, 2020)Panel:  Judges Moore, Taranto, and Chen, with Judge Taranto authoring the opinion Read this case if:  you have a matter involving the Blue & Gold contract waiver doctrine.This week’s featured case is about an issue the government often raises in contract cases—waiver, particularly under <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/06-5064.pdf">Blue & Gold Fleet, L.P. v. United States</a>. In Blue & Gold, the Federal Circuit held that “a party who has the opportunity to object to the terms of a government solicitation containing a patent error and fails to do so prior to the close of the bidding process waives its ability to raise the same objection subsequently in a bid protest action.” This week in Boeing, the Federal Circuit limited that rule’s reach when the contracting agency could not have granted any meaningful relief during the pre-award process.Boeing involved a contract that the Department of Defense awarded to Boeing in 2008. During the course of performance, Boeing told the contracting officer that it was changing its cost accounting practices across a number of contracts. Some of the changes would increase the government’s costs while others would save the government money, with the net across all changes being a savings of almost $1.5 million to the government. Yet despite those net savings, the government required Boeing to reimburse the increased costs based on FAR 30.606, which the government said prohibited it from considering offsetting benefits when deciding how to deal with the cost effects of accounting changes.Boeing then sued the government in the Court of Federal Claims raising both contract and illegal exaction claims. It argued that FAR 30.606 was unlawful because, among other reasons, it violated 41 U.S.C. § 1503(b), which states that “[t]he Federal Government may not recover costs greater than the aggregate increased cost to the Federal Government.” The trial court dismissed Boeing’s claims, holding that Boeing had waived its contract claims because it failed to challenge the legality of FAR 30.606 before entering into the contract and that there was no Tucker Act jurisdiction over the illegal exaction claim because § 1503(b) is not a money-mandating statute.The Federal Circuit reversed on both claims. On the contract claim, it held that “a pre-award objection by Boeing to the Defense Department would have been futile, as the government concededly could not lawfully have declared FAR 30.606 inapplicable in entering into the contract.” Given the “inability of the agency itself to grant the relief that the party later sought in court”—a circumstance missing from past waiver cases—the Federal Circuit refused to find waiver. Nor did the Federal Circuit find any basis for requiring Boeing to have sought judicial review of FAR 30.606 before entering into the contract, especially because “the government has not identified a judicial forum” where Boeing could have done so.  Finally, on the illegal exaction claim, the Federal Circuit held that the trial court had misapplied jurisdictional requirements for a money-mandating-statute claim to an illegal-exaction claim: to show jurisdiction for an illegal-exaction claim, a “party that has paid money over to the government and seeks its return” need only “make a non-frivolous allegation that the government, in obtaining the money, has violated the Constitution, a statute, or a regulation.”Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship.

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Last Week in the Federal Circuit (August 10-14): Clear Skies for Boeing After No-Waiver Ruling

Last Week in the Federal Circuit (August 10-14): Clear Skies for Boeing After No-Waiver Ruling

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This week’s featured case is about an issue the government often raises in contract cases—waiver. But as we explain, parties that contract with the government c

Last week was Court week, and some of the Rule 36s in argued cases have already come down. Below we give our usual week’s statistics and case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 6Non-precedential opinions: 17 (21 with Rule 36)Rule 36: 4Longest pending case from argument: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1419.OPINION.8-3-2020_1629537.pdf">Illumina, Inc. v. Ariosa Diagnostics, Inc.</a>, No. 19-1419 (Aug. 3, 2020) (207 days) (decision was modified and reissued following a petition for rehearing filed by Defendants-Appellees)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2215.OPINION.8-4-2020_1630479.pdf" target="_blank">Godo Kaisha IP Bridge 1 v. TCL Communication Technology</a>, No. 19-2215 (Aug. 4, 2020) (29 days)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1081.OPINION.8-6-2020_1631951.pdf" target="_blank">NVLSP v. United States</a>, No. 19-1081 (Aug. 6, 2020)Panel: Judges Lourie, Clevenger, and Hughes, with Judge Hughes authoring the opinionRead this case if: You think that PACER fees are too high.This week we take a break from patent cases to focus on a case that affects all lawyers in federal courts of appeals and district courts throughout the country. If you’re like me, you wonder why it costs $0.10 a page every time you want to download a document from PACER or need to enter a username and password to access public documents. And you’re slightly annoyed when you realize that, when clicking on a CM/ECF email link, you’ve already used your “free look.” Now, of course, for many of us practicing before the Federal Circuit, a $0.10 per page fee is no big deal. But for the public at large, non-profits, pro se litigants, and many others, PACER fees are a big deal. The fees can really add up. And while last week’s decision won’t eliminate the fees altogether (as the panel said, “those calls are better directed to Congress” (n.16)), it should lessen the sting.Here’s the background. Rather than just gripe about the fees, a group of non-profit organizations challenged them in a class action. PACER fees are established and administered by the Administrative Office of the United States Courts and the Judicial Conference. At issue is what fees the judiciary can charge under the statutory note to 28 U.S.C. § 1913, which provides: “The Judicial Conference may, only to the extent necessary, prescribe reasonable fees … for collection by the courts … for access to information available through automatic data processing equipment.”Now, notwithstanding the fees, it’s important to remember that PACER is a really good thing. As the Court noted, “PACER revolutionized public access to federal courts by making dockets and electronic case records viewable from any web-connected computer.” Before its advent, the public had to travel to the courthouse and request access to documents. Of course, we know nothing is free. And Congress never appropriated funds to cover PACER’s operations, so the judiciary always has charged fees to cover those costs.But in addition to covering PACER’s costs, the judiciary uses PACER fees to help fund several other programs: (1) the CM/ECF system we lawyers use to electronically file documents, (2) the Electronic Bankruptcy Noticing (EBN) that sends notices to parties in bankruptcy cases, (3) a State of Mississippi Study to study the feasibility of sharing the CM/ECF system with Mississippi state courts, (4) the Violent Crime Control Act (VCCA) Notification System, which notifies local law enforcement of activities in certain cases, (5) web-based juror services, which provides prospective jurors electronic copies of court documents related to their jury service, and (6) courtroom technology—such as funds to cover the cost of maintaining and upgrading courtroom audio/video systems. On summary judgment, the district court held that PACER fees could be used to cover CM/ECF and EBN, but that most of the other costs could not be covered. The district court certified its order for interlocutory appeal, which the Federal Circuit accepted.On appeal, the Court first dispatched a jurisdictional argument that the Little Tucker Act didn’t apply because the statutory note to 28 U.S.C. § 1913 provides no cause of action with a monetary remedy. The Court explained that when the government “has the citizen’s money in its pocket,” the Tucker Act permits suit “to recover the money exacted.” Turning to the merits, the Court rejected both the plaintiffs’ and the government’s arguments and agreed with the district court. In addition to the statutory text, the Court relied on a lengthy discussion of the legislative history behind PACER fees. From that, it rejected the plaintiffs’ argument as being too narrow—that the fees could only cover the ongoing operations of PACER, which would be a mere pittance. And it rejected the government’s argument as being too broad, as allowing that the PACER fees could cover any electronic access to information. The Court stated that “Section 1913 Note limits the use of PACER fees to expenses incurred in providing (1) electronic access for members of the public (2) to information stored on a federal court docketing system.” And if the text and history were not enough, the Court found further support under principles of constitutional avoidance. It noted that First Amendment access to court considerations bolstered its interpretation and that the government’s construction could raise constitutional concerns.Of course, none of this means your next PACER download will be free (or even less than $0.10 per page). The government can still seek review (en banc or cert) and further proceedings will still be required in the district court.Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship.

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Last Week in the Federal Circuit (August 3-7): Will Pacer Downloads Become Free? (Spoiler: Nope)

Last Week in the Federal Circuit (August 3-7): Will Pacer Downloads Become Free? (Spoiler: Nope)

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Last week was Court week, and some of the Rule 36s in argued cases have already come down. Below we give our usual week’s statistics and case of the week—our hi