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 nationwide. 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 five 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 14 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 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.Brian also dedicates significant time to pro bono matters. He argued and won two significant appeals—in the Second and Ninth Circuits—obtaining reversals of judgments that had denied private rights of action under the Child Welfare Act in precedential decisions. Brian also led the Morrison Foerster team who co-counseled a successful Eighth Amendment challenge to Florida’s imposition of a “life without the possibility of parole” sentence to a juvenile offender convicted of a non-homicide crime.For years, Brian chaired the ABA’s seven-person Standing Committee for Amicus Curiae Briefs. He served on the American Intellectual Property Law Association’s amicus committee and co-chaired the National Asian Pacific American Bar Association’s amicus committee. Brian served as an appellate lawyer representative for the Ninth Circuit. Brian also serves on the board of directors for the Lawyers’ Committee for Civil Rights Under Law.Before entering private practice, Brian clerked on the United States Supreme Court for Justice Anthony M. Kennedy. He also clerked for Judge Pamela Ann Rymer in the Ninth Circuit and Judge David F. Levi in the Eastern District of California.While in law school, Brian served as managing editor of Volume 51 of the Stanford Law Review and was elected to the Order of the Coif.<h4>Representative Oral Arguments</h4><ul><li><a href="https://oralarguments.cafc.uscourts.gov/default.aspx?fl=22-1260_02102023.mp3" target="_blank">SNIPR Technologies Ltd. v. Rockefeller University </a>(Fed. Cir.) Prevailed in a precedential decision reversing the Patent Office’s interpretation of the America Invents Act (AIA) that subjected patents post-dating the Act to pre-AIA interference proceedings. The decision revived five of SNIPR’s patents related to CRISPR technology.</li><li><a href="/resources/video-audio/220114-broadcom-corporation-v-renesas-matsui" target="_blank">Renesas Electronics Corporation v. Broadcom Corporation</a> (12:40) (Fed. Cir.) Successfully argued and briefed multiple appeals from an International Trade Commission (ITC) decision and several Patent Trial and Appeal Board decisions related to an ITC investigation initiated by Broadcom involving systems-on-chip powering automobile infotainment systems.</li><li><a href="/resources/video-audio/210706-cr-bard-v-medline-industries" target="_self">C.R. Bard Inc. v. Medline Industries, Inc.</a> (0:45) (Fed. Cir.) Won vacatur of three Patent Trial and Appeal Board decisions on obviousness.</li><li><a href="https://oralarguments.cafc.uscourts.gov/default.aspx?fl=21-1745_03102022.mp3" target="_blank">Advanced Voice Recognition Systems, Inc. v. Apple Inc.</a> (14:30) (Fed. Cir.) Secured a complete victory in appeal from Patent Trial and Appeal Board that all challenged patent claims were unpatentable.</li><li><a href="/resources/video-audio/200515-william-paulus-v-ocera-therapeutics-inc.html" target="_self">William Paulus v. Ocera Therapeutics, Inc.</a> (13:25) (9th Cir.) Successfully argued and briefed appeal in a putative shareholder class action involving a tender offer.</li><li><a href="/resources/video-audio/200410-kurtz-v-costco.html" target="_blank">Kurtz v. Costco Wholesale Corporation </a>(9:23) (2d Cir.) Successfully petitioned for review of a class certification decision, then argued and obtained a remand for the district court to reconsider its certification decision and an eventual reversal on an injunctive class certification decision.</li><li><a href="/resources/video-audio/161117-gregory-bartko-v-sec.html" target="_self">Gregory Bartko v. SEC</a> (0:53) (D.C. Cir.) Successfully argued and obtained precedential ruling that the Securities and Exchange Commission could not retroactively apply Dodd-Frank’s industry-wide sanctions on securities professionals for certain securities violations.</li></ul>

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Partner

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

Brian Matsui

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

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Of Counsel

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-839223549{padding: 0 0 2350px;}</style></div>

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

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What Makes a Case Exceptional?

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

Recently in the Federal Circuit: More on Indefiniteness in IPRs

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

Recently in the Federal Circuit: Broadening Claims in IPRs

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We’re still waiting for the Supreme Court to issue its decision in Amgen v. Sanofi. But in the meantime, the Federal Circuit continues to provide insights into 35 U.S.C. § 112’s requirement to “enable” persons of skill in the art to “make and use” a claimed invention.Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/22-1228.OPINION.4-20-2023_2113842.pdf" target="_blank">FS.com Inc. v. ITC</a>, No. 22-1228Panel: Chief Judge Moore and Judges Prost and Hughes, with Chief Judge Moore authoring the opinionYou should read this case if: you have a case involving enablement of a claim with an open-ended rangeWhether people realize it, fiber optics—hair-thin strands of glass used for transporting light—are everywhere. They form the backbone of the internet and are also used for interconnecting servers in data centers throughout the world. Corning Optical Communications owns several patents to housings for fiber optic connection equipment. The housings connect large numbers of fiber optic cables. But the claims did not specify exactly how many connections were supported, instead reciting only a lower limit, such as that the housings support “a fiber optic connection density of at least ninety-eight (98) fiber optic connections per U space.” (A “U space” refers to the space for a standard server rack unit, such as in a data center.) After Corning successfully obtained an ITC exclusion order based on these claims, the respondent appealed to the Federal Circuit. It argued that the patents failed to enable these open-ended claims because the patents taught at most how to make and use housings supporting 144 fiber optic connections per U space but the claims cover an unlimited upper range of connection densities.The Federal Circuit affirmed the ITC’s decision upholding the challenged claims. The Court explained that it has often applied a two-part standard for claims with open-ended ranges: such claims are enabled “if [1] there is an inherent, albeit not precisely known, upper limit and [2] the specification enables one of skill in the art to approach that limit.” Whether a skilled artisan would understand there to be an upper limit “is a question of law based on underlying factual findings.”The Court agreed with the ITC’s determination that skilled artisans would understand Corning's claims to have an inherent upper limit of “about 144 connections per U space.” That conclusion followed from the ITC’s well-supported finding that densities “substantially above 144 connections per U space were technologically infeasible” at the priority date. The patents’ shared description disclosed that the maximum achievable density at the time was 144 connections per U space. And expert testimony confirmed the same. Given this evidence, the Court agreed with what it viewed as effectively a claim construction that the claims “cover only connection densities up to about 144 connections per U space” and “exclude higher densities.” The Court thus affirmed because there was no dispute that the claims were enabled if limited to about 144 connections per U space.OTHER WEEKLY STATSPrecedential opinions:  6Non-precedential opinions:  3Rule 36: 0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/22-1105.OPINION.4-21-2023_2114471.pdf" target="_blank">Spence v. McDonough</a>, No. 22-1105 (73 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/18-1049.OPINION.4-18-2023_2112573.pdf" target="_blank">Cioffi v. Google LLC</a>, No. 18-049 and <a href="https://cafc.uscourts.gov/opinions-orders/22-1481.OPINION.4-18-2023_2112596.pdf" target="_blank">DivX, LLC v. Netflix, Inc.</a>, No. 22-1481 (tied for 12 days)

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 (April 17 – April 21): Inherent Limits And Patent Enablement

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We’re still waiting for the Supreme Court to issue its decision in Amgen v. Sanofi. But in the meantime, the Federal Circuit continues to provide insights into 35 U.S.C. § 112’s requirement to “enable” persons of skill in the art to “make and use” a claimed invention.

Last Week In The Federal Circuit (April 17 – April 21): Inherent Limits And Patent Enablement

Last Week in the Federal Circuit

If the scope of the IPR estoppel statute has been keeping you up at night, our latest case of the (recent) week might help you sleep a little better because it provides clarity on two aspects of the statute’s reach.Case of the (recent) week: <a href="https://cafc.uscourts.gov/opinions-orders/21-2296.OPINION.4-3-2023_2104462.pdf" target="_blank">Ironburg Inventions Ltd. v. Valve Corporation</a>, No. 21-2296Panel: Lourie, Clevenger, and Stark, with Judge Stark writing the majority opinionYou should read this case if: you have a case involving the scope of IPR estoppelIronburg and Valve have had a long-running patent dispute about video game controllers. After Ironburg sued Valve, Valve challenged Ironburg’s patent claims in an IPR. The Board instituted review on some, but not all, of the grounds in Valve’s petition and cancelled some of the challenged claims. Although the Supreme Court later rejected the Board’s partial institution practice in SAS Institute Inc. v. Iancu while Valve’s IPR case was still pending, Valve did not request a remand for the Board to reconsider the partial institution.Meanwhile, the parties proceeded with litigation in district court. Before trial, Ironburg successfully moved for an order applying IPR estoppel under 35 U.S.C. § 315(e)(2) to: (1) the non-instituted grounds from the IPR; and (2) additional invalidity grounds Valve discovered after it filed its IPR petition. After a jury returned a willful infringement verdict for Ironburg, Valve appealed the application of IPR estoppel (along with several other issues).The Federal Circuit agreed with the district court that estoppel applies to the non-instituted grounds. The Court explained that statutory estoppel applies to “any ground that the petitioner raised or reasonably could have raised during th[e] inter partes review.” The focus of that inquiry is on “the petition, not the institution decision.” Because the non-instituted grounds were in the petition, “[t]hey were ‘raised during the inter partes review’” sufficiently to trigger preclusion.But Valve had more success on its challenge to the application of estoppel to the later-discovered grounds that were not included in Valve’s IPR petition. The Court held that “the district court improperly placed the burden of proof on Valve, to show that it could not ‘reasonably have raised’” those grounds in the petition. But “the burden of proving, by a preponderance of the evidence, that a skilled searcher exercising reasonable diligence would have identified an invalidity ground rests on the patent holder.” The Court explained that this burden allocation was consistent with “the general practice that a party asserting an affirmative defense bears the burden to prove it.” The Court vacated and remanded for the district court to determine whether Ironburg can meet that burden.OTHER WEEKLY STATSPrecedential opinions: 8Non-precedential opinions: 13Rule 36: 6Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2173.OPINION.4-12-2023_2109659.pdf" target="_blank">Sanderling Management Ltd. v. Snap Inc</a><a href="https://cafc.uscourts.gov/opinions-orders/21-2173.OPINION.4-12-2023_2109659.pdf">.</a>, No. 21-2173 (251 days) Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/22-1450.OPINION.4-12-2023_2109615.pdf" target="_blank">BlueCatBio MA Inc. v. Yantai AusBio Laboratories Co., Ltd.</a>, No. 22-1450 (9 days)

Last Week In The Federal Circuit (April 10 – April 14): IPR Statutory Estoppel, In Two Acts

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Last Week In The Federal Circuit (April 10 – April 14): IPR Statutory Estoppel, In Two Acts

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If the scope of the IPR estoppel statute has been keeping you up at night, our latest case of the (recent) week might help you sleep a little better because it provides clarity on two aspects of the statute’s reach.

While last week may have been spring break for many of our readers, the Federal Circuit didn’t take the week off. It still issued several interesting decisions, including our case of the week this week—which discusses the relationship between the International Trade Commission and other federal agencies.Case of the (recent) week: <a href="https://cafc.uscourts.gov/opinions-orders/22-1227.OPINION.3-31-2023_2103453.pdf" target="_blank">Philip Morris Products S.A. v. ITC</a>, No. 22-1227Panel: Judges Prost, Reyna, and Stoll, with Judge Stoll writing the opinionYou should read this case if: you have a matter involving the ITC’s duty to consult or the domestic industry requirementAs our readers likely know, Section 337 of the Tariff Act of 1930 authorizes the ITC to investigate allegations that imported goods infringe U.S. patents. In this week’s case, the Federal Circuit reviewed a Section 337 investigation involving patents on electronic cigarettes. The Court addressed a number of questions, including patent infringement and invalidity, but we’ll focus here on two more broadly applicable statutory interpretation issues.First, by statute, the ITC must “consult with, and seek advice and information from, the Department of Health and Human Services, the Department of Justice, the Federal Trade Commission, and such other departments and agencies as it considers appropriate” during a Section 337 investigation.  19 U.S.C. § 1337(b)(2).The Federal Circuit held that the ITC met that duty here. When the ITC instituted the investigation, it published a notice in the Federal Register and served the notice on HHS (the parent agency of the FDA). The ITC’s administrative law judge cited multiple FDA documents, including the FDA’s authorization of the importer’s products, in assessing the effect of any remedy on the public interest. And after the administrative law judge’s initial decision, the ITC published an additional notice in the Federal Register that invited interested government agencies to “file written submissions on the issues of remedy, the public interest, and bonding.”These steps satisfied the ITC’s obligation to “consult with” HHS and the FDA—even though “the FDA chose not to submit any additional information” in response to the ITC’s notices.  As the Federal Circuit put it, the ITC “cannot force the FDA to engage.”Second, Section 337 complainants must show there is a “domestic industry” in the United States for articles covered by the asserted patents. The Federal Circuit concluded that even products that have not received regulatory authorization can satisfy this domestic-industry requirement. The statute requires only “significant employment of labor or capital” or “substantial investment in [the] exploitation” of the patented articles. 19 U.S.C. § 1337(a)(3). According to the Federal Circuit, “[n]othing in the plain language of the statute requires that the protected articles have regulatory approval.”Nor did the specific FDA rule governing the complainant’s products here support a different result. That rule required electronic cigarettes to receive premarket authorization, and it retroactively applied to products already on the market. But the rule included grace periods during which the FDA would not take enforcement action against products that had not yet received authorization. And the complainant’s products still fell within such a grace period when it filed the complaint. Thus, the complainant’s products did not even need regulatory approval to remain on the market at the relevant time.OTHER WEEKLY STATSPrecedential opinions: 2Non-precedential opinions: 3Rule 36: 0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1672.OPINION.3-31-2023_2103427.pdf" target="_blank">VirnetX Inc. v. Apple Inc.</a>, No. 21-1672 (204 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2145.OPINION.3-31-2023_2103438.pdf" target="_blank">Columbia Insurance Company v. Simpson Strong-Tie Company Inc.</a>, No. 21-2145 (21 days)

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Last Week In The Federal Circuit (March 27 – March 31): Consulting The Federal Circuit On Statutory Interpretation

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While last week may have been spring break for many of our readers, the Federal Circuit didn’t take the week off. It still issued several interesting decisions, including our case of the week this week—which discusses the relationship between the International Trade Commission and other federal agencies.

Last Week In The Federal Circuit (March 27 – March 31): Consulting The Federal Circuit On Statutory Interpretation

The Court had a busy week as the weather begins to turn, and those with school-aged kids begin to plan for spring break. This week we look at the Court’s latest reminder that obviousness is a flexible analysis, so below we provide our usual weekly statistics and a brief discussion of our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 5Non-precedential opinions: 8Rule 36: 4Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/22-1037.OPINION.3-13-2023_2093578.pdf">Intel Corporation v. PACT XPP Schweiz AG</a>, No. 22-1037 (96 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2097.OPINION.3-15-2023_2094841.pdf">Borusan Mannesmann Boru Sanayi ve Ticaret A.S. v. US</a>, No. 21-2097 (36 days)Case of the (recent) week: <a href="https://cafc.uscourts.gov/opinions-orders/22-1037.OPINION.3-13-2023_2093578.pdf">Intel Corporation v. PACT XPP Schweiz AG</a>, No. 22-1037Panel: Judges Newman, Prost, and Hughes, with Judge Prost writing for the opinionYou should read this case if: motivation to combine is at issue (as it almost always is in cases involving obviousness)In this PTAB appeal, Intel beat the odds and got the Board’s non-obviousness decision reversed. The patent relates to multiprocessor systems and how processors in those systems access data. The patent owner did not dispute that the combination of two prior art references taught every limitation in the independent claim.  It instead argued—and the Board agreed—that ordinary artisans wouldn’t be motivated to combine the references. The Court made short work of the Board’s no-motivation ruling. After highlighting the flexible nature of the obviousness analysis, the Court noted that there can be “universal” motivations known in a particular field. These universal motivations can provide “‘a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’” (Emphasis by Court.) One such universal motivation is the “known-technique” rationale, when there’s a motivation to combine simply because the prior art discloses a known technique to address a known problem in the field. Before the Board, Intel relied on that theory. It argued that a person of ordinary skill would have been motivated to combine the two references because they relate to the same field and address the same problem. In rejecting that argument, the Board opined that if the prior art references already addressed that problem with their own solutions, then (absent something more) there would be no reason why one reference’s solution would be an obvious improvement over the other’s. On appeal, the Federal Circuit disagreed, holding that the Board’s rationale was counter to KSR and the Court’s precedent. Once a known technique has been used to improve one device, a person of ordinary skill would recognize that the technique would improve similar devices in the same way. Here, the Court explained that the Board erred by requiring the patent challenger to show that replacing one reference’s solution with another’s was an “improvement.” It emphasized that the combination doesn’t need to be the best solution to the known problem, it only needs to be a “suitable option.”

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 (March 13 – March 17): A reminder that motivation doesn’t need to be found in the prior art references themselves

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The Court had a busy week as the weather begins to turn, and those with school-aged kids begin to plan for spring break. This week we look at the Court’s latest reminder that obviousness is a flexible analysis, so below we provide our usual weekly statistics and a brief discussion of our case of the week—our highly subjective selection based on whatever case piqued our interest.

Last Week In The Federal Circuit (March 13 – March 17): A reminder that motivation doesn’t need to be found in the prior art references themselves

If you’re like me, hanging holiday lights generally sucks any kind of holiday spirit right out of you. This week’s case of the week involves technology that might help. And it resolves (at least at the preliminary injunction stage) competing state tort and federal patent law claims to boot.Case of the week:  <a href="https://cafc.uscourts.gov/opinions-orders/23-1146.OPINION.2-17-2023_2082508.pdf" target="_blank">Lite-Netics, LLC v. Nu Tsai Capital LLC</a>, No. 23-1146Panel: Judges Lourie, Taranto, and Stark, with Judge Taranto writing the opinionYou should read this case if: you have a matter involving state tort claims potentially overlapping federal patent claims.Lite-Netics and Holiday Bright Lights sell competing holiday light products. Lite-Netics owns two patents to magnetic string lights designed to make it easier to hang lights from ferrous objects (think home rain gutters, assuming they’re steel and not aluminum). Lite-Netics sent cease-and-desist letters to Holiday Bright Lights asserting that Holiday’s sales of a line of magnetic string lights infringed Lite-Netics’s patent claims. Lite-Netics then sued Holiday in federal court for patent infringement. Before and after filing suit, Lite-Netics notified its customers about the alleged infringement. Some of those customers are also Holiday customers. After suing Holiday, Lite-Netics specifically told its customers that competitors were trying to “copy” Lite-Netics’s patented products, that Lite-Netics had sued Holiday, and that it was “also considering including any known company using or reselling the [Holiday] products as co-defendants in this lawsuit.”Holiday responded with counterclaims, including state-law claims of tortious interference, defamation, and deceptive trade practices. It also asked for, and was granted, a preliminary injunction barring Lite-Netics from making new statements suggesting that Holiday was copying Lite-Netics’s products or infringing Lite-Netics’s patents, or that Holiday’s customers “will be burdened as additional defendants in this or any lawsuit.”The Federal Circuit vacated that injunction. It explained that “federal patent law preempts state-law tort liability for a patentholder’s good faith conduct in communications asserting infringement of its patent and warning about potential litigation.” The Court based that rule partly on First Amendment principles, which it saw as “particularly significant when an injunction against speech is at issue.” To prevail on the merits of its state-law claims, Holiday thus would be required to show Lite-Netics’s statements were made in bad faith. And proving bad faith required, at the least, showing that Lite-Netics’s assertions of patent infringement were objectively baseless, that is, that “no reasonable litigant could realistically expect success on the merits.” The Federal Circuit held that Holiday had failed to show the required objective baselessness at this stage of the litigation. It noted that the parties appeared to dispute the scope of certain claim terms for literal infringement. For example, they disputed whether claims reciting “a magnet” covered an arrangement of two magnets. Yet settled precedent “lend[s] strong support” for reading the terms “a” and “an” as covering more than one of an object in open-ended comprising claims. That precedent contradicted Holiday’s argument for objective baselessness.The Federal Circuit vacated the injunction in its entirety for this and similar reasons. It refused to consider whether the district court could have issued a more narrowly tailored injunction, such as one prohibiting statements about infringement related to only certain Holiday products or certain Lite-Netics patents; Holiday had not argued on appeal to uphold some portions of the injunction even if others were held to be an abuse of discretion.OTHER WEEKLY STATSPrecedential opinions:  6Non-precedential opinions:  9Rule 36:  2Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1900.OPINION.2-16-2023_2082030.pdf" target="_blank">VR Optics, LLC v. Peloton Interactive, Inc.</a>, No. 21-1900 (198 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/22-1247.OPINION.2-14-2023_2080572.pdf" target="_blank">Davis v. McDonough</a>, No. 22-1247 (5 days)

Last Week In The Federal Circuit (February 13 – 17): Shining Light On Competing Patent And State Law Claims

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Last Week In The Federal Circuit (February 13 – 17): Shining Light On Competing Patent And State Law Claims

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If you’re like me, hanging holiday lights generally sucks any kind of holiday spirit right out of you. This week’s case of the week involves technology that might help. 

The Supreme Court recently issued its first decision of the Term in <a href="https://www.supremecourt.gov/opinions/22pdf/21-432_f2bh.pdf" target="_blank">Arellano v. McDonough</a>, affirming the Federal Circuit and holding that a statutory provision governing the effective date of a veterans’ benefits application is not subject to equitable tolling. (We wrote about the Court’s certiorari grant <a href="https://federalcircuitry.mofo.com/topics/february-23-2022-a-cert-grant-on-veterans-benefits-and-equitable-tolling">here</a>.) So for our case of the week this week, we thought we’d highlight another veterans case from the Federal Circuit. The decision contains some interesting discussion of statutory interpretation methodology, so it may be useful for patent practitioners as well.Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/21-2225.OPINION.1-23-2023_2067187.pdf" target="_blank">Van Dermark v. McDonough</a>, No. 21-2225Panel: Judges Dyk, Taranto, and Stark, with Judge Taranto writing the opinionYou should read this case if: you have a matter involving statutory interpretationThis week’s case involves several statutory provisions governing medical care for U.S. veterans abroad. Section 1724(a) generally prohibits the Department of Veterans Affairs (VA) from “furnish[ing] hospital . . . care or medical services” outside the United States. 38 U.S.C. § 1724(a). The immediately following subsection provides an exception: it authorizes the VA to “furnish hospital care and medical services” to a veteran outside the United States “for the treatment of a service-connected disability.” Id. § 1724(b)(1).The veteran here received medical treatment at a non-VA facility in Thailand—notably, for conditions unrelated to his service-connected disability. He sought reimbursement from the VA for the amounts he paid for that treatment. The VA denied the claims based on Section 1724(a)’s prohibition on “furnish[ing]” medical services abroad. The Court of Appeals for Veterans Claims upheld the agency’s denial.The Federal Circuit affirmed. It noted that the statutory phrase “furnish hospital . . . care or medical services” traced back to a 1940 predecessor to what is now Section 1724(b). The Court thus “look[ed] to 1940” as “the pertinent time of initial congressional adoption” and considered the statutory language’s “ordinary meaning” at that time. It noted that a 1934 dictionary gave definitions of “furnish” including “to provide,” “to provide for,” and “to provide what is necessary for.” Those definitions were broad enough to encompass both directly delivering treatment and indirectly enabling treatment by providing payment for that treatment.Statutory purpose, legislative history, and agency practice all confirmed that Congress intended this broad meaning of “furnish.” Under that interpretation, Section 1724(b) would authorize the VA to provide treatment abroad for service-connected disabilities either directly or through reimbursement. This “broader reading allows § 1724(b) to be more effective in furthering the evident congressional purpose of enabling veterans to receive care abroad for service-connected conditions.”The committee reports for later amendments to the statute reflected a similar understanding. They indicated that the statute authorized treatment abroad for service-connected disabilities “at VA expense” or “on a reimbursable basis by the VA.” And in the decades since the statute’s enactment, “VA has not paid for treatment abroad” for non-service-connected disabilities. By contrast, the “VA has long paid for treatment abroad” for service-connected conditions.The Court acknowledged that other statutory provisions use “furnish medical services” to refer only to direct delivery of treatment. For instance, a neighboring provision requires the VA to reimburse a veteran for “emergency treatment furnished the veteran in a non-[VA] facility.” But the Court explained that “a term with one meaning in one provision can take on a different meaning in a different provision that contains surrounding words that require the different meaning.” Unlike its neighbor, Section 1724 contains no “surrounding words” suggesting that “furnish” is limited to direct treatment.Finally, the Court declined to apply the “pro-veteran interpretive canon.” Giving “furnish” a narrow meaning would “relax a limit on possible benefits to veterans” under Section 1724(a)—but would also “constrain the provision of benefits to veterans” under Section 1724(b). Because “each of the argued-for interpretations would benefit some veterans at the expense of others,” and without any “information to compare magnitudes,” the Court could not determine “what benefits veterans” as a whole.OTHER WEEKLY STATSPrecedential opinions: 3Non-precedential opinions: 2Rule 36: 0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2095.OPINION.1-25-2023_2069238.pdf" target="_blank">Doyon v. United States</a>, No. 21-2095 (204 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/22-1130.OPINION.1-23-2023_2067220.pdf" target="_blank">Goffney v. McDonough</a>, No. 22-1130 (11 days)

Last Week In The Federal Circuit (January 23 – January 27): Furnishing Statutory Meaning

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Last Week In The Federal Circuit (January 23 – January 27): Furnishing Statutory Meaning

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The Supreme Court recently issued its first decision of the Term in Arellano v. McDonough, affirming the Federal Circuit 

If you think claim construction is more fun than watching paint peel, then you’re probably a patent lawyer. And what’s more fun than claim construction? Claim construction with an indefiniteness challenge, as happened in this week’s case of the week.Case of the (recent) week: <a href="https://cafc.uscourts.gov/opinions-orders/21-2370.OPINION.1-12-2023_2062188.pdf" target="_blank">Grace Instrument Industries, LLC v. Chandler Instruments Co.</a>, No. 21-2370Panel: Judges Chen, Cunningham, and Stark, with Judge Chen writing the opinionYou should read this case if: you have a matter involving claim indefinitenessIs the claim term “enlarged chamber” indefinite when it’s not a term of art in the relevant field and the patent never specifies what the chamber must be larger than? The Federal Circuit said no in Grace Instrument.The patent claimed a pressurized device and a viscometer, which oil-well drillers use to measure drilling fluid viscosity (roughly, its thickness). Fluid viscosity can change with pressure, and pressure can be high deep down in an oil well. Because drillers often carefully control drilling fluid viscosity, they need to measure that viscosity accurately at the real-world pressures existing in a well. Viscometers often use a special pressurization fluid to replicate that high pressure when measuring the viscosity of a sample of drilling fluid. But any mixing of the pressurization fluid with the sample throws off the measurement. Enter the patent’s “enlarged chamber.” According to the patent, mixing could be avoided by separating the sample drilling fluid in an enlarged chamber—for example, one that “is still at least half filled with sample fluid” at maximum pressure to avoid spilling over in the chamber with pressurization fluid.During claim construction, the district court held that “enlarged chamber” is indefinite. Relying on dictionary definitions, the district court explained that “enlarged” was a term of degree that “necessarily calls for some comparison against some baseline.” But the patent gave no “objective” baseline for that comparison. The district court rejected the patent owner’s argument that ordinarily skilled artisans would understand “enlarged chamber” by its purpose to be “large enough” for its task of measuring fluid viscosity without mixing. The Federal Circuit vacated that judgment. It emphasized that context is key, even when interpreting words that are “not a term of art.” That context comes from intrinsic evidence, including the patent’s description and the prosecution history. Here, that evidence showed that an “enlarged chamber” is merely one that is “large enough” for its identified purpose rather than “larger than something else.” “The district court erred in its reliance on extrinsic evidence” to “contradict the scope and meaning of ‘enlarged chamber’ that a skilled artisan would ascertain by reading the intrinsic record.” The Court nevertheless remanded the indefiniteness issue because the district court never reached additional arguments, including some based on extrinsic evidence—those arguments were best addressed by the district court in the first instance.Precedential opinions: 1Non-precedential opinions: 13Rule 36: 7Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2275.OPINION.1-20-2023_2066571.pdf" target="_blank">Personalized Media Communications, LLC v. Apple Inc.</a>, No. 21-2275 (197 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2211.OPINION.1-18-2023_2064691.pdf" target="_blank">SynQor, Inc. v. Vicor Corporation</a>, No. 21-2211 (44 days)

Last Week In The Federal Circuit (January 17 – January 20): “Larger Than” Or “Large Enough”?

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Last Week In The Federal Circuit (January 17 – January 20): “Larger Than” Or “Large Enough”?

Last Week In The Federal Circuit (March 21-25):  Oil is a Hot Commodity These Days—Even on the Federal Circuit

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If you think claim construction is more fun than watching paint peel, then you’re probably a patent lawyer. And what’s more fun than claim construction? Claim construction with an indefiniteness challenge, as happened in this week’s case of the week.

A new year means new Federal Circuit decisions to analyze. Our case of the week recounts an interesting saga of companies copying each other’s patent applications to provoke an interference. And if that’s not enough to grab your attention, the case provides some insight into the kinds of evidence that litigants can use to corroborate inventor testimony.Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/21-2372.OPINION.1-6-2023_2058943.pdf" target="_blank">Dionex Softron GmbH v. Agilent Technologies, Inc.</a>, No. 21-2372Panel: Judges Reyna, Chen, and Stark, with Judge Stark writing the opinionYou should read this case if: you have a matter involving corroboration of inventor testimonyThis week’s case involves what the Federal Circuit deemed “an unusual history.” Agilent and Dionex both sought to patent liquid chromatography systems. Agilent copied the claims in Dionex’s patent application in an unsuccessful bid to provoke an interference. Then Agilent amended its claims, Dionex copied those claims, and an interference was finally declared. (The America Invents Act, which was enacted more than a decade ago, eliminated interference proceedings. But certain patents claiming pre-AIA inventions may still be subject to interferences.) The Patent Trial and Appeal Board found that Agilent proved conception and actual reduction to practice before Dionex’s earliest alleged conception date. The Board thus awarded priority to Agilent and denied Dionex’s claims.The Federal Circuit affirmed. The Court decided several issues, including claim construction and written description, but we’ll focus on its discussion of corroboration and reduction to practice.As a reminder, actual reduction to practice occurs when the inventor creates an embodiment of the claimed invention (or interference count). An inventor’s testimony “must be corroborated by independent evidence.” In determining whether an inventor’s testimony has been adequately corroborated, each case “must be decided on its own facts.”Here, the Board’s corroboration finding was based on (1) testimony from other Agilent employees who worked near the inventor and saw a successful prototype of the invention and (2) a document depicting that prototype.The Federal Circuit rejected Dionex’s argument that the coworkers’ testimony was insufficient because they did not know the prototype’s specific configuration. The coworkers “may not have known every detail, but such omniscience is unnecessary under the rule of reason.” It sufficed that they “understood enough to know that the prototype performed all steps of the count.”Nor was the Board required to discount the prototype document because it had a “last modified” date after Agilent’s purported reduction to practice. The document was created more than a year before the reduction-to-practice date, and the Board reasonably credited testimony that the document depicted a prototype meeting all the claim limitations by the relevant date.The Court also concluded that the Board was not required to draw a negative inference against Agilent based on a lack of co-inventor testimony and the absence of other documentary evidence. According to the Court, “[t]here is no per se requirement to infer that the testimony of an inventor who fails to testify would be harmful to the position of his co-inventor.” The Board permissibly accepted Agilent’s explanation that testimony from the co-inventor (who was retired) would have been cumulative of and inferior to the inventor’s testimony.Further, the Court explained that the Board need not “draw a negative interference whenever a party fails to present some types of documentary evidence an opposing party insists must exist.” The Board was not required to accept Dionex’s assertion that Agilent must have created additional documents under “industry norms.” Nor was the Board required to conclude that any such “missing” documents would undermine Agilent’s other evidence.OTHER WEEKLY STATSPrecedential opinions: 3Non-precedential opinions: 2Rule 36: 0Longest pending case from argument: Dionex Softron GmbH v. Agilent Technologies, Inc., Nos. <a href="https://cafc.uscourts.gov/opinions-orders/21-1794.OPINION.1-6-2023_2058970.pdf">21-1794</a>, <a href="https://cafc.uscourts.gov/opinions-orders/21-2372.OPINION.1-6-2023_2058943.pdf" target="_blank">21-2372</a> (183 days) (companion cases)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/22-1318.OPINION.1-3-2023_2056398.pdf" target="_blank">Tippmann Engineering, LLC v. Innovative Refrigeration Systems, Inc.</a>, No. 22-1318 (60 days)

Last Week In The Federal Circuit (January 3 – January 6): Corroboration Station

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Last Week In The Federal Circuit (January 3 – January 6): Corroboration Station

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A new year means new Federal Circuit decisions to analyze. Our case of the week recounts an interesting saga of companies copying each other’s patent applications to provoke an interference. 

Some of you may remember the Federal Circuit’s <a href="https://cafc.uscourts.gov/opinions-orders/16-1599.opinion.5-9-2017.1.pdf" target="_blank">decision </a>from a few (actually 5!) years ago holding that patent owner statements made in an IPR proceeding may “support a finding of prosecution disclaimer during claim construction.” That decision left unresolved an important question—whether disclaimer statements apply in the same IPR proceeding in which they’re made. Can a patent owner disclaim coverage of some portion of its claims in an IPR to obtain a narrowed claim construction and avoid the prior art? In this week’s case of the week, the Federal Circuit answers that question with a clear “no.” Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/20-2262.OPINION.11-16-2022_2034079.pdf" target="_blank">CUPP Computing AS v. Trend Micro Inc.</a>, No. 20-2262Panel: Judges Dyk, Taranto, and Stark, with Judge Dyk writing the opinionYou should read this case if: you have a matter involving disclaimer during an inter partes reviewThis week’s case features an IPR challenge to three patents claiming a better way to protect mobile devices from malware. The claims recite a mobile device with two processors: a “mobile device processor” that must be “different than [a] mobile security system processor.” The patent owner argued that “different” means the claims require a “separate and remote” security system processor, that is, that the security system processor cannot be part of the mobile device. That was a tough argument using standard claim construction tools. For one, the patents included a preferred embodiment with a mobile security system “incorporated within the mobile device.” The prosecution history also gave the patent owner no help. The patent owner argued it had disclaimed security processors that were part of the mobile device when distinguishing its claims from the prior art during the original prosecution. But the panel concluded that the alleged disclaimer was ambiguous and so insufficient to clear the high bar needed for a disclaimer.That left the patent owner’s argument that disclaimer statements made in the current IPR should have required the Board to accept the patent owner’s claim construction. During the IPR, the patent owner had expressly disavowed that its claims cover a security system processor embedded in a mobile device. But the Federal Circuit held the Board “could ignore this disavowal in construing the claims.” The Court explained that “the Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.” After all, the point of an IPR is for the Patent Office to “revisit” the claims it granted. Allowing patent owners to “shapeshift their claims through argument in an IPR” to cover something different from the original scope would defeat that purpose. Plus, Congress already gave patent owners a different tool to narrow their claims during an IPR—amend them under 35 U.S.C. § 316. Allowing within-an-IPR disclaimer “would render that process unnecessary.” And it would bypass important guardrails that apply for only amended claims. For example, the Board may review amended claims—but not non-amended ones—for other patentability requirements like § 101 ineligibility. The takeaway: patent owner comments in an IPR may alter claim scope only in later proceedings. In the IPR itself, patent owners will have to use other claim construction tools, or amendment, to secure their preferred claim scope.OTHER WEEKLY STATSPrecedential opinions: 4Non-precedential opinions: 9Rule 36: 1Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1321.OPINION.11-14-2022_2032484.pdf" target="_blank">American National v. Sleep Number Corporation</a>, No. 21-1321 (158 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/22-1033.OPINION.11-16-2022_2034130.pdf" target="_blank">Blazer v. Best Bee Brothers LLC</a>, No. 22-1033 (14 days)

Last Week In The Federal Circuit (November 14-18): No Disclaimer For You!

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Last Week In The Federal Circuit (November 14-18): No Disclaimer For You!

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Some of you may remember the Federal Circuit’s decision from a few (actually 5!) years ago holding that patent owner statements made in an IPR proceeding may “support a finding of prosecution disclaimer during claim construction.” 

Claim construction disputes often include arguments based on patents in the same family or materials incorporated by reference. Our case of the week discusses both categories of sources—and illustrates some limits on their use in claim construction.Case of the (recent) week: <a href="https://cafc.uscourts.gov/opinions-orders/21-2093.OPINION.11-1-2022_2027205.pdf" target="_blank">Finjan LLC v. ESET, LLC</a>, No. 21-2093Panel: Judges Prost, Reyna, and Taranto, with Judge Reyna writing the opinionYou should read this case if: you have a matter involving claim construction arguments based on related patents or incorporation by referenceThis week’s case involves a family of patents related to detecting computer viruses in downloaded files. In particular, the claims at issue all recite a security profile or policy for a “Downloadable.” Of the four asserted patents, two lacked any express definition of “Downloadable,” and two defined “Downloadable” as “an executable application program[]” downloaded from another computer. But all four asserted patents incorporated by reference a parent patent that defined “Downloadable” as “a small executable . . . application program.”Based on that incorporation by reference, the district court construed “Downloadable” in the asserted patents as similarly limited to “small” executable application programs.The Federal Circuit reversed. It acknowledged that “[i]ncorporation by reference of a patent renders the entire contents of that patent’s disclosure a part of the host patent.” But the Court emphasized that “incorporation by reference does not convert the invention of the incorporated patent into the invention of the host patent.” Rather, an incorporation by reference must be read in light of the host patent’s disclosure “to determine what impact, if any, a patent incorporated by reference will have on construction of the host patent claims.”Applying those principles, the Court rejected the district court’s use of the incorporated patents’ “Downloadable” definition to limit the asserted claims. It observed that the asserted patents “purposely delete[d]” the “restrictive” definition in the parent patents. And it noted that the only examples of “Downloadables” in the parent patents were small programs (applets). By contrast, the example “Downloadables” in the asserted patents were not so limited—they also included larger files such as scripts. The Court thus saw no inconsistency in giving “Downloadable” a broader scope in the asserted patents than in the incorporated parent patents.In sum, based on “the context provided by” the asserted patents, the Court concluded that “Downloadable” in the asserted claims “should not be restricted to ‘small’ executable application programs.”OTHER WEEKLY STATSPrecedential opinions: 3Non-precedential opinions: 8Rule 36: 3Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2093.OPINION.11-1-2022_2027205.pdf" target="_blank">Finjan LLC v. ESET, LLC</a>, No. 21-2093 (182 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1498.OPINION.11-4-2022_2029026.pdf" target="_blank">Uniloc 2017 LLC v. Google LLC</a>, No. 21-1498, and <a href="https://cafc.uscourts.gov/opinions-orders/21-1555.OPINION.11-4-2022_2029051.pdf" target="_blank">Uniloc USA, Inc. v. Motorola Mobility LLC</a>, No. 21-1555 (59 days) (companion cases)

Last Week In The Federal Circuit (October 31 – November 4): Keeping It In The (Patent) Family

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Last Week In The Federal Circuit (October 31 – November 4): Keeping It In The (Patent) Family

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Claim construction disputes often include arguments based on patents in the same family or materials incorporated by reference. 