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

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

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Partner

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

Brian Matsui

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

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

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

Seth Lloyd

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

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

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

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Recently in the Federal Circuit: More on Indefiniteness in IPRs

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Recently in the Federal Circuit: Broadening Claims in IPRs

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From facial-recognition technology to voice assistants and self-driving cars, artificial intelligence these days is pretty remarkable. But according to our latest case of the week, there’s at least one thing AI can’t do: be listed as an inventor on a patent application.Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/21-2347.OPINION.8-5-2022_1988142.pdf">Thaler v. Vidal</a>, No. 21-2347Panel: Chief Judge Moore and Judges Taranto and Stark, with Judge Stark writing the opinionYou should read this case if: you have a matter involving whether AI can qualify as an inventorOur case of the week centers on an AI system called DABUS, which is short for “Device for the Autonomous Bootstrapping of Unified Science.” Stephen Thaler created DABUS to generate patentable inventions. Thaler filed patent applications for two of DABUS’s putative inventions (a “Neural Flame” and a “Fractal Container”). Both applications listed DABUS as the sole inventor.The Patent and Trademark Office deemed the applications incomplete because they lacked a valid inventor. Thaler then filed suit against the Patent Office in federal district court, seeking judicial review of the Patent Office’s decision under the Administrative Procedure Act. The district court granted summary judgment for the Patent Office, concluding that an “inventor” under the Patent Act must be a natural person.The Federal Circuit affirmed. Its analysis “beg[an] and end[ed]” with the relevant statutory text. The Patent Act defines an “inventor” as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” 35 U.S.C. § 100(f) (emphases added). Another section, describing the inventor’s oath or declaration that must be submitted with a patent application, consistently refers to the inventor as an “individual.” Id. § 115.The Court noted that the Patent Act does not define “individual.” But it explained that the term “ordinarily means a human being,” relying on dictionary definitions and a Supreme Court decision interpreting “individual” in another statute. And nothing in the Patent Act suggested that Congress intended to deviate from that “default” meaning. To the contrary, the Patent Act uses “himself” and “herself”—but not “itself”—to refer to an “individual.” Id. § 115(b)(2). Because the Court found the statutory text unambiguous, it saw “no need to consider additional tools of statutory construction” such as agency-deference doctrines.The Court rejected Thaler’s counter-arguments. For instance, Thaler invoked Section 101 of the Patent Act, which provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter . . . may obtain a patent therefor.” Id. § 101 (emphasis added). But that provision is followed by a qualification—“subject to the conditions and requirements of this title [the Patent Act]”—and one such condition is the statutory definition of “inventor” as limited to “individuals.”Thaler also contended that “inventions generated by AI should be patentable in order to encourage innovation and public disclosure.” According to the Court, however, this “policy argument[]” could not overcome the unambiguous statutory text. And it clarified that it was not deciding “whether inventions made by human beings with the assistance of AI are eligible for patent protection.” Further, the Court observed that South Africa’s patent office has granted patents with DABUS listed as an inventor. But that “foreign patent office was not interpreting our Patent Act.”A final note: this decision was Judge Stark’s first precedential opinion as a full-fledged member of the Federal Circuit. (He wrote a non-precedential trademark <a href="https://cafc.uscourts.gov/opinions-orders/22-1178.OPINION.6-10-2022_1963640.pdf">decision</a> in June, and he authored a precedential Section 101 eligibility <a href="https://cafc.uscourts.gov/opinions-orders/15-1415.opinion.1-15-2016.1.pdf">decision</a> in 2016 as a district judge sitting by designation on the Federal Circuit.) The opinion was concise and hewed closely to the statutory text; it will be interesting to see whether that approach continues in his future decisions.OTHER WEEKLY STATSPrecedential opinions: 2Non-precedential opinions: 7Rule 36: 2Longest pending case from argument: <div><a href="https://cafc.uscourts.gov/opinions-orders/21-1988.OPINION.8-2-2022_1986100.pdf">Vicentin S.A.I.C. v. United States</a>, No. 21-1988 (144 days)</div>Shortest (non-Rule 36) pending case from argument: <div><a href="https://cafc.uscourts.gov/opinions-orders/21-2222.OPINION.8-3-2022_1986778.pdf">A. O. Smith Corporation v. Bradford White Corporation</a>, No. 21-2222 (56 days)</div>

Last Week In The Federal Circuit (August 1-5): An (Artificially) Intelligent Decision On Inventorship

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Last Week In The Federal Circuit (August 1-5): An (Artificially) Intelligent Decision On Inventorship

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From facial-recognition technology to voice assistants and self-driving cars, artificial intelligence these days is pretty remarkable. But according to our latest case of the week, there’s at least one thing AI can’t do: be listed as an inventor on a patent application.

Last Week in the Federal Circuit

Sometimes just because the rules permit something doesn’t mean doing it is a good idea. As our latest case-of-the-week shows, the result could be an award of attorney fees.Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/21-1484.OPINION.7-27-2022_1983771.pdf">Realtime Adaptive Streaming v. Netflix, Inc</a>., No. 21-1484Panel: Judges Newman, Reyna, and Chen, with Judge Chen writing the opinionYou should read this case if: you have a matter involving attorney feesOur case-of-the-week began when the plaintiff, Realtime, filed a patent-infringement action in Delaware. The action produced the now-standard petitions for inter partes reviews to the Patent Trial and Appeal Board, which the Board granted. Realtime’s complaint also produced a Section 101 motion to dismiss, which a magistrate judge recommended granting in “a thorough report.” The same Delaware district court had also just granted a Section 101 motion to dismiss against Realtime’s related patents in parallel actions. But before the Delaware district court could rule on the magistrate judge’s recommendation in this case, Realtime voluntarily dismissed the Delaware action. The day after its dismissal, Realtime sued the same defendant (Netflix) on the same patents in the Central District of California. It did so even though it had previously told the Delaware court that transferring the original Delaware action across the country to the Northern District of California would be inconvenient and unfair. Realtime’s change of heart may have been prompted by a recent favorable ruling from the CDCal court on subject-matter eligibility for some of the asserted patents.The CDCal action prompted a motion for attorney fees and to transfer the case back to Delaware. Realtime initially opposed transfer, then voluntarily dismissed its case before the CDCal court could rule. But the CDCal court awarded attorney fees anyway under 35 U.S.C. § 285 and, in the alternative, under its inherent equitable powers, although it declined to award the maximum fees sought.The Federal Circuit affirmed Realtime’s appeal of that award. The Court declined to reach the issue of whether back-to-back voluntary dismissals made the defendant a prevailing party, as Section 285 requires. The Court explained that the district court’s inherent-powers alternative was sufficient to sustain the award: “A district court may rely on its inherent equitable powers to award attorneys’ fees even if there is a statutory provision creating an alternative vehicle.” Applying Ninth Circuit law because the issue “is not a substantive patent question,” the Federal Circuit explained that a court may use its inherent powers to sanction a party that “acted in bad faith, vexatiously, wantonly, or for oppressive reasons.” In the Ninth Circuit, a party acts in bad faith when it “has engaged in willful actions with an improper purpose.” The Federal Circuit held that the district court had reasonably found that Realtime acted in bad faith based on three factors: (1) the Delaware magistrate judge had already recommended holding Realtime’s claims invalid before Realtime’s dismissal there; (2) Realtime knew that the Delaware court had also invalidated several related patents in parallel actions; and (3) the Board had instituted reviews of all asserted patents, indicating a reasonable likelihood that the patent claims were invalid. These facts showed Realtime acted in bad faith in dismissing in Delaware and refiling in CDCal. And Realtime only added to that bad faith when it fought transfer back to its originally preferred forum and then again dismissed its case. Such conduct supported the district court’s “finding of impermissible forum shopping.”The Federal Circuit rejected Realtime’s argument that there was no bad faith because the rules permitted Realtime’s actions. The Court agreed “that it is generally permissible under Rule 41(a)(1)(A)(i) for a plaintiff to voluntarily dismiss an action and refile the case in another forum.” But that was “a woefully incomplete description of the circumstances of this case.” Realtime had “misuse[d]” the ability to refile in an attempt “to wipe the slate clean” after the writing was on the wall in Delaware. In these circumstances, the district court acted well within its discretion in awarding fees.OTHER WEEKLY STATSPrecedential opinions: 2Non-precedential opinions: 5Rule 36: 0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1484.OPINION.7-27-2022_1983771.pdf">Realtime Adaptive Streaming v. Netflix, Inc</a>., No. 21-1484 (169 days)Shortest (non-Rule 36) pending case from argument: Podlucky v. US, No. <a href="https://cafc.uscourts.gov/opinions-orders/22-1319.OPINION.7-26-2022_1983083.pdf">22-1319</a> and No. <a href="https://cafc.uscourts.gov/opinions-orders/22-1328.OPINION.7-26-2022_1983095.pdf">22-1328</a> (20 days) (companion cases)

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 (July 25-29): Following The Letter But Not The Spirit Of The Rules

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Last Week In The Federal Circuit (July 25-29): Following The Letter But Not The Spirit Of The Rules

Precedential opinions: 3Non-precedential opinions: 10Rule 36: 0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1547.OPINION.7-18-2022_1979150.pdf">Zafer Construction Company v. United States</a>, No. 21-1547 (104 days)Shortest (non-Rule 36) pending case from argument: Tie between <a href="https://cafc.uscourts.gov/opinions-orders/21-1917.OPINION.7-18-2022_1979169.pdf">Polaris Innovations Limited v. Advanced Micro Devices, Inc.</a>, No. 21-1917 (13 days), and <a href="https://cafc.uscourts.gov/opinions-orders/21-1904.OPINION.7-20-2022_1980392.pdf">Davis v. McDonough</a>, No. 21-1904 (13 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/22-1027.OPINION.7-18-2022_1979207.pdf">CareDx, Inc. v. Natera, Inc.</a>, No. 22-1027Panel: Judges Lourie, Bryson, and Hughes, with Judge Lourie writing the opinionYou should read this case if: you have a matter involving patent eligibility, particularly in the medical diagnostics fieldThe Supreme Court recently <a href="https://federalcircuitry.mofo.com/topics/Supreme-Court-Refuses-Again-to-Jump-Back-into-the-101-Fray.html">declined</a> to take up patent eligibility in American Axle, leaving any clarification of Section 101 (by the Court or Congress) for another day. But in the meantime, the Federal Circuit will continue deciding Section 101 issues under existing case law. In our case of the week this week, the Federal Circuit applied those precedents to invalidate medical diagnostics claims.The patents at issue claim methods for diagnosing organ transplant rejection. When a recipient’s body rejects a transplanted organ, the recipient’s immune system destroys the donated organ’s cells, releasing the donor’s DNA into the recipient’s blood in the form of cell-free DNA (cfDNA). The claims here involve measuring the resulting increases in donor cfDNA levels to identify potential organ rejection. They include four steps: (1) collecting a blood sample from the transplant recipient, (2) determining the genotypes of the donor and the recipient, (3) sequencing the cfDNA from the recipient’s blood sample, and (4) determining the amount of donor cfDNA in the sample.The district court eventually held the claims invalid under Section 101, but only after a winding procedural history. The court denied the defendants’ motion to dismiss on Section 101 grounds. After expert discovery, the court initially denied summary judgment on Section 101 based on factual disputes about the conventionality of the relevant techniques. The defendants asked the district court to certify the summary-judgment denial for immediate appeal under 28 U.S.C. § 1292(b). The district court then changed course and granted the defendants summary judgment of ineligibility.The Federal Circuit affirmed. At step one of the Alice/Mayo patent eligibility framework, the Court held that the claims were directed to natural phenomena: the presence of donor cfDNA in a transplant recipient and the correlation between donor cfDNA and transplant rejection. The Court explained that “the claims boil down to collecting a bodily sample, analyzing the cfDNA using conventional techniques, . . . identifying naturally occurring DNA from the donor organ, and then using the natural correlation between heightened cfDNA levels and transplant health to identify a possible rejection.” It analogized to previous cases, such as the Supreme Court’s Mayo decision, holding medical diagnostic claims ineligible for similar reasons. And it distinguished other cases upholding diagnostic claims, noting that the claims there involved an unconventional “method of preparation or a new measurement technique.”At Alice/Mayo step two, the Court concluded that nothing in the claims “transforms the natural phenomena into a patentable invention.” The patents’ shared specification “admits that each step” in the claims “requires only conventional techniques and commercially available technology.” For example, the specification expressly noted that “any technique known in the art” could be used to collect the transplant recipient’s blood sample and that “well known” techniques could be used to sequence the cfDNA in the sample.Nor did the ordered combination of steps provide an inventive concept for step two purposes. The specification indicated that “collecting a sample, genotyping, sequencing, and quantifying” was “a straightforward, logical, and conventional method for detecting cfDNA.” In particular, that sequence of steps had been “previously used in other contexts, including cancer diagnostics and prenatal testing.”Finally, the Court disagreed with the plaintiffs’ procedural challenges to the district court’s decision. For instance, the Court saw no reversible “irregularity” in the district court “backtracking on its initial denial of summary judgment.” It observed that the district court “was entitled to reconsider its summary judgment decision” based on further arguments about the record evidence on conventionality.

Last Week In The Federal Circuit (July 18-22): Diagnosing Section 101 Eligibility

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Last Week In The Federal Circuit (July 18-22): Diagnosing Section 101 Eligibility

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The Supreme Court recently declined to take up patent eligibility in American Axle, leaving any clarification of Section 101 (by the Court or Congress) for another day. But in the meantime, the Federal Circuit will continue deciding Section 101 issues under existing case law. In our case of the week this week, the Federal Circuit applied those precedents to invalidate medical diagnostics claims.

Precedential opinions: 3Non-precedential opinions: 4Rule 36: 1Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1750.OPINION.7-15-2022_1978437.pdf">Lanclos v. United States</a>, No. 21-1750 (219 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2106.OPINION.7-13-2022_1977322.pdf">Koninklijke Philips N.V. v. Thales USA, Inc.</a>, No. 21-2106 (36 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/21-2106.OPINION.7-13-2022_1977322.pdf">Koninklijke Philips N.V. v. Thales USA Inc.</a>, No. 21-2106Panel: Chief Judge Moore and Judges Dyk and Chen, with Chief Judge Moore authoringYou should read this case if: you have a case involving irreparable harmSometimes what’s not addressed can be more interesting than what’s actually decided. For some observers that might be so in last week’s case of the week. On its face, the case might have been set to address the intersection of several interesting issues—when a district court can enjoin a party from seeking relief in the ITC; and whether an ITC exclusion order can or should be based on standard essential patents for which fair, reasonable, and nondiscriminatory (FRAND) license litigation is ongoing. But when a district court decision rests on multiple grounds, the Court often will take the cleanest path to affirmance—if there is one. And in the three-and-a-half page precedential opinion the Court issued last week, there clearly was.The case arose when a patent owner with several standard essential patents filed a district court infringement action and a separate ITC action seeking an exclusion order against an accused infringer (Thales). Thales counterclaimed in the district court for breach of contract and a FRAND determination, and it also asked the district court to preliminarily enjoin the patent owner from pursuing its ITC action. The district court denied the preliminary injunction for failure to show likelihood of success and irreparable harm, among other issues.On appeal, the parties seemed to set the case up as a showdown on standard essential patents with FRAND obligations and the effect of the possibility of an ITC exclusion order. Amici on both sides weighed in on the issue. But in the end, the Federal Circuit held that Thales’s appeal faltered for a different reason—Thales could not show that the district court clearly erred in its irreparable harm determination. In that regard, the Court’s short precedential decision reiterates that concrete evidence of actual, imminent irreparable harm is required: “[t]he mere possibility or speculation of harm is insufficient.” The Court saw no error in the district court’s conclusion that such speculation was all Thales had. Although Thales pointed to customer concerns about Thales’s ability to provide products “down the road” because of the possibility of an ITC exclusion order, that evidence failed to show a “likelihood of irreparable harm.” And the Court noted Thales’s failure to show “any evidence that it lost customers, had customers delay purchases, or struggled to acquire new business because of the ongoing ITC proceedings.”As for all those FRAND and ITC exclusion order issues, well that’s left for another day.

Last Week In The Federal Circuit (July 11-15): The FRAND vs. ITC Fight That Wasn’t

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 (July 11-15): The FRAND vs. ITC Fight That Wasn’t

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Precedential opinions: 1Non-precedential opinions: 8Rule 36: 4Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1495.OPINION.7-7-2022_1974736.pdf">Tris Pharma, Inc. v. Actavis Lab’ys FL, Inc.</a>, No. 21-1495 (121 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2272.OPINION.7-5-2022_1973369.pdf">U.S. Aeroteam, Inc. v. United States</a>, No. 21-2272 (26 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/22-1420.OPINION.7-8-2022_1975367.pdf">Correll v. Vidal, No. 22-1420</a>Panel: Chief Judge Moore and Judges Prost and HughesYou should read this case if: you have a matter involving possible misconduct before the Patent and Trademark Office.The number of attorneys practicing before the PTO has boomed with the popularity of the America Invents Act’s various adversarial proceedings before the Office. This week’s case-of-the-week serves as a reminder to attorneys appearing before the agency to keep in mind the Office’s own specific “Code of Professional Responsibility.”This week’s case turns on the Office’s prohibition against a “former or current Federal Government employee” from “engag[ing] in any conduct which is contrary to applicable Federal ethics law, including conflict of interest statutes.” Federal law in turn prohibits federal employees from receiving “any compensation for any representational service” where “the United States is a party or has a direct and substantial interest,” including from “act[ing] as agent or attorney for anyone before any department [or] agency.”These prohibitions came to a head in this case for the appellant, Mr. Correll, because he was an electrical engineer for the Navy who also happened to be moonlighting as a patent and trademark attorney before the PTO. The PTO Office of Enrollment and Discipline filed a disciplinary complaint against Correll, who was ultimately found to have violated the PTO’s rules and so received a 60-month suspension from practicing before the PTO. A district court rejected Correll’s request for a preliminary injunction staying that suspension while Correll sought judicial review.The Federal Circuit affirmed. The Court rejected Correll’s argument that the government was required to show that his conduct “did or potentially could distort the government’s process” before finding he had violated the law against federal employees practicing before the PTO. The conflict-of-interest statutes contained no such requirement.Nor was the Court convinced that Correll’s suspension violates his First Amendment freedom-of-speech and freedom-of-association rights. The Court agreed that “the government’s interest in avoiding even the appearance of impropriety outweighs the burden that Mr. Correll’s suspension has on his rights.” In that balance, the Court saw Correll’s burden as “minimal,” because he remained “free to comment on intellectual property matters in any capacity other than representing paying clients before the PTO.” The Court also rejected Correll’s First Amendment challenge because he had “willingly undertaken” the obligation to comply with PTO ethics rules—including requirements to comply with federal conflict-of-interest statutes.Whether your practice is at the PTO, another government agency, or in court, this case is a good reminder to double check your ethics obligations—a 5-year suspension from practice is no joke!

Last Week In The Federal Circuit (July 5-8): The Case of the Moonlighting Patent Attorney

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Last Week In The Federal Circuit (July 5-8): The Case of the Moonlighting Patent Attorney

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The number of attorneys practicing before the PTO has boomed with the popularity of the America Invents Act’s various adversarial proceedings before the Office. This week’s case-of-the-week serves as a reminder to attorneys appearing before the agency to keep in mind the Office’s own specific “Code of Professional Responsibility.”

Last week’s big news was the anticlimactic end of the American Axle saga.  (See our post on the Supreme Court’s cert denial <a href="https://federalcircuitry.mofo.com/topics/Supreme-Court-Refuses-Again-to-Jump-Back-into-the-101-Fray.html">here</a>.)  But the Federal Circuit was hard at work too:  it issued a dozen decisions on a wide variety of subjects.  Below we provide our usual weekly statistics and a detailed discussion of our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions:  4Non-precedential opinions:  8Rule 36:  0Longest pending case from argument:<a href="https://cafc.uscourts.gov/opinions-orders/21-1783.OPINION.6-28-2022_1970561.pdf">Prime Time Commerce, LLC v. United States</a>, No. 21-1783 (204 days)Shortest (non-Rule 36) pending case from argument:<a href="https://cafc.uscourts.gov/opinions-orders/21-1931.OPINION.6-27-2022_1969752.pdf">Netflix, Inc. v. DivX, LLC</a>, No. 21-1931 (17 days)Case of the week:<a href="https://cafc.uscourts.gov/opinions-orders/21-2303.OPINION.6-28-2022_1970511.pdf">Static Media LLC v. Leader Accessories LLC</a>, No. 21-2303Panel:  Judges Dyk, Reyna, and Taranto, with Judge Dyk writing the opinion and Judge Reyna dissentingYou should read this case if:  you have a matter involving a protective order or a joint defense agreementParties in patent litigation often enter into court-approved protective orders to safeguard their confidential information.  Our case of the week this week explores what happens when there’s a gray area in a protective order’s terms.Static Media LLC sued Leader Accessories LLC for design patent infringement in a Wisconsin district court.  The parties entered into a protective order, which provided that information designated as confidential “shall be used solely for the purpose of this action.”  It also prohibited Static and Leader from disclosing confidential information, except to certain third parties who agreed to abide by the protective order.Static then sued another defendant, OJ Commerce, in a Florida district court, alleging infringement of the same design patent.  Leader and OJ Commerce entered into a joint defense agreement to collaborate on defending against Static’s infringement claims.  OJ Commerce’s counsel signed onto the protective order in the Wisconsin action, and Leader’s counsel sent OJ Commerce several confidential documents from the Wisconsin case, including Static’s royalty agreements and financial information.Several months later, OJ Commerce improperly used the royalty agreements it obtained from Leader to assess a settlement proposal from Static.  Based on these events, the Wisconsin district court determined that Leader’s counsel violated the protective order by disclosing the confidential documents to OJ Commerce.  The court thus held Leader and its counsel in civil contempt and ordered Leader to pay Static’s attorney’s fees and a $1,000 sanction.A divided Federal Circuit panel reversed.  Writing for the majority, Judge Dyk explained that “contempt is improper when there is a fair ground of doubt as to whether a party’s actions violate a protective order.”  According to the majority, Leader’s counsel did not clearly violate the protective order, so a contempt finding was unwarranted.First, the majority declined to hold Leader’s counsel responsible for OJ Commerce’s improper use of the confidential information.  It saw no clear and convincing evidence that Leader’s counsel “knew or should have known [OJ Commerce’s counsel] would use the confidential information in the Florida action.”  To the contrary, Leader’s counsel had OJ Commerce’s counsel sign onto the protective order, and each time Leader’s counsel disclosed confidential information, he reminded OJ Commerce’s counsel of the protective order’s restrictions.Second, the majority held that Leader’s counsel’s disclosure of the confidential information to develop a joint defense strategy did not itself clearly violate the protective order.  The protective order prohibited all “use[s]” of confidential information other than “solely for the purpose of” the Wisconsin action.  But the majority observed that the protective order’s “stated purpose” was “preventing the public dissemination and disclosure of sensitive information.”  Read in light of that purpose, the majority concluded, “a ‘use’ entirely internal to protective order signatories—developing a joint defense strategy—would not violate its terms, even though the information would be used to develop a strategy beneficial to both the Wisconsin action and the Florida action.”Judge Reyna dissented.  He emphasized the deferential standard of review for district court decisions related to discovery and sanctions.  And he underscored the protective order’s text rather than its purpose, noting that it required confidential information to be used “solely for the purpose of this action.”  Judge Reyna thus would have concluded that the district court did not abuse its discretion in determining that Leader and its counsel violated the protective order.  In Judge Reyna’s view, it was “unreasonable” for Leader’s counsel to believe that OJ Commerce would not use the confidential information, “or the joint defense strategy formulated based on the disclosed confidential information,” in the Florida litigation.

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Last Week In The Federal Circuit (June 27 – July 1): Protective Order Pandemonium

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Last week’s big news was the anticlimactic end of the American Axle saga.  (See our post on the Supreme Court’s cert denial here.)  But the Federal Circuit was 

Last Week In The Federal Circuit (June 27 – July 1):  Protective Order Pandemonium

The Supreme Court dominated the news last week, and the Federal Circuit issued just four opinions.  One of them was a doozy:  to reinforce confidence in the judicial process, the Court vacated a $2 billion judgment that followed from a 22-day bench trial, with 26 witnesses, and over 300 exhibits.  Below we provide our usual weekly statistics and a detailed discussion of this case of the week.Precedential opinions:  3Non-precedential opinions:  1Rule 36:  0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1888.OPINION.6-23-2022_1968538.pdf">Centripetal Networks, Inc. v. Cisco Systems, Inc.</a>, No. 2021-1888 (80 days)Shortest (non-Rule 36) pending case from argument:<a href="https://cafc.uscourts.gov/opinions-orders/21-1660.OPINION.6-22-2022_1967958.pdf">Haggart v. United States</a>, No. 21-1660 (50 days)Case of the week:<a href="https://cafc.uscourts.gov/opinions-orders/21-1888.OPINION.6-23-2022_1968538.pdf">Centripetal Networks, Inc. v. Cisco Systems, Inc.</a>, No. 2021-1888Panel:  Judges Dyk, Taranto, and Cunningham, with Judge Dyk writing the opinionYou should read this case if:  Your judge or their family owned stock in one of the partiesLast year we saw the news reports about judges who heard cases when they had financial interests in a case or a party in the case—either by virtue of their owning stock or a family member owning stock.  We’re now seeing some of the fallout.This case began as a 10 patent case, and it led to a “22-day bench trial, which included an over 3,507-page record, 26 witnesses, and over 300 exhibits.”  It ended in a $2 billion judgment, which now has been vacated because the trial judge should have disqualified himself for his wife owning less than $5,000 in one party’s stock.Here’s what happened:  after the bench trial and final arguments, the judge learned that his wife owned 100 shares of defendant Cisco’s stock (then worth $4,687.99); he sent an email to the parties the next day informing them of this fact.  He told the parties he didn’t remember his wife’s purchase of the shares, and he already had a draft opinion on almost all the issues in the case.  He noted that the shares “did not and could not” influence his decision.Plaintiff notified the court that it had no objection to the judge continuing to preside over the case.  Cisco, on the other hand, asked the judge to recuse.  At the recusal hearing, the judge noted that he wouldn’t divest of the Cisco stock because he was considering awarding damages which might adversely affect Cisco’s stock price.  It seems he was worried that if he sold then and the price went down after his ruling, it might appear that he had non-public information when trading the stock.  So instead, the judge gave up control over the stock by putting it in a blind trust.  In denying the recusal motion, he stated that the blind trust constituted a divestiture of the stock.Three days later, the judge ruled against Cisco, finding willful infringement of four patents and awarding $1.9 billion plus prejudgment interest and a running royalty.On appeal, the case became all about those 100 shares of Cisco stock.  The Federal Circuit vacated the judgment.  It noted that 28 U.S.C. § 455 governs recusals for federal judges.  Under Section 455(b) a judge “shall . . . disqualify himself” for having (or for a spouse or minor child having) a financial interest in the case.  Under Section 455(f), however, a judge who has a financial interest and has devoted substantial time to the case does not need to disqualify if the judge or the judge’s family divests themselves of that financial interest.On whether the judge was correct that a blind trust was divestiture, not much needs to be said:  the Federal Circuit held that under the statute’s plain language having stock in a blind trust still is a financial interest that isn’t divested.  By contrast, the only support for the other view, that a blind trust equals divestment, was “an unsupported assertion in a law review article.”Having concluded the judge should have recused, the Court turned to the remedy, noting that “mandatory recusal does not require mandatory vacatur.”  But here, the Court determined that vacatur was necessary.  Of interest, the Court noted that the integrity of the judicial system was at stake.  It said:  “A vacatur here would signal to judges in other cases the importance of complying strictly with the procedures spelled out in § 455(f).  A failure to vacate would suggest that sitting on a case in which the judge’s family has a financial interest is not a serious issue.”  And “[i]t is seriously inimical to the credibility of the judiciary for a judge to preside over a case in which he has a known financial interest in one of the parties and for courts to allow those rulings to stand.”  The Court noted the recent public scrutiny reporting that many federal judges or their families owned stock while presiding over cases.  The Court stated that “vacatur is essential to preserve public confidence.”  And it suggested that vacatur is nearly always required.On a side note, the Court left open the possibility that Federal Circuit law should apply at some point going forward.  The Court noted that, in the past, it had applied regional circuit law for recusal issues.  But regardless what law applied here, “the outcome is the same.”  That said, the Court appeared to question whether that was the “correct approach in light of the substantial interest in having a uniform standard on issues of recusal, with respect to the various trial-level tribunals that we review.”  It almost seems that where the recusal law in some regional circuits is more lax, the Court’s need for uniformity would suggest Federal Circuit law should apply.  But whatever the Court meant, it stated that is something that “must await another case” to decide.A final sad addendum to the Court’s decision:  the judge who presided over the case passed away close to two months before the Federal Circuit’s decision.

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Last Week In The Federal Circuit (June 21-24): Maintaining Confidence In Judicial Rulings In Cases Reviewed By The Federal Circuit

Last Week In The Federal Circuit (June 21-24): Maintaining Confidence In Judicial Rulings In Cases Reviewed By The Federal Circuit

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The Supreme Court dominated the news last week, and the Federal Circuit issued just four opinions.  One of them was a doozy:  to reinforce confidence in the jud

It’s officially the start of summer, but the Federal Circuit is still hard at work:  last week the Court issued a few precedential opinions, several non-precedential decisions, and a handful of affirmances without opinion from the Court’s June argument sitting.  Below we provide our usual weekly statistics and a detailed discussion of our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions:  2Non-precedential opinions:  6Rule 36:  5Longest pending case from argument:<a href="https://cafc.uscourts.gov/opinions-orders/20-2086.OPINION.6-17-2022_1966591.pdf">Military-Veterans Advocacy Inc. v. Secretary of Veterans Affairs</a>, No. 20-2086 (190 days)Shortest (non-Rule 36) pending case from argument:<a href="https://cafc.uscourts.gov/opinions-orders/21-2281.OPINION.6-15-2022_1965429.pdf">Shelter Forest International Acquisition, Inc. v. United States</a>, No. 21-2281 (41 days)Case of the week:<a href="https://cafc.uscourts.gov/opinions-orders/21-1969.OPINION.6-13-2022_1964183.pdf">University of Massachusetts v. L’Oreal S.A.</a>, No. 21-1969Panel:  Judges Prost, Mayer, and Taranto, with Judge Taranto writing the opinionYou should read this case if:  you have a matter involving claim construction (particularly drug concentrations) or personal jurisdictionIf you’ve been waiting for a Federal Circuit opinion combining your interest in patent law with your skin-care routine, our case of the week this week is for you.  The University of Massachusetts (UMass) owns patents on methods for treating skin by topically applying compositions containing a compound called adenosine.  As relevant here, the asserted claims required “topically applying to the skin a composition comprising a concentration of adenosine . . . wherein the adenosine concentration applied to the dermal cells is 10-4 M [or 10-3 M] to 10-7 M.”  M is a unit of concentration referring to a number of particles (in moles) per unit of volume (in liters).UMass sued L’Oreal S.A. and its American subsidiary, L’Oreal USA, Inc., for alleged infringement of those patents.  The district court dismissed L’Oreal S.A. for lack of personal jurisdiction without permitting UMass to conduct jurisdictional discovery.  With the case proceeding against only L’Oreal USA, the district court construed the claimed concentration range to refer to the concentration of adenosine that permeates to the dermal cells beneath the skin’s surface.  The district court then held the asserted claims invalid as indefinite in part because, as construed by the court, the claims did not specify the required adenosine concentration in the composition topically applied to the skin.The Federal Circuit reversed the district court’s claim construction and vacated the invalidity judgment and personal-jurisdiction dismissal.  On claim construction, the Court held that the claimed concentration range refers to the adenosine concentration in the composition applied to the skin’s surface, not the concentration that reaches the dermal cells below the surface.  It began by noting that the claim language was “not plain on its face” because, among other reasons, the word “applied” could cover either direct application to the surface or indirect application to the sub-surface layer.The Court thus looked to the patents’ specifications and prosecution histories to resolve this ambiguity.  The specifications discussed several embodiments that described the adenosine concentration in the composition applied to the surface of the skin.  And the prosecution histories further supported the Federal Circuit’s construction.  In the original applications, the adenosine concentration range was found in a dependent claim.  That claim did not mention dermal cells and thus “seemingly referred only to adenosine concentrations applied to the skin.”  To overcome a prior-art rejection, the applicants imported the concentration requirement into the independent claim and added the reference to dermal cells.  Critically, however, the applicants suggested that the amendment did not change where the adenosine concentration was to be measured.  Because the claim construction was “an important premise of the indefiniteness determination,” the Court vacated the district court’s indefiniteness ruling and remanded for further proceedings.On personal jurisdiction, the Federal Circuit applied Third Circuit law, under which a court should permit jurisdictional discovery if the plaintiff “presents factual allegations that suggest . . . the possible existence of the requisite contacts.”  According to the Federal Circuit, UMass cleared that bar:  it had “made more than clearly frivolous, bare allegations that L’Oreal S.A. was subject to personal jurisdiction.”  For instance, UMass introduced evidence that L’Oreal S.A. may have researched and developed the addition of adenosine to skin-care products, and that L’Oreal S.A. may have licensed that technology to L’Oreal USA.  The Federal Circuit thus concluded that the district court should have permitted UMass to conduct jurisdictional discovery before deciding personal jurisdiction.

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Last Week In The Federal Circuit (June 13-17): A Concentration Claim Construction

Last Week In The Federal Circuit (June 13-17): A Concentration Claim Construction

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It’s officially the start of summer, but the Federal Circuit is still hard at work:  last week the Court issued a few precedential opinions, several non-precede

Last week was argument week at the Federal Circuit, and we’ve already begun seeing decisions from the argued cases trickle in. Below we provide our usual weekly statistics and a detailed discussion of our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 2Non-precedential opinions: 8Rule 36: 3Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1609.OPINION.4-8-2022_1933410.pdf">Roche Diagnostics Corporation v. Meso Scale Diagnostics, LLC</a>, No. 21-1609 (157 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2013.OPINION.4-4-2022_1930596.pdf">Littelfuse, Inc. v. Mersen USA EP Corp.</a>, No. 21-2013 (26 days)Case of the week: Littelfuse, Inc. v. Mersen USA EP Corp.Panel: Judges Prost, Bryson, and Stoll, with Judge Bryson writing the opinionYou should read this case if: you have a matter involving claim construction, and particularly the principle of claim differentiation.This week’s case of the week looks at the doctrine of claim differentiation. Littelfuse, Inc. owns a patent for fuse end caps to electrically connect a fuse and an electrical conductor. Littelfuse sued Mersen USA EP, Corp. but stipulated to non-infringement after the district court construed the claims to require a multi-piece construction.The Federal Circuit rejected the district court’s claim construction based on claim differentiation, the specification, and the prosecution history. The Court found the structure of the claims “enlightening.” Independent claim 1 recites a fuse end cap with three elements. Dependent claims 8 and 9 further limit claim 1 by requiring that the end cap be formed “from a single, contiguous piece of conductive material.” The Court explained: “By definition, an independent claim is broader than a claim that depends from it, so if a dependent claim reads on a particular embodiment of the claimed invention, the corresponding independent claim must cover that embodiment as well.” A claim construction that leads to a different result “is generally disfavored.” Therefore, the Court reasoned, claim 1 must cover single-piece embodiments.The Federal Circuit acknowledged that any presumption created by the doctrine of claim differentiation can be overcome but concluded that nothing in the written description or prosecution history dictated a different conclusion. The Court reviewed the specification’s description of three different embodiments: two where the end cap is machined or stamped from a “single piece of any suitable, electrically conductive material”; and one—an “assembled end cap”—where the terminal and mounting cuff are formed from two separate pieces of electrically conductive material that are joined together by, for example, a fastening stem. The Court noted that the descriptions of the single-piece embodiments do not mention a fastening stem, an element required by claim 1. The Court acknowledged this inconsistency but cautioned that courts should not limit the claimed invention to preferred embodiments or specific examples in the specification. After all, nothing in the specification states that a fastening stem cannot be present in a single-piece apparatus, and the Court concluded that the specification supports the construction of claim 1 to include both single-piece and multi-piece end caps.Finally, the Federal Circuit turned to the prosecution history. During prosecution, the examiner had noted that the three embodiments described in the specification represented distinct species of claim 1 and issued a restriction requirement. Littelfuse initially elected the species corresponding to the “assembled end cap”, i.e., the multi-piece end cap. The examiner then withdrew dependent claims 8 and 9 since they were directed to the “machined end cap” and the “stamped end cap” embodiments. But Littelfuse later amended its claims to add a “fastening stem” element in response to a different rejection. The examiner then allowed claim 1 and rejoined dependent claims 8 and 9 after concluding that dependent claims 8 and 9 “require all the limitations of the allowable claims.” The Court concluded that this history also supported its construction of claim 1 to cover both multi-piece and single-piece end caps.

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Of Counsel

Jillian brings over a decade of experience in patent prosecution and strategy to her practice. 

Jillian A. Pesin-Fulop Ph.D.

Jillian Pesin-Fulop is an associate in the firm’s Intellectual Property Group. Dr. Pesin-Fulop’s practice focuses on patent preparation and prosecution, patent portfolio management, and patent due diligence for life science companies and universities in the fields of biotechnology, pharmaceuticals, immunology, cancer therapeutics, diagnostics, biofuels, and agricultural biotechnology. She has experience developing and managing U.S. and worldwide patent portfolios. Dr. Pesin-Fulop also assists clients

Jillian Pesin-Fulop

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Last Week In The Federal Circuit (April 4 - 8): Claim Differentiation Carries The Day

Last Week In The Federal Circuit (April 4 - 8): Claim Differentiation Carries The Day

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Last week was argument week at the Federal Circuit, and we’ve already begun seeing decisions from the argued cases trickle in. Below we provide our usual weekly

When it comes to oil, even the Federal Circuit’s hands are sometimes tied. Last week, the Federal Circuit affirmed a Patent Trial and Appeal Board Precedential Opinion Panel decision for claims related to oil wells, although the Court expressed some skepticism about the agency’s reasoning. Below we provide our usual weekly statistics and a detailed discussion of our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 3Non-precedential opinions: 11Rule 36: 0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-2163.OPINION.3-24-2022_1926100.pdf">Hunting Titan, Inc. v. DynaEnergetics Europe GmbH</a>, No. 20-2163 (143 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2040.OPINION.3-25-2022_1926745.pdf">VDPP LLC v. VIZIO, Inc</a>., No. 21-2040 (17 days)Case of the week: Hunting Titan, Inc. v. DynaEnergetics Europe GmbHPanel: Judges Hughes, Prost, and Reyna, with Judge Hughes writing the opinion and Judge Prost authoring a concurring opinionYou should read this case if: you have a matter where the Board holds proposed amended claims unpatentable based on newly raised grounds.DynaEnergetics owns the coveted patent at issue, which is directed to a perforating gun used to improve a flow path for oil into wells. During an inter partes review challenging the patent’s claims, DynaEnergetics moved to amend and add substitute claims. The petitioner, Hunting Titan, opposed but failed to assert that the prior art anticipated the proposed substitute claims, as it had for the original claims. The Board disregarded this failure and ultimately found that the original and proposed substitute claims were unpatentable for anticipation.A Precedential Opinion Panel of the Patent Trial and Appeal Board agreed to review the original Board panel’s findings. The precedential panel focused on the circumstances in which the Board can go beyond party-presented challenges when considering the patentability of proposed substitute claims. Absent an exception, the precedential panel held that the Board does not have an affirmative duty to sua sponte raise patentability challenges and should do so only in “rare” circumstances. These rare circumstances may include where (1) a petitioner ceases to participate in the proceeding altogether, (2) a petitioner chooses not to oppose the motion to amend, or (3) evidence of unpatentability is “readily identifiable and persuasive such that the Board should take it up in the interest of supporting the integrity of the patent system.” Applying this standard, the precedential panel allowed the substitute claims, reversing the original panel’s decision to reject them.The Federal Circuit affirmed the outcome but not necessarily the precedential panel’s analysis. The Court “f[ou]nd problematic the Panel’s reasoning behind its decision to confine the Board’s discretion to sua sponte raise patentability issues to only rare circumstances.” The precedential panel had thought that the adversarial nature of inter partes reviews supported confining Board review in that manner. But that overlooked the basic purpose of inter partes review proceedings: to reexamine an earlier agency decision and ensure “that patent monopolies are kept within their legitimate scope.”Nonetheless, the Federal Circuit ultimately held that the petitioner was not entitled to relief on appeal. The Court explained that the precedential panel’s consideration of a readily-identifiable-evidence exception for the Board to raise patentability issues sua sponte was at least consistent with Federal Circuit precedent. But the Court refused to review the precedential panel’s application of that exception to the facts in this case, because the Court concluded that the petitioner had failed to argue on appeal that the precedential panel misapplied the exception. Emphasizing the narrowness of this holding, the Court affirmed. In the end, a win for patent owner DynaEnergetics—but perhaps not drivers at the pump.

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Associate

Caroline Pohl is an associate in Morrison and Foerster’s Litigation Group, where she specializes in intellectual property and complex commercial litigation.

Caroline Pohl

Caroline Pohl is an associate in the Litigation department of Morrison and Foerster’s San Diego office. Caroline earned her law degree magna cum laude from the University of California, Irvine School of Law, where she served as an Articles Editor of the UC Irvine Law Review. While in law school, Caroline and her Community & Economic Development Clinic partners successfully briefed and argued a

Caroline F. Pohl

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

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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When it comes to oil, even the Federal Circuit’s hands are sometimes tied. Last week, the Federal Circuit affirmed a Patent Trial and Appeal Board Precedential 