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

Recently in the Federal Circuit: More on Indefiniteness in IPRs

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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 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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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 

Last Week in the Federal Circuit

Last week’s big news was of course the official swearing in of Judge Stark. But there were plenty of other things happening at the Court. 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: 5Non-precedential opinions: 8Rule 36: 3Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-1933.ORDER.3-16-2022_1922220.pdf">Biogen Int’l GmbH v. Mylan Pharm. Inc.</a>, No. 20-1933 (463 days) (En Banc Order)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1025.OPINION.3-15-2022_1921647.pdf">O’Keeffe’s, Inc. v. Hirshfeld</a>, No. 21-1025 (6 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/20-1415.OPINION.3-15-2022_1921729.pdf">BASF Plant Science, LP v. Commonwealth Scientific and Industrial Research Organisation</a>, Nos. 2020-1415, -1416, -1919, -1920Panel: Judges Newman, Taranto, and Chen, with Judge Taranto writing the opinion, and a dissent in part filed by Judge NewmanYou should read this case if: you are involved in a patent co-ownership dispute subject to a contractual agreement.In this week’s case of the week, the Federal Circuit reviewed a jury verdict on patent co-ownership. The disputed patents claimed nutritional supplements for farm-raised fish designed to increase Omega-3 fatty acid content. CSIRO, the patent owner, and BASF were both developing these supplements. For a time, they agreed to collaborate and entered into a Materials Transfer and Evaluation Agreement. After the agreement ended, the companies parted ways, with each ultimately developing and marketing their own solutions.The relationship soured and the parties eventually ended up in district court. As a defense to CSIRO’s patent infringement claims, BASF argued it co-owned CSIRO’s patents under the terms of their previous agreement. A jury agreed for one, but only one, of six asserted patents.On appeal, the Federal Circuit reversed the finding of co-ownership for the one patent and affirmed the findings of no co-ownership for the others. The Court’s decision turned on the phrase “intellectual property subsisting in . . . Joint Results.” The Court held that this contract language required that BASF show that intellectual property defined by claims of the patents “inhere[d]” in or “form[ed] an element of” the Joint Results produced through the parties’ previous agreement.BASF argued that requirement was met because CSIRO obtained its patents by drawing on lessons it learned from experiments using both parties’ material, material CSIRO obtained through the collaboration agreement. But that overly broad interpretation of the agreement language conflicted with legal norms, which have never treated an invention as merely inherent in the lessons learned from earlier work. Were it otherwise, virtually no invention would survive the test of obviousness. The Court also found that BASF’s interpretation made no “commercial sense,” a consideration both parties agreed was critical in interpreting their agreement. BASF’s expansive view of the contract would turn the short, limited-term collaboration agreement into “an ever-threatening cloud over independent” work by other party.The Court then considered the evidentiary basis for the jury’s finding of co-ownership. BASF cited several pieces of evidence, including a CSIRO email that praised the value of BASF’s contributions, a CSIRO lab notebook summarizing results from the joint research, and the patent’s own description of research results. But the Court found that BASF failed to connect this evidence—or any other specific results, data, or information from the joint work—to the claims of the patent. Thus, the Court ruled there was no evidentiary basis to support the jury finding of co-ownership. And for similar reasons the jury could reasonably conclude that BASF had failed to prove it co-owned any of the other patents.This precedential opinion by the Federal Circuit exemplifies the Court’s process of interpreting co-ownership agreements. It also serves as a reminder of the importance of establishing connections between evidence and specific patent claims.

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Last Week In The Federal Circuit (March 14-18): Federal Circuit Says Go Fish To Claims of Co-Ownership

Last Week In The Federal Circuit (March 14-18): Federal Circuit Says Go Fish To Claims of Co-Ownership

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Last week’s big news was of course the official swearing in of Judge Stark. But there were plenty of other things happening at the Court. Below we provide our u

If your limited attention is diverted this week because of March Madness, never fear! We’ve got you covered at Federal Circuitry, where we’re always tracking the latest news at the Federal Circuit. 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: 6Non-precedential opinions: 5Rule 36: 13Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1334.OPINION.3-11-2022_1920301.pdf">NEXTEEL Co., Ltd. v. United States</a>, No. 21-1334 (127 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-2008.OPINION.3-8-2022_1918181.pdf">Broadcom Corp. v. ITC</a>, Nos. 20-2008, 21-1260, -1362, -1511 (53 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/22-108.ORDER.3-9-2022_1919045.pdf">In Re: Volkswagen Group of America, Inc.</a>, No. 22-108, -109Panel: Dyk, Reyna, and Chen (Per Curiam)You should read this case if: you have a venue dispute in a patent infringement action.Many recent venue cases have focused on permissive transfers for convenience under 28 U.S.C. § 1404. But this week’s case of the week deals with the stronger medicine of compulsory transfers or dismissal for improper venue under 28 U.S.C. § 1406(a).The patent venue statute, Section 1400(b), allows a civil action to “be brought in the judicial district where [1] the defendant resides, or where [2] the defendant has committed acts of infringement and has a regular and established place of business.” After StratosAudio sued Volkswagen and Hyuandi (“Volkswagen”) for patent infringement in the Western District of Texas, Volkswagen moved to dismiss or transfer. Volkswagen argued venue was improper because it neither resided in the Western District nor had a regular and established place of business there.The district court disagreed. It found that Volkswagen had agents—local dealerships—with regular and established places of business that could be imputed to Volkswagen. According to the district court, the dealership franchise agreements gave Volkswagen sufficient control over dealership operations to make the dealerships Volkswagen’s agents. In particular, the district court cited Volkswagen-dictated staffing and reporting requirements, minimum inventory levels, employee training, and equipment requirements placed on the dealerships.The Federal Circuit granted Volkswagen’s petition for a writ of mandamus and reversed. It explained three requirements for whether a party has a “regular and established place of business”: (1) there must be a physical place in the district; (2) it must be a regular and established place of business; and (3) it must be the place of the defendant. The first and third factors were not in dispute. The second factor requires the “regular, physical presence of an employee or other agent of the defendant conducting the defendant’s business.”The Court acknowledged that questions of control often arise in the context of franchise agreements. Yet it distinguished between contractual provisions potentially evidencing interim control and those merely providing constraints on how a service is provided. It explained that setting standards in an agreement for acceptable service quality, without more, does not create an agency relationship.The Court found there was no evidence that Volkswagen maintains influence over the sales process once it has sold a car to the dealership. There were no “step-by-step instructions” that the dealerships must follow when selling a car. Thus, the dealerships were not Volkswagen's agents. Moreover, while not dispositive the Court noted that the parties had disclaimed an agency relationship in the franchise agreement.Finally, the Court pointed to a “near uniform” body of law finding that similar contractual provisions or allegations of control fail to show that dealerships are agents of vehicle manufactures. That apparently made this case a slam dunk and worthy of mandamus.

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Dr. Meghan Poon counsels clients on patent preparation and prosecution, portfolio strategy, and IP due diligence in the areas of biotechnology and biologics. She has significant experience in diverse technologies including antibodies, cell therapies, gene therapies, diagnostics, and gene-edited plants. 

Meghan McLean Poon Ph.D.

Dr. Meghan Poon counsels clients on patent preparation and prosecution, portfolio strategy, and IP due diligence in the areas of biotechnology and biologics. She has significant experience in diverse technologies including antibodies, cell therapies, gene therapies, diagnostics, and gene-edited plants.

Meghan Poon

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Last Week In The Federal Circuit (March 7-11): March Madness Mandamus-Style

Last Week In The Federal Circuit (March 7-11): March Madness Mandamus-Style

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If your limited attention is diverted this week because of March Madness, never fear! We’ve got you covered at Federal Circuitry, where we’re always tracking th

The Federal Circuit kicked off a new week of oral arguments today. And this week it finishes its goodbyes to Judge O’Malley, who officially retires on Friday (March 11). Even so, the work must go on. 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: 0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-2342.OPINION.3-1-2022_1915069.pdf">DBN Holding, Inc. v. ITC</a>, No. 20-2342 (147 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-2164.OPINION.3-4-2022_1917077.pdf">Lowe v. Shieldmark, Inc.</a>, No. 21-2164 (24 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/20-2342.OPINION.3-1-2022_1915069.pdf">DBN Holding, Inc. v. ITC</a>, No. 20-2342Panel: Chief Judge Moore and Judges Newman and Reyna, with Judge Reyna writing the opinionYou should read these cases if: you have a matter involving a consent order before the ITC.People often repeat the adage that an invalid patent cannot be infringed. But this week’s case of the week shows that, regardless of whether that adage is true, one can violate a consent order based on an invalid patent. And doing so can be costly.The facts are these. DBN Holding confronted a common challenge—a patent litigation action in district court and an investigation based on the same underlying patent at the International Trade Commission. To avoid having to litigate simultaneously in both fora, DBN executed a consent order at the Commission. Among other things, the order provided that DBN would not import any two-way global satellite communication devices that infringe claims of the asserted patent “until the expiration, invalidation, and/or unenforceability” of the patent. The order also stated that it would become inapplicable to any claim “found or adjudicated invalid” in court, “provided that such finding or judgment has become final and non-reviewable.”DBN eventually succeeded in proving the claims invalid in district court. But not before DBN imported satellite devices in violation of the consent order. The Commission slapped DBN with a substantial civil penalty for its violation. After the Federal Circuit affirmed the district court invalidity judgment, DBN filed a petition asking the Commission to rescind or modify the civil penalty.On DBN’s appeal from the Commission’s denial of the petition, the Federal Circuit affirmed. The Federal Circuit explained that “consent decrees and orders have attributes both of contracts and of judicial decrees.” Viewed as a contract, DBN received the benefit of its bargain when the Commission terminated the original investigation. DBN was then obligated to uphold its end of the bargain—not to import satellite devices covered by the patent. Because the consent order spelled out that a court invalidation of the patent would apply only prospectively, “under the clear terms of the consent order, DBN remained potentially liable for any violations up to the time of invalidation.” The Court thus rejected DBN’s argument that its alleged infringing conduct could not support maintaining the civil penalty given the asserted claims’ later invalidation.The Federal Circuit declined to decide whether, in fact, Commission regulations authorized the Commission to rescind or modify previous consent orders. Even assuming the Commission had such authority, the decision to rescind or modify would be “commit[ted] to the ITC’s discretion.” DBN failed to show the Commission abused that discretion. DBN argued that the Commission should have found its violation of the consent order to be in good faith because DBN believed the patent to be invalid when the violation occurred. But the Federal Circuit rejected that argument as “without a reasonable basis or legal authority.”

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 (February 28 - March 4): When Infringing An Invalid Patent Can Be Costly

Last Week in the Federal Circuit (February 28 - March 4): When Infringing An Invalid Patent Can Be Costly

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The Federal Circuit kicked off a new week of oral arguments today. And this week it finishes its goodbyes to Judge O’Malley, who officially retires on Friday (M

Despite no precedential patent decisions at the Federal Circuit last week, the Court still addressed some interesting issues, including a decision in which the Patent Trial and Appeal Board rejected a patentee’s alleged objective indicia of non-obviousness for a patent’s broader claims, but upheld them as to narrower substitute claims.  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:  10Rule 36:  5Longest pending case from argument:<a href="https://cafc.uscourts.gov/opinions-orders/20-2182.OPINION.2-16-2022_1909228.pdf">Jones v. United States</a>, No. 20-2182 (166 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1908.OPINION.2-14-2022_1907705.pdf">Travel Sentry Inc. v. Tropp</a>, No. 21-1908 (5 days)Cases of the week:Zaxcom, Inc. v. Lectrosonics, Inc., <a href="https://cafc.uscourts.gov/opinions-orders/20-1350.OPINION.2-18-2022_1910803.pdf">Nos. 20-1350, -1405</a>; and <a href="https://cafc.uscourts.gov/opinions-orders/20-1921.OPINION.2-18-2022_1910806.pdf">Nos. 20-1921, -1922, -1943, -1944</a>Panel:  Judges Taranto, Lourie, and Schall, with Judge Taranto writing both opinionsYou should read these cases if:  you are involved in a dispute with objective indicia of non-obviousness.In this week’s case of the week, the Federal Circuit upheld three Patent Trial and Appeal Board decisions assessing three Zaxcom patents.  The Zaxcom patents are directed to wireless audio recording systems.  Each patent relates to recording audio locally on a device and streaming it wirelessly to a remote recorder, which records the audio a second time.  The original claims required that the locally recorded audio data be “combined” with the remotely recorded audio data.  The Federal Circuit agreed with the Board that, under the broadest reasonable interpretation of the claim language, the claims cover two applications:(1)   combining the two recordings to create a multi-track audio file (“multitrack creation”); and(2)   combining the locally and remotely recorded audio to repair corruption or dropouts in the remotely recorded audio data (“dropout repair”).At the Board, Zaxcom sought to rebut alleged obviousness combinations by introducing objective indicia of non-obviousness — evidence of industry praise, commercial success, and solving a long-felt but unmet need.  But the Board found that this evidence was directed solely “to the critical feature of dropout repair,” and the Federal Circuit affirmed that finding under the deferential substantial evidence standard of review.  Because the original claims were broad enough to also cover the multitrack creation approach disclosed in the obviousness combinations advanced by Petitioner Lectrosonics, the Board also found that the objective indicia evidence lacked the required nexus to the full scope of Zaxcom’s claims and thus failed to support non-obviousness.  The Federal Circuit affirmed that Zaxcom’s evidence was “insufficient to overcome the prior-art evidence of obviousness”—the evidence “in short, says nothing to suggest non-obviousness of one of the two types of systems and methods within the claims’ coverage.”The Board reached a different conclusion with respect to Zaxcom’s amended claims, and the Federal Circuit affirmed that too.  The Federal Circuit explained that “[t]he substitute claims narrow the ‘combined’ claim limitation to a limitation that requires ‘replacing’ the remotely recorded data with local audio data,” and “Lectrosonics accepts that the substitute claims are directed to dropout repair.”  Because the amended claims were limited to dropout repair, the Board found a sufficient nexus between the industry praise and the amended claims.  The Federal Circuit saw “no basis for reversing the Board’s findings,” particularly because the objective indicia evidence directly discussed the “dropout repair” feature that the narrowed claims required.  As a result, the Federal Circuit upheld all three patents in their amended form.The Federal Circuit non-precedential decisions thus provide clear examples of when objective indicia does, and does not, have a sufficient connection to claims to support non-obviousness.  In addition, one of the Board decisions here was designated precedential at the Board for its holding that a nexus between the evidence and the merits of the claimed invention must be established in order for objective indicia of non-obviousness to be given substantial weight.  Parties thus should expect that issues of nexus will continue to be a focus in proceedings before the Board involving objective indicia of non-obviousness.

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Last Week In The Federal Circuit (February 14-18): When Objective Indicia Evidence Both Is, And Is Not, Sufficient For Non-Obviousness

Last Week In The Federal Circuit (February 14-18): When Objective Indicia Evidence Both Is, And Is Not, Sufficient For Non-Obviousness

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Despite no precedential patent decisions at the Federal Circuit last week, the Court still addressed some interesting issues, including a decision in which the 

No better way to start Valentine’s Day week than to think about a different way for communicating. But as this week’s case of the week shows, what you say and how you say it can matter. Check out our usual weekly statistics below and the detailed discussion of our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 7Non-precedential opinions: 13Rule 36: 5Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/18-1976.ORDER.2-11-2022_1907121.pdf">GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc.</a>, No. 18-1976 (353 days) (en banc order)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1986.OPINION.2-9-2022_1905793.pdf">Feiss v. United States</a>, No. 21-1986 (2 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/21-1649.OPINION.2-10-2022_1906548.pdf">Junker v. Medical Components, Inc.</a>, No. 21-1649Panel: Judges Dyk, Reyna, and Stoll, with Judge Stoll writing the opinionYou should read this case if: you have a matter involving an on-sale bar due to a pre-critical date letter that may be a commercial offer for sale.If you’re wondering whether the Federal Circuit is still dealing with cases involving antiquated technology, the answer is yes. Indeed, the Court had to transport themselves back to when people still used the good old fashioned fax machine for communicating.Larry G. Junker owns a design patent covering an introducer sheath handle with “large, rounded Mickey-Mouse-shaped ears.” The sheath handle may be used for inserting a catheter into the vein of a patient. Mr. Junker sued MedComp for infringement.But Mr. Junker’s suit ran into trouble with the Pre-AIA § 102(b) on-sale bar. That provision bars a patent to an invention that was “on sale in” the United States more than one year before the patent application was filed. (Post-AIA § 102 also includes an on-sale bar, although some of the relevant statutory language has changed.) The heart of the issue was whether a letter sent via fax was a commercial offer for sale such that the on-sale bar applied.The letter was sent not by Mr. Junker but by a business partner that had developed a prototype of Mr. Junker’s invention. The partner sent a letter to a potential buyer with details about bulk pricing information, specifically, a price chart for variously sized sheath products. The letter provided numerous specific commercial terms, such as payment terms, shipment terms, and delivery conditions and then concluded with an invitation to discuss any further requirements.The district court held that the letter was a preliminary negotiation, not a definite offer sufficient to trigger the on-sale bar. Although the district court acknowledged the letter’s commercial terms, it really focused on the word “quotation” (which appeared three times) and the invitation at the end of the letter. As a result, the district court granted Mr. Junker’s motion for summary judgment of no invalidity under the on-sale bar.The Federal Circuit reversed. The Court noted that the letter was in direct response to a request for a quotation. Further, the letter was addressed to the potential buyer alone. Thus, the letter was a specific offer to take further action, not an unsolicited price quotation or invitation to negotiate. The Court also noted the commercial terms in the letter as being necessary terms typical for a commercial contract: specific delivery conditions, allocation of risk and responsibilities of the buyer and seller (for delivery, payment, and loss of the product), and payment terms. And the icing on the cake was that the letter specified multiple different purchase options (the price chart). Although the letter concluded with an invitation for further discussions, the complete and definite commercial terminology used in the letter meant that it was a commercial offer for sale. It did not help that later communications between the same parties used the exact same commercial terms, indicating that the terms in the disputed letter were definite. Oops! The Court thusconcluded that the letter contained multiple offers for sale and so triggered the on-sale bar.In the end, this was not the “happiest [decision] on Earth” for these claims to a sheath handle with “large, rounded Mickey-Mouse-shaped ears.”

Round Rock Research, LLC v. [Multiple Defendants]

Sage Electrochromics, Inc. v. View, Inc.&nbsp;

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Of Counsel

A former lead engineer at the NASA Jet Propulsion Laboratory, Dr. Nguyen focuses her practice on domestic and international patent prosecution. She is a founder and co-leader of the firm’s Life Scienc

Jean Nguyen Ph.D.

Jean Nguyen

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Last Week in the Federal Circuit (February 7-11): Don't Forget To File Your Patent Before Pressing That "Fax" Button

Last Week in the Federal Circuit (February 7-11): Don't Forget To File Your Patent Before Pressing That "Fax" Button

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No better way to start Valentine’s Day week than to think about a different way for communicating. But as this week’s case of the week shows, what you say and h

The Federal Circuit was quite productive last week despite the holiday weekend. The Court issued a dozen non-precedential decisions, several precedential opinions, and a handful of Rule 36 summary affirmances in cases argued during the Court’s January sitting. Below we provide our usual weekly statistics and our cases of the week—our highly subjective selection based on whatever cases piqued our interest.Precedential opinions: 5Non-precedential opinions: 12Rule 36: 6Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-1856.OPINION.1-20-2022_1895442.pdf">Nicely v. United States</a>, No. 20-1856 (198 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1751.OPINION.1-19-2022_1894758.pdf">Smolinski v. Merit Systems Protection Board</a>, No. 21-1751 (41 days)Cases of the week:As our readers <a href="https://federalcircuitry.mofo.com/topics/How-Well-Do-You-Know-the-Federal-Circuits-Jurisdiction.html">know</a>, the Federal Circuit isn’t just a “patent court.” It also has jurisdiction over appeals involving veterans’ benefits, claims for money damages against the United States, federal employment, and government contracts, among other areas. This week we’re highlighting several recent decisions from the Federal Circuit’s non-patent docket. These cases involve issues of statutory construction, agency deference, and contract interpretation—all of which may have broader significance for patent practitioners.<a href="https://cafc.uscourts.gov/opinions-orders/20-1856.OPINION.1-20-2022_1895442.pdf">Nicely v. United States</a>, No. 20-1856: Appeal from the Court of Federal Claims. Panel: Chief Judge Moore and Judges Prost and O’Malley, with the opinion for the court filed per curiam and Judge O’Malley concurring in the resultThe Federal Circuit held that retired military members were eligible to serve on the Board for Correction of Naval Records. The statute governing correction of military records, 10 U.S.C. § 1552, requires that the Secretary of the relevant military department “act[] through boards of civilians of the executive part of that military department” (emphasis added). The Court noted that Congress did not expressly define “civilians” in this statutory text. But it explained that dictionary definitions of “civilian,” as well as other statutory provisions involving “members of the armed forces,” suggest that “a person who is not on active duty in the armed services” qualifies as a civilian.The Court further reasoned that the “broader statutory context” supported its interpretation. For instance, Congress elsewhere created post-retirement waiting periods before former military members could be appointed to certain high-level civilian positions, like Secretaries of the Army and Navy. According to the Court, these provisions “impl[y] that those individuals would have been eligible for service as civilians immediately upon retirement but for the statutorily-imposed ‘cooling-off’ period.” The Court declined to “decide whether or how the Chevron framework applies here,” as it concluded that the Board’s interpretation of “civilians” in § 1552 was “the best interpretation of” the statute.<a href="https://cafc.uscourts.gov/opinions-orders/21-1490.OPINION.1-20-2022_1895407.pdf">Gurley v. McDonough</a>, No. 21-1490: Appeal from the Court of Appeals for Veterans Claims. Panel: Judges Taranto, Bryson, and Stoll, with Judge Taranto writing the opinionThe Federal Circuit held that the Department of Veterans Affairs (VA) was authorized to withhold future disability-benefits payments to recoup payments that the agency erroneously made while a veteran was incarcerated. The relevant statute, 38 U.S.C. § 5313(a)(1), provides that a veteran convicted of a felony “shall not be paid compensation” above a certain level “for the period beginning” on the 61st day of incarceration “and ending on the day” the incarceration ends.The Court concluded that the statute does not preclude the agency from “mak[ing] a post-incarceration decision to reduce benefits retroactively.” To start, the statutory text “does not use language that addresses the time at which VA must make its reduction decision regarding those benefits.” And a neighboring statutory provision, 38 U.S.C. § 5314, “specifically contemplates VA’s recovery of overpayments through withholding from future benefits.” The Court further saw an “evident reason” to interpret the statute as permitting retroactive benefits reductions: “VA might not have the contemporaneous knowledge of a particular veteran’s incarceration needed to take the initiative of reducing benefits by the 61st day.”<a href="https://cafc.uscourts.gov/opinions-orders/21-1445.OPINION.1-20-2022_1895421.pdf">Anderson v. United States</a>, No. 21-1445: Appeal from the Court of Federal Claims. Panel: Judges Prost, Reyna, and Stoll, with Judge Reyna writing the opinionThe Federal Circuit held that the government’s conversion of an unused railroad corridor into recreational hiking trails did not constitute a taking of adjacent landowners’ real property interests. The dispute centered on whether the landowners’ predecessors had conveyed fee simple interests or merely easements to the railroad. The granting clauses of the deeds conveyed “all that piece or parcel of land” described therein. But later passages in the deeds described the conveyance as a “right of way” over which the railroad would operate.Under Texas law, which applied to the deeds here, the granting clause in a deed controls so long as it is unambiguous, even if there is contradictory language elsewhere in the deed. The Court concluded that the granting clauses in the deeds at issue “unambiguously convey[ed] a piece or parcel of land” in fee simple, “not an easement right of way.” This “unambiguous granting clause” governs over “the subsequent language in the deeds that contradict the fee simple conveyance.” The landowners thus had no remaining property interests in the rail corridor. And that meant the government’s authorization of third parties to use the corridor recreationally could not constitute a taking from the landowners.

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Last Week in the Federal Circuit (January 18-21): A Roundup of Non-Patent Decisions

Last Week in the Federal Circuit (January 18-21): A Roundup of Non-Patent Decisions

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The Federal Circuit was quite productive last week despite the holiday weekend. The Court issued a dozen non-precedential decisions, several precedential opinio

The Federal Circuit is holding its first argument session of 2022 this week (with a <a href="https://cafc.uscourts.gov/notice-of-change-to-january-2022-session/">return to telephonic arguments</a> in light of the Omicron variant).  In this post, we take a look back at how the Court closed out 2021 and began 2022.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest—for the last week of 2021 and the first of 2022.Precedential opinions:  6 (3 the week of 12/27; 3 the week of 1/3)Non-precedential opinions:  7 (7 the week of 12/27; 0 the week of 1/3)Rule 36:  3 (0 the week of 12/27; 3 the week of 1/3)Longest pending case from argument:  <a href="https://cafc.uscourts.gov/opinions-orders/21-1070.OPINION.1-3-2022_1887614.pdf">Novartis Pharmaceuticals v. Accord Healthcare Inc.</a>, No. 21-1070 (179 days)Shortest (non-Rule 36) pending case from argument:<a href="https://cafc.uscourts.gov/opinions-orders/20-2048.OPINION.12-27-2021_1885397.pdf">Colicelli v. Department of Veterans Affairs</a>, No. 20-2047 (21 days)Case of the week(s):<a href="https://cafc.uscourts.gov/opinions-orders/20-1828.OPINION.12-28-2021_1885998.pdf">Intel Corp. v. Qualcomm Inc.</a>, No. 20-1828Panel:  Judges Prost, Taranto, and Hughes, with Judge Taranto writing the opinionYou should read this case if:  you have an IPR where a claim limitation may be indefiniteIn an inter partes review (IPR), the grounds for cancelling a patent claim are limited.  Anticipation and obviousness are grounds for cancellation—but indefiniteness is not.  What should happen in an IPR when a claim limitation is indefinite?  The Federal Circuit took on that question in our case of the week.This appeal arises from an IPR in which Intel challenged a patent owned by Qualcomm relating to computer-processor systems.  In its institution decision, the Board questioned whether certain terms in one claim were indefinite (because they were means-plus-function terms and lacked the necessary supporting structure).  Intel, the challenger, took up that suggestion, arguing that the terms were indefinite.  The Board then concluded that Intel had not met its burden of showing that the claims were obvious because it had not identified a structure “to which [the Board] can compare the prior art’s disclosure.”The Federal Circuit vacated and remanded that determination, holding that the Board’s analysis was incomplete.  For the Board not to reach a decision on the merits of the obviousness challenge, it had to determine that the terms were actually indefinite and that this made it impossible to adjudicate the challenge.In an IPR, the Court explained, the Board is generally obligated to determine the patentability of a challenged claim over the prior art asserted.  That obligation does not apply “if such a determination is rendered impossible because of the indefiniteness of an essential claim limitation.”  The Court held that “going forward,” the Board should “clearly state” when it is relying on that principle. But just because “some aspect of a claim renders the claim indefinite” does not necessarily make it “impossible to adjudicate a prior-art challenge.”  For example, even where one limitation is indefinite, an alternative limitation might be covered by the prior art or the argued combinations or modifications.  The Court held, based on that reasoning and statutory clues from “[t]he inter partes review scheme as a whole,” that “[t]he indefiniteness of a limitation (here, a means-plus-function limitation) precludes a patentability determination only when the indefiniteness renders it logically impossible for the Board to reach such a decision.”The Court held the Board’s analysis deficient for two reasons.  First, the Board failed to “decide whether it could resolve the patentability dispute even if claim 16 is indefinite.”  Second, the Court also faulted the Board for “simply accept[ing] Intel’s concession that the required structure for the means-plus-function claim was missing.”  Instead, the Court held, the Board needed to “itself conclude that the prior-art analysis task was impossible,” which required “determining for itself that such structure was missing.”  The Court therefore remanded for the Board to “decide one or both” of those issues.In a separate section of its decision, the Court vacated and remanded a claim construction relevant to other challenged claims.  Interestingly, the Court held the Board’s construction “inadequate” under de novo review but did not construe the term itself.  The case thus heads back to the Board for the agency to take another crack at both the impossibility and claim construction issues.

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Last Two Weeks in the Federal Circuit (December 27 - January 7)

Last Two Weeks in the Federal Circuit (December 27 - January 7)

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The Federal Circuit is holding its first argument session of 2022 this week (with a return to telephonic arguments in light of the Omicron variant).  In this po

Last week the Federal Circuit was gearing up for its December argument sitting, but the Court still found time to issue several decisions. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 3Non-precedential opinions: 3Rule 36: 0Longest pending case from argument: Tie between <a href="https://cafc.uscourts.gov/opinions-orders/20-1933.OPINION.11-30-2021_1871902.pdf">Biogen International GmbH v. Mylan Pharmaceuticals Inc.</a>, No. 20-1933, and <a href="https://cafc.uscourts.gov/opinions-orders/20-1673.OPINION.11-30-2021_1871910.pdf">Mylan Pharmaceuticals Inc. v. Biogen MA Inc.</a>, No. 20-1673 (357 days each)Shortest (non-Rule 36) pending case from argument: Tie between <a href="https://cafc.uscourts.gov/opinions-orders/20-2329.OPINION.12-1-2021_1872458.pdf">Moderna TX, Inc. v. Arbutus Biopharma Corporation</a>, No. 20-2329, and <a href="https://cafc.uscourts.gov/opinions-orders/20-1184.OPINION.12-1-2021_1872445.pdf">Moderna TX, Inc. v. Arbutus Biopharma Corporation</a>, No. 20-1184 (55 days each)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/20-2329.OPINION.12-1-2021_1872458.pdf">ModernaTX, Inc. v. Arbutus Biopharma Corporation</a>, No. 20-2329Panel: Judges Lourie, O’Malley, and Stoll, with Judge Lourie writing the opinionYou should read this case if: you have a matter involving (1) standing in an appeal from an IPR decision or (2) a presumption of obviousness based on overlapping ranges in the prior art.This week’s case brings us another dose of COVID-19 news, this time with the RNA technology used in some COVID-19 vaccines making its way to the Federal Circuit’s patent docket. Our case mainly involves the presumption of obviousness that typically applies “when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”Arbutus’s patent involved nucleic acid lipid particle compositions for delivery of nucleic acids—such as small interfering RNA—into cells. The claimed composition comprised four main lipid components: cationic lipid, phospholipid, cholesterol, and conjugated lipid. Each lipid component made up a certain range of mol % of the total lipid in the particle.Moderna petitioned for an IPR of Arbutus’s patent, asserting that all claims were unpatentable for obviousness. The dispute before the Board focused on the phospholipid range. Moderna conceded that the prior art did not expressly disclose the claimed phospholipid range “from 4 mol % to 10 mol %.” But it contended that the range could have been calculated based on the fact that all mol % must total 100% or by routine optimization. The Board rejected Moderna’s obviousness arguments, and Moderna appealed.The Federal Circuit affirmed. The Court began by holding that Moderna had standing to pursue its appeal based on the risk of Arbutus filing an infringement suit. Back in 2017, Arbutus asserted that it had extensive patent coverage over virtually all nanoparticle delivery systems. Moderna provided evidence describing its work on mRNA technology, delivery techniques, and COVID-19 vaccine manufacturing techniques, as well as Arbutus’s refusal to grant a covenant not to sue on its patent. The Court concluded that this record adequately showed a risk that Arbutus would bring an infringement lawsuit against Moderna. But the Court rejected Moderna’s alternative argument that it had standing to appeal based on its current status as a licensee of the challenged patent. The Court addressed this issue in more detail in another opinion released the same day (No. 20-1184).On the merits of the obviousness challenge, the Court held that a presumption of obviousness did not apply because the phospholipid range was not expressly disclosed in the prior art. The Court declined to decide whether the presumption of obviousness due to overlapping ranges could ever apply when the prior art had no express disclosure of a range. Instead, the Court focused on Moderna’s failure to show that the prior art actually taught the overlapping range.The Court rejected Moderna’s theory that all four lipids must add up to 100 mol % and that a person of ordinary skill could derive the phospholipid range based on simple subtraction. According to the Court, it was “contrary to logic” to assume that lipid components could be increased or decreased in the corresponding amounts to maintain a total of 100%. The Court explained that the claimed particle should be considered as a whole rather than focusing on each component separately. That is because the lipid components are interdependent and had unpredictable interactions.This lipid interdependence was also key to the Federal Circuit’s rejection of Moderna’s argument that a skilled artisan could have obtained the claimed ranges through routine optimization using starting points disclosed in the prior art. The Court concluded that evidence of general considerations for each component was not enough to show obviousness, as Moderna failed to address the interdependence of the lipid components and how adjustments would affect the entire particle.

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Last Week in the Federal Circuit (November 29 - December 3): COVID-19 Vaccine Patents at the PTAB

Pleading and Preemption: Immunization Against Vaccine Products Liability Claims

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Last week the Federal Circuit was gearing up for its December argument sitting, but the Court still found time to issue several decisions. Below we provide our 

Last Week in the Federal Circuit (November 29 - December 3): COVID-19 Vaccine Patents at the PTAB

The week of Thanksgiving was a slower one for the Federal Circuit. But we still got an interesting written description decision with a divided panel. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 1Non-precedential opinions: 4Rule 36: 0Longest pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/20-2073.OPINION.11-24-2021_1870396.pdf">Indivior UK Limited v. Dr. Reddy's Laboratories S.A.</a>, No. 20-2073 (84 days)Shortest (non-Rule 36) pending case from argument: <a href="https://cafc.uscourts.gov/opinions-orders/21-1370.OPINION.11-24-2021_1870404.pdf">Brittex Financial, Inc. v. Dollar Financial Group, Inc.</a>, No. 21-1370 (22 days)Case of the week: <a href="https://cafc.uscourts.gov/opinions-orders/20-2073.OPINION.11-24-2021_1870396.pdf">Indivior UK Limited v. Dr. Reddy's Laboratories S.A.</a>, No. 20-2073.Panel: Judges Lourie, Linn, and Dyk, with Judge Lourie writing the opinion and Judge Linn concurring in part and dissenting in part.You should read this case if: you have a matter involving written description support.In this week’s case, the parties disputed whether patent claims had written description support in the originally filed patent application (so that the patentee could get the benefit of that application’s filing date). Appellant Indivior argued against the PTAB’s IPR holding that certain claims of its patent were unpatentable. Meanwhile, cross-appellant entities of Dr. Reddy’s Laboratories (collectively, “DRL”) argued against the PTAB’s holding that DRL failed to demonstrate the unpatentability of claim 8 of the same patent.The patent generally describes orally dissolvable films with therapeutic agents. The independent claim at issue recited a polymer range of 40% to 60%, while dependent claims recited a narrower range (48.2% to 58.6%) and a specific value (48.2%).The originally filed application (i) did not expressly claim the broader range, (ii) did not disclose the specific lower and upper bounds of 40% and 60% polymer, respectively, and, most importantly, (iii) did not disclose a range of 40% to 60% polymer. Furthermore, the application contained “conflicting statements,” including that the product may contain “any desired level of … polymer” and that one embodiment contains “at least 25%” polymer, which is well outside the broader claimed range.Indivior pointed to tables of exemplary formulations comprising multiple polymers which, collectively, totaled up to values which fell within the claimed range of 40-60%. The court noted that to arrive at these specific, particular values within the range, one must select several components, add up their individual values, determine the aggregate percentages, and then couple those aggregate percentages with other examples to create an otherwise unstated range. “[A] patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion.” Brenner v. Manson, 383 U.S. 519, 536 (1966). Rejecting Indivior’s view of the written description requirement, the Court admonished that it is not enough to offer an “invitation to go on a hunting expedition to patch together after the fact a synthetic definition of an invention.”Indivior did not walk away empty handed, however. It successfully defended the Board’s determination that the specific polymer value (48.2%) in claim 8, which was not ever explicitly claimed or disclosed in the original application, was supported by the exemplary formulations from which that value could “be derived.” The Court affirmed that determination “out of deference to the Board’s factfinding.”Judge Linn, concurring in part and dissenting in part, wrote that the case at hand was “factually indistinguishable” from that of Nalpropion Pharms., Inc. v. Actavis Labs. FL, Inc., 934 F.3d 1344 (Fed. Cir. 2019). There, the Court affirmed the district court’s determination that a claim reciting a range of 39%-70% had written description support based on tables in the specification showing discrete values of 39% and 67%. Judge Linn also argued, among other grounds for disagreement, that disclosure of discrete values should suffice to give written description support for a “closed range.”

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Last Week in the Federal Circuit (November 22-27): Written Description - Cobbling Together Numbers After the Fact

Last Week in the Federal Circuit (November 22-27): Written Description - Cobbling Together Numbers After the Fact

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The week of Thanksgiving was a slower one for the Federal Circuit. But we still got an interesting written description decision with a divided panel. Below we p