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

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

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Partner

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

Brian Matsui

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

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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-15936924{padding: 0 0 2350px;}</style></div>

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

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

Recently in the Federal Circuit: More on Indefiniteness in IPRs

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

Recently in the Federal Circuit: Broadening Claims in IPRs

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Nishi Tavernier, Morrison & Foerster associate, co-authored this post.We’re still waiting (and probably will be for a little while) for the first opinion from newly confirmed Judge Tiffany Cunningham. But in the meantime, we provide below our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 2Non-precedential opinions: 9Rule 36: 2Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1579.OPINION.9-14-2021_1833903.pdf">Atilano v. McDonough</a>, No. 20-1579 (161 days)Shortest (non-Rule 36) pending case from argument: Tie between <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/21-1001.OPINION.9-13-2021_1832971.pdf">Apple Inc. v. Firstface Co., Ltd.</a>, No. 21-1001 and <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-2347.OPINION.9-13-2021_1832944.pdf">Firstface Co., Ltd. v. Apple Inc.</a>, No. 20-2347 (13 days)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1793.OPINION.9-14-2021_1833974.pdf">Omega Patents, LLC v. CalAmp Corp.</a>, 20-1793, 20-1794Panel: Judges Dyk, Prost, and Hughes, with Judge Prost writing the opinion and Jude Hughes joining in part and dissenting in partYou should read this case if: you have a matter involving technical or damages expert testimony, or damages apportionmentOur latest case of the week continues the trend of recent decisions addressing district court control of expert testimony (see <a href="https://federalcircuitry.mofo.com/topics/Last-Week-in-the-Federal-Circuit-August-23-27-Supporting-Damages-Experts-Testimony.html">Last Week in the Federal Circuit (August 23-27): Supporting Damages Expert’s Testimony</a>). In the latest case, accused infringer CalAmp argued that the district court improperly permitted patent owner Omega’s technical expert to testify beyond the scope of his expert report, depriving CalAmp of adequate notice of his infringement theory and an opportunity to prepare its case in response. At trial, Omega’s technical expert testified about how the accused products practice an “enabling data” limitation. But according to CalAmp, the expert’s report never disclosed this testimony. The Federal Circuit rejected CalAmp’s appeal challenge. It explained that the expert report specifically pointed to the accused features that were the basis for his trial testimony. That “provided enough notice to CalAmp ‘to prepare its case adequately and to prevent surprise.’” The Federal Circuit highlighted that CalAmp had the opportunity to question Omega’s expert about the disclosure in deposition.The Federal Circuit similarly rejected CalAmp’s argument that Omega presented the jury with an improper infringement theory on another disputed limitation. The parties had agreed to the conditions under which a “device code” claim element was met and Omega presented the jury expert and deposition testimony about that limitation. But CalAmp argued Omega also presented an improper theory with other evidence and in closing arguments. The Federal Circuit held CalAmp waived that challenge because it never objected during the trial on this ground, nor did it ask for a limiting jury instruction. CalAmp was more successful, however, in challenging the district court’s refusal to permit CalAmp’s damages expert to rebut Omega’s expert testimony at trial. The district court had relied on law of the case to exclude the expert—it had prevented the expert from testifying at a first trial, and CalAmp had not directly appealed that ruling when it appealed other rulings to the Federal Circuit in a prior appeal. The Federal Circuit rejected that reasoning, because its mandate from the first appeal “explicitly instructed both parties ‘to achieve clarity by clearly presenting evidence in the retrial as to compensatory damages.’” That instruction “necessarily implied that the district court was ‘to consider damages consistent with the principles set forth in the opinion,’ including by reconsidering prior orders regarding evidence of damages.”Finally, the Federal Circuit ordered a new trial on damages for the additional reason that Omega’s damages theory failed to apportion damages based on the incremental value of the patented features. As a patent owner, Omega bore the burden of producing evidence to apportion damages between patented and unpatented features. The Court held that, although a patent owner may use a comparable license as a basis of determining an appropriate royalty, Omega “failed to adequately account for substantial ‘distinguishing facts’ between the proffered licenses and a hypothetical negotiation over a single-patent license.” The Federal Circuit thus vacated the jury’s damages award and remanded for a new trial.

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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Nishi Tavernier is an associate in the Intellectual Property Litigation Group in the firm’s New York office. She focuses her practice on patent litigation and other complex intellectual property dispu

Nishi Tavernier

Nishi A Tavernier

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Last Week in the Federal Circuit (September 13-17): More Forays Into Expert Testimony and Damages

Last Week in the Federal Circuit (September 13-17): More Forays Into Expert Testimony and Damages

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Nishi Tavernier, Morrison & Foerster associate, co-authored this post.
We’re still waiting (and probably will be for a little while) for the first opinion from 

Last Week in the Federal Circuit

The Federal Circuit issued just one precedential opinion the week of Labor Day (along with several non-precedential opinions and Rule 36 judgments). But it’s an interesting one, addressing the interplay between arbitration agreements and nonappealability of decisions to institute inter partes review. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest. Precedential opinions: 1Non-precedential opinions: 8Rule 36: 4Longest and shortest (non-Rule 36) pending case from argument: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1975.OPINION.9-9-2021_1831384.pdf">Team Worldwide Corporation v. Intex Recreation Corp.</a>, No. 20-1975 (94 days)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/21-146.ORDER.9-8-2021_1830622.pdf">In re: MaxPower Semiconductor, Inc.</a>, No. 2021-146Panel: Judges O’Malley, Reyna, and Chen, with Judge Reyna authoring the order and Judge O’Malley dissenting in partYou should read this case if: you have a matter involving an agreement to arbitrate disputes regarding the validity of a patent.In 2007, ROHM and MaxPower entered a technology license agreement that included an arbitration clause. In 2019 and 2020, a dispute arose regarding whether the agreement covered certain ROHM products. In September 2020, ROHM filed a complaint seeking a declaratory judgment of non-infringement of four MaxPower patents in the Northern District of California and also filed four petitions for inter partes review with the Patent Trial and Appeal Board. The district court dismissed the complaint and compelled ROHM to arbitrate, but the Board instituted review in all four proceedings.MaxPower filed interlocutory appeals seeking reversal of the institution decisions, and it also sought a writ of mandamus to compel the Board to terminate or stay the IPR proceedings pending a decision by an arbitrator about whether IPR proceedings were appropriate. MaxPower argued that 35 U.S.C. § 294(a) precluded an IPR because it states that an agreement requiring arbitration of validity disputes “shall be valid, irrevocable, and enforceable, except for any grounds that exist at law or in equity for revocation of a contract.”A divided Federal Circuit panel rejected MaxPower’s arguments. All three judges agreed that MaxPower’s interlocutory appeals were barred by 35 U.S.C. § 314(d), which states that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” The Court explained Section 314(d) deprived the Federal Circuit of jurisdiction to hear an appeal of a decision whether to institute IPR.On the question whether mandamus relief was appropriate, the judges disagreed. The majority denied the mandamus petition because “[t]he Board is not bound by the private contract between MaxPower and ROHM,” and 35 U.S.C. § 294 “does not by its terms task the [Board] with enforcing private arbitration agreements.” Mandamus relief would require a “clear and indisputable right” to immediate review of the Board’s institution decisions, but 35 U.S.C. § 314(d) prevents the Federal Circuit from reviewing such decisions. Furthermore, the majority explained, MaxPower’s rights would not be irretrievably lost because it could raise its arbitration-related arguments after the Board issues final written decisions.In dissent, Judge O'Malley took the opposite view. She noted the “liberal federal policy favoring arbitration agreements” and read Section 294 to give MaxPower a clear and indisputable legal right to enforcement of the arbitration agreement. Further, Judge O'Malley reasoned, the majority’s decision “denie[d] MaxPower the benefit of any agreement to arbitrate validity.” She criticized the “strange result” that a patent challenger may be allowed to raise invalidity arguments in an IPR that a district court would dismiss pursuant to an arbitration clause.It remains to be seen whether other Patent Trial and Appeal Board panels will consider arbitration agreements in deciding whether to institute review, but in this particular battle between the powers of administrative agencies and private arbitrators, the agency won.

Nature Simulation Systems Inc. v. Autodesk Inc. (Northern District of California)

Wagner Aeronautical, Inc. v. Dotzenroth et al. (Southern District of California)

McCartney v. Sony/ATV Music Publishing LLC, et al. (Southern District of New York)

Certain Toner Cartridges and Components Thereof (International Trade Commission, 337-TA-918)

Toshiba v. Imation, et al. (Western District of Wisconsin).

Certain Marine Sonar Imaging Devices, Products Containing the Same, and Components Thereof (International Trade Commission, 337-TA-898).

Oracle America, Inc. v. Google, Inc. (Northern District of California).

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Roman Swoopes is head of the litigation department for Morrison Foerster’s Palo Alto office. He focuses his practice on patent, copyright, and trade secret litigation and counseling. He represents clients in industries including computer software, hardware, and peripherals, data storage, digital imaging, consumer electronics, music, and graphic design.

Roman A. Swoopes

Roman Swoopes

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Last Week in the Federal Circuit (September 6-10): The (Un)Enforceability Of Arbitration Agreements At The PTAB

Last Week in the Federal Circuit (September 6-10): The (Un)Enforceability Of Arbitration Agreements At The PTAB

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The Federal Circuit issued just one precedential opinion the week of Labor Day (along with several non-precedential opinions and Rule 36 judgments). But it’s an

The Federal Circuit returned to a full week of in-person arguments last week.  But that didn’t keep it from issuing a range of decisions in patent and non-patent cases.  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:  8Non-precedential opinions:  5Rule 36:  10Longest pending case from argument:  <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2286.OPINION.9-1-2021_1827960.pdf">Lubby Holdings LLC v. Chung</a>, No. 19-2286 (484 days)Shortest pending case from argument (non-Rule 36):<a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-2229.OPINION.9-3-2021_1829263.pdf">Bristol-Myers Squibb Company v. Sigmapharm Laboratories</a>, No. 20-2229 (1 day)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1799.OPINION.9-1-2021_1828017.pdf">Belcher Pharmaceuticals, LLC v. Hospira, Inc.</a>, No. 20-1799Panel: Judges Reyna, Taranto, and Stoll, with Judge Reyna writing the opinionYou should read this case if: you have a matter involving allegations of inequitable conduct before the U.S. Patent & Trademark OfficeThis week’s case addresses a district court’s finding of inequitable conduct. Belcher submitted a New Drug Application for an injectable epinephrine formulation. In response to feedback from the FDA, Belcher raised the pH range in its manufacturing process to match the range used by another manufacturer for its already-approved epinephrine formulation.After submitting the drug application, Belcher filed a patent application covering its epinephrine formulation. The patent application explained that raising the processing pH range was “contradictory to one skilled in the art” and produced “unexpected” results. This argument won the day, with the examiner stating that the allegedly critical pH range led to allowance.Despite the examiner’s statements, Belcher’s Chief Science Officer later admitted that he knew prior art epinephrine formulations had the same pH range. In fact, Belcher’s drug application had referred to this range as “old” and had recognized that the prior art discussed the alleged unexpected result. Yet even though the officer was integrally involved in prosecuting the patent application, Belcher never disclosed this information to the Patent Office. The district court found that withholding this material information while arguing the criticality of the claimed pH range indicated a deceptive intent.The Federal Circuit affirmed the district court’s finding of inequitable conduct. The Court explained that withholding a material reference with the intent to deceive the Patent Office qualifies as inequitable conduct. Because Belcher did not dispute that its claims would have been obvious based on the withheld prior art, the Court held that the withheld art was “necessarily material to patentability.”The Court also affirmed the district court’s intent finding. Intent requires that the only reasonable inference that can be drawn is that the applicant (1) knew of the reference, (2) knew of its materiality, and (3) made a deliberate decision to withhold it from the USPTO. The Federal Circuit found no clear error in the district court’s findings on those issues. The district court had found that Belcher’s Chief Science Officer knew about the prior art epinephrine product and relied on this knowledge when dealing with the FDA, but then argued the criticality of the claimed pH range during patent prosecution. Given those findings, the Federal Circuit affirmed the district court’s conclusion that it was implausible the officer believed the undisclosed information to be irrelevant. <div style="position: absolute;left: -10000px;top: 0px;width: 1px;height: 1px;overflow-x: hidden;overflow-y: hidden;" id="_mcePaste">The Federal Circuit returned to a full week of in-person arguments last week.But that didn’t keep it from issuing a range of decisions in patent and non-patent cases.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:  8 Non-precedential opinions:  5 Rule 36:10 Longest pending case from argument:  <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2286.OPINION.9-1-2021_1827960.pdf">Lubby Holdings LLC v. Chung</a>, No. 19-2286 (484 days) Shortest pending case from argument (non-Rule 36):  <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-2229.OPINION.9-3-2021_1829263.pdf">Bristol-Myers Squibb Company v. Sigmapharm Laboratories</a>, No. 20-2229 (1 day)  Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1799.OPINION.9-1-2021_1828017.pdf">Belcher Pharmaceuticals, LLC v. Hospira, Inc.</a>, No. 20-1799 Panel: Judges Reyna, Taranto, and Stoll, with Judge Reyna writing the opinion You should read this case if: you have a matter involving allegations of inequitable conduct before the U.S. Patent & Trademark Office. This week’s case addresses a district court’s finding of inequitable conduct. Belcher submitted a New Drug Application for an injectable epinephrine formulation. In response to feedback from the FDA, Belcher raised the pH range in its manufacturing process to match the range used by another manufacturer for its already-approved epinephrine formulation. After submitting the drug application, Belcher filed a patent application covering its epinephrine formulation. The patent application explained that raising the processing pH range was “contradictory to one skilled in the art” and produced “unexpected” results. This argument won the day, with the examiner stating that the allegedly critical pH range led to allowance. Despite the examiner’s statements, Belcher’s Chief Science Officer later admitted that he knew prior art epinephrine formulations had the same pH range. In fact, Belcher’s drug application had referred to this range as “old” and had recognized that the prior art discussed the alleged unexpected result. Yet even though the officer was integrally involved in prosecuting the patent application, Belcher never disclosed this information to the Patent Office. The district court found that withholding this material information while arguing the criticality of the claimed pH range indicated a deceptive intent. The Federal Circuit affirmed the district court’s finding of inequitable conduct. The Court explained that withholding a material reference with the intent to deceive the Patent Office qualifies as inequitable conduct. Belcher did not challenge the district court’s finding that it withheld prior art that was “material to patentability.”  The Court thus focused on the intent requirement. Intent requires that the only reasonable inference that can be drawn is that the applicant (1) knew of the reference, (2) knew of its materiality, and (3) made a deliberate decision to withhold it from the USPTO. The Federal Circuit found no clear error in the district court’s findings on those issues. The district court had found that Belcher’s Chief Science Officer knew about the prior art epinephrine product and relied on this knowledge when dealing with the FDA, but then argued the criticality of the claimed pH range during patent prosecution. Given those findings, the Federal Circuit affirmed the district court’s conclusion that it was implausible the officer believed the undisclosed information to be irrelevant.</div>

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Of Counsel

Dr. Ethan M. Weiner is an associate in the firm’s Intellectual Property Group. His practice focuses on patent prosecution, IP due diligence, and patent portfolio management and counseling. Dr. Weiner 

Ethan M. Weiner Ph.D.

Ethan Weiner

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Last Week in the Federal Circuit (August 30-September 3): Candor at the Patent Office

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

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The Federal Circuit returned to a full week of in-person arguments last week.  But that didn’t keep it from issuing a range of decisions in patent and non-paten

Last Week in the Federal Circuit (August 30-September 3): Candor at the Patent Office

With Labor Day around the corner and summer coming to a close, the Federal Circuit had a busy week with a lot of precedential opinions to pick from. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions:  9Non-precedential opinions:  5Rule 36:  0Longest pending case from argument:  <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1413.OPINION.8-26-2021_1825247.pdf">MLC Intellectual Property LLC v. Micron Technology, Inc.</a>, No. 20-1413 (253 days)Shortest pending case from argument (non-Rule 36):  Tie between <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1758.OPINION.8-26-2021_1825257.pdf">Juno Therapeutics, Inc. v. Kite Pharma, Inc.</a>, No. 20-1758 and <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1647.OPINION.8-26-2021_1825204.pdf">Larson v. McDonough</a>, No. 20-1647 (51 days each)Case of the week: MLC Intellectual Property, LLC v. Micron Technology, Inc., No. 20-1413Panel: Judges Newman, Reyna, and Stoll, with Judge Stoll writing the opinionYou should read this case if: you have a matter involving exclusion of a damages expert’s testimonyOur case this week features the interplay of expert testimony and calculating damages with a sprinkling of the Federal Rules of Civil Procedure and Daubert. The case serves to remind us that even the most established experts—and the parties relying on their testimony—have to provide support for their assertions at the appropriate stage of litigation, lest their valued opinions be tossed aside as baseless, unsupported, and lacking value.MLC sued Micron for infringing a patent related to computer flash memory. During expert discovery, MLC’s damages expert submitted a report providing his understanding of the technology and of the state of the flash-memory market. The expert further attempted to reconstruct a hypothetical licensing negotiation between MLC and Micron. But Micron argued that the report opined on reasonable royalty rates after MLC had failed to produce key information directed to its damages theory when requested. It also argued that the report failed to provide a reasonable basis of fact or data explaining how the expert calculated the royalty rate.The district court granted Micron’s various motions seeking to preclude portions of the expert testimony under Rule 37 of the Federal Rules of Civil Procedure. But the district court certified its orders for interlocutory appeal under 28 U.S.C. § 1292(b), and the Federal Circuit granted MLC’s petition for permission to appeal.On appeal, the Federal Circuit held that the district court had not abused its discretion in prohibiting the expert from testifying about the reasonable royalty rate at trial. The royalty testimony was “not sufficiently tethered to the evidence presented” and “rest[ed] on an inference” that went beyond what the presented information implied. The Court also suggested the calculation should “rest[] on an accepted scientific theory or technique.”The Federal Circuit also found no abuse of discretion in the district court’s order striking portions of the expert report. Federal Rule of Civil Procedure 37 prohibits parties from relying on evidence that they failed to disclose adequately in response to interrogatories. Applying Ninth Circuit law, the Federal Circuit explained that district courts have “particularly wide latitude” in applying that rule. Although it found that the district court based its reasoning in part on a factual error, it saw no abuse of discretion in the district court’s conclusion that MLC had failed to disclose during fact discovery its claim that two previous licenses reflected a specific royalty rate and had failed to disclose extrinsic documents that its expert report later relied on. Those failures were enough to sustain the district court’s order to strike under the deferential standard of review. Finally, the Federal Circuit affirmed the district court’s grantof Micron’s Daubert motion to exclude MLC’s expert opinion on reasonable royalty for failure to apportion the patented parts from the non-patented parts of the invention. The Federal Circuit asserted that “[w]e have repeatedly held that when the accused technology does not make up the whole of the accused product, apportionment is required.”In a clean, one-two-three punch, the scope of MLC’s expert opinion was greatly limited because of what the district court found were untimely disclosures and unsubstantiated conclusions. Although the Federal Circuit’s opinion is lengthy, it is worth a read for its discussion of what district courts can require be disclosed during fact discovery and how those requirements relate to expert discovery.

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Last Week in the Federal Circuit (August 23-27): Supporting Damages Expert’s Testimony

Last Week in the Federal Circuit (August 23-27): Supporting Damages Expert’s Testimony

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With Labor Day around the corner and summer coming to a close, the Federal Circuit had a busy week with a lot of precedential opinions to pick from. Below we pr

It has been another steamy August week here in Washington and at the Federal Circuit, with eleven new opinions fresh off the press.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions:  5Non-precedential opinions:  6 Rule 36:  2 Longest pending case from argument:  Tie between <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-2322.OPINION.8-19-2021_1822008.pdf">Campbell Soup Company v. Gamon Plus, Inc.</a>, No. 20-2322 and <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-2344.OPINION.8-19-2021_1821952.pdf">Campbell Soup Company v. Gamon Plus, Inc.</a>, No. 20-2344 (73 days)Shortest pending case from argument (non-Rule 36):<a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1708.OPINION.8-18-2021_1821304.pdf">NuVasive, Inc. v. Hirshfeld</a>, No. 20-2321 (68 days)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1315.OPINION.8-17-2021_1820379.pdf">Valve Corporation v. Ironburg Inventions Ltd.</a>, No. 20-1315.Panel: Judges Newman, Lourie, and Dyk, with Judge Dyk writing the opinionYou should read this case if: you have a case involving the authentication of prior art from the internet.Have you heard of the Wayback Machine?  If not, this digital archive of the internet has been cataloguing webpages since 1996.  Have you wondered whether courts would consider archived pages retrieved from this service as authentic prior art?  This week, the Federal Circuit endorsed the practice of patent examiners who rely on the Wayback Machine as evidence of web article’s public availability.Ironburg sued Valve Corp. for patent infringement over the Valve’s “Steam Controller.”  Valve challenged Ironburg’s patents in two inter partes reviews.  In both reviews, Valve asserted as prior art a printout of an online magazine article reviewing an Xbox360 controller.  This so-called “Burns article” was published in 2010, three years before the priority date of the patents-in-suit.  Valve’s printout of the article, however, was dated after the priority date.  Despite Valve’s request that the Patent Trial and Appeal Board compare the printout with copies of the Burns article included in the prosecution histories of related Ironburg patents, the Board declined to consider Valve’s printout as prior art as it had not been authenticated.The Federal Circuit reversed and remanded, holding that the Board had “an obligation” to compare Valve’s printout to the Burns article included in the submitted prosecution histories.  The Court explained that “[a]uthentication through comparison is routine.”  Further, a comparison of Valve’s ten-page printout with the nine-page copy of the Burns article from the submitted prosecution histories is “not burdensome.”  Conducting the comparison itself, the Court concluded that these were “substantially the same.”  The only difference was the date, which did not bear on the subject matter of the disclosure.The Federal Circuit also rejected Ironburg’s argument that, in the alternative, the Burns article is not prior art because it was not “publicly accessible.”  The Federal Circuit found overwhelming evidence of public accessibility based on several factors:  (1) an inventor of the challenged patents had submitted a declaration during prosecution of related patents stating that he facilitated the publication of the Burns article for promotional purposes; (2) patent examiners confirmed during those related prosecutions that the Burns article was published by a date that was before the priority date of the challenged patents; (3) the applicants during those related prosecutions, including a named inventor on the challenged patents, did not dispute the status of the Burns article as prior art; and (4) a patent examiner had found the Burns article through an internet search.  Although the Board did not address this argument, the Federal Circuit held that “overwhelming evidence” in the record precludes the Board from finding that the Burns article is not prior art.The Federal Circuit specifically noted the evidence of availability based on the “Wayback Machine.”  The Court noted that, according to Patent Office practice, examiners may use the Wayback Machine “as a source of information to determine when a Web reference was first made available to the public.”  The Court also observed that several district courts—including the Northern and Central Districts of California and the Northern District of Florida—have similarly taken judicial notice of the contents of webpages retrieved from the Wayback Machine and relied on the accessibility dates given by the Wayback Machine.  The Federal Circuit endorsed this approach, which may open the door for more district courts to follow the same practice going forward.

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Nate Tan is a member of the firm’s Litigation  Group with a focus on intellectual property.
Nate earned his J.D. from  Harvard Law School, where he was awarded the Dean’s Scholar Prize in  Intellectua

Nate Tan

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Last Week in the Federal Circuit (August 16-20): Controlling for Authentication

Last Week in the Federal Circuit (August 16-20): Controlling for Authentication

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It has been another steamy August week here in Washington and at the Federal Circuit, with eleven new opinions fresh off the press.  Below we provide our usual 

Although things often slow down in Washington in the August heat and humidity, that wasn’t the case this past week for the Federal Circuit. All told, the Court issued 5 precedential opinions and ruled in 17 cases. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions:  5Non-precedential opinions:  9Rule 36: 3Longest pending case from argument:  Tie between <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1543.OPINION.8-12-2021_1818061.pdf">PersonalWeb Technologies LLC v. Google LLC,</a> No. 20-1543 and <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1566.OPINION.8-12-2021_1818056.pdf">In re PersonalWeb Technologies LLC</a>, No. 20-1566 (164 days)Shortest pending case from argument (non-Rule 36):<a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1237.OPINION.8-11-2021_1817421.pdf">Seabed Geosolutions (US) Inc. v. Magseis FF LLC</a>, No. 20-1237 (33 days)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1237.OPINION.8-11-2021_1817421.pdf">Seabed Geosolutions (US) Inc. v. Magseis FF LLC</a>, No. 2020-1237Panel: Chief Judge Moore and Judges Linn and Chen, with Chief Judge Moore writing the opinionYou should read this case if: you have a matter involving claim construction disputes about intrinsic and extrinsic evidenceWhen the Supreme Court first issued its opinion in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., many wondered whether the aftershocks of the decision might prompt the Federal Circuit to give more deference to claim constructions that relied on extrinsic evidence. But Teva has proven to be more of a minor tremor than a seismic shakeup in how the Federal Circuit treats appeals with claim construction disputes, particularly when the intrinsic evidence is clear. In our case of the week, the Federal Circuit reinforces the primacy of intrinsic over extrinsic evidence when construing claims.This week’s case involves patents directed to seismometers containing earth and seismic sensors called geophones. The claims require a “geophone internally fixed within [the] housing” and the dispute centered around what “fixed” means. As the Federal Circuit explained, the Board “found, based entirely on extrinsic evidence, that ‘fixed’ had a special meaning in the relevant art at the time of the invention:  ‘not gimbaled.’” Based on that evidence about outside-the-patent meaning, the Board concluded that that the claims' use of “fixed” meant the claims covered only a special type of non-gimbaled geophones.On appeal, the Federal Circuit disagreed. Even if “fixed” had some special meaning outside the patent, the Board erred because it improperly relied on extrinsic evidence in the face of contrary intrinsic evidence. The Federal Circuit concluded that the intrinsic evidence was clear that “fixed” should be given its plain and ordinary non-technical meaning, i.e, attached or fastened, and there was “no reason to resort to extrinsic evidence.”The Federal Circuit explained that all three sources of intrinsic evidence—the claims, the specification, and the prosecution history—supported its ordinary-meaning construction. First, the claims’ juxtaposition of “fixed” next to “within” indicated that “fixed” referred to the geophone’s position relative to the housing, not the type of geophone (e.g., gimbaled or non-gimbaled geophones).Second, the specification repeatedly touted the practical advantages of having the geophone mounted or located within the electronic compartments of the seismometer. The specification distinguished prior-art examples that used separate compartments for the geophone and electronics, which required external connecting cables that were expensive and difficult to handle and maintain in extreme geographic environments. Also, the specification disclosed that any conventional type of geophone could be used. It never specified whether any exemplary embodiment included a gimbaled or a non-gimbaled geophone, despite specifying whether other components were gimbaled (such as a gimbaled clock).Finally, the prosecution history was consistent with construing “fixed” to mean mounted or fastened rather than “not gimbaled.” As an initial matter, the Federal Circuit rejected Magseis’s contention that Seabed waived reliance on the prosecution history by failing to raise it before the Board. Even though Seabed’s appeal arguments based on the prosecution history were new, the Court held they were proper because the prosecution history was in the record and Seabed was arguing for the same claim scope on appeal as it had argued before the Board. And the Court concluded that that prosecution history supported Seabed’s construction. The applicant and examiner repeatedly discussed the term “fixed” in the context of how the geophone was oriented and where it was located relative to seismometer compartments rather than using “fixed” to mean the type of geophone—be it gimbaled or non-gimbaled. Thus, the Federal Circuit found that the prosecution history supported interpreting the claims according the common usage of the word fixed.

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Dr. Wesley Chen is an associate in the Litigation Department of Morrison & Foerster’s San Diego office.
Wesley received his J.D. from the University of Southern California, where he served as presiden

Wesley WL Chen

Wesley Chen

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Last Week in the Federal Circuit (August 9-13): The Dangers of Relying Solely on Extrinsic Evidence for Claim Construction

Last Week in the Federal Circuit (August 9-13): The Dangers of Relying Solely on Extrinsic Evidence for Claim Construction

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Once again, the Federal Circuit reiterates that the intrinsic record reigns supreme for claim construction

The Federal Circuit wrapped up another (perhaps final) week of telephone arguments last week. As of now, the Court is still set to restart in-person arguments next month. But we’ll have to see if those plans change. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 5Non-precedential opinions: 6Rule 36: 0Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1976.OPINION.8-5-2021_1814836.pdf">GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc.</a>, No. 18-1976 (163 days) (panel rehearing)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-2221.OPINION.8-4-2021_1814220.pdf">Shell Oil Company v. United States</a>, No. 20-2221 (54 days)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-2009.OPINION.8-3-2021_1813505.pdf">Andra Group, LP v. Victoria’s Secret Stores, L.L.C.,</a> No. 20-2009Panel: Judges Reyna, Mayer, and Hughes, with Judge Hughes writing the opinionYou should read this case if: you have a case with a venue challengeThis week’s case of the week explores yet again what it takes to show a regular and established place of business for venue purposes under 28 U.S.C. § 1400(b) (we’ve discussed venue multiple times in past cases, for example, <a href="https://federalcircuitry.mofo.com/topics/Last-Week-in-the-Federal-Circuit-November-2-6-.html">here</a>, <a href="https://federalcircuitry.mofo.com/topics/Last-Week-in-the-Federal-Circuit-June-28-July-2-What-Do-We-Do-with-a-Venue-Dodger.html">here</a>, and <a href="https://federalcircuitry.mofo.com/topics/last-week-in-the-federal-circuit-september-14-18-a-tale-of-two-mandamus-petitions.html">here</a>). In the latest case, a plaintiff sued several defendants related to the Victoria’s Secret brand in the Eastern District of Texas. It was undisputed that one defendant, Victoria’s Secret Stores, L.L.C., operated physical Victoria’s Secret stores in the District—like the Federal Circuit, we’ll call this defendant the Stores defendant. But none of the other defendants had their own physical stores in the District, defendants that included the entity that manages the victoriassecret.com website and mobile application, the entity that creates Victoria’s Secret branded apparel and products, and the corporate parent of these various Victoria’s Secret entities (like the Federal Circuit, we’ll call these the Non-Store defendants). Among other arguments, the plaintiff argued venue was still proper in the District for the Non-Store defendants because the Store defendant’s employees were agents of the Non-Store defendants. The Federal Circuit rejected that argument, agreeing with the district court that the plaintiff failed to prove its agent theory. The Court relied on general agency principles and its prior decision in In re Google to require three elements for a principal-agent relationship: (1) the principal has a right to direct or control the agent’s actions; (2) the principal manifests consent to have the agent act an on the principal’s behalf; and (3) the agent consents to act. The Court rejected the argument that documents from the corporate parent, such as a Code of Conduct for employees, sufficed to show direction and control over Store defendant’s employees. Testimony from a Store defendant manager explained that store managers hold employees accountable for following the Code of Conduct and make independent decisions about the hiring and firing of employees. Nor was the Court persuaded that Store defendant employees were agents because they accepted returns of items purchased through the mobile app or online. The Court compared that “one discrete task” to the installation and maintenance of servers in In re Google. Such a discrete task did not make Store defendant’s employees agents of the Non-Store defendants. In the end, plaintiffs failed to show “the Non-Store Defendants exercise the degree of control over Stores employees required to find an agency relationship.” That lack of principal-agent relationship ultimately led the Court to conclude the Non-Store defendants had no regular and established place of business in the District. Without such a place of business, plaintiffs could not show venue was proper in the District for those defendants.

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Last Week in the Federal Circuit (August 2-6): No Secret For Obtaining Venue

Last Week in the Federal Circuit (August 2-6): No Secret For Obtaining Venue

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The Federal Circuit wrapped up another (perhaps final) week of telephone arguments last week. As of now, the Court is still set to restart in-person arguments n

The Federal Circuit has its August sitting this week—its last before September’s scheduled return to in-person arguments. Before taking the virtual bench for the final time, the Court issued six opinions last week. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest. Precedential opinions: 3Non-precedential opinions: 3 Rule 36: 0Longest pending case from argument: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1600.OPINION.7-30-2021_1811957.pdf">Military-Veterans Advocacy v. Secretary of Veterans Affairs</a>, No. 19-1600 (296 days) Shortest pending case from argument (non-Rule 36): <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1911.OPINION.7-28-2021_1810901.pdf">Ortiz v. McDonough</a>, No. 20-1911 (51 days) Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1589.OPINION.7-27-2021_1810321.pdf">Qualcomm Inc. v. Intel Corp.</a>, No. 20-1589 Panel: Chief Judge Moore and Judges Reyna and Stoll, with Chief Judge Moore writing the opinion You should read this case if: you have an IPR in which the Board departed from the parties’ agreed claim construction What notice must the PTAB give before adopting a new claim construction not proposed by the parties? More than it did here, the Court held in our case of the week. The patent at issue concerns technology for processing multiple radio frequency signals simultaneously. Intel challenged Qualcomm’s patent in several IPRs, and both parties construed the claim term “a plurality of carrier aggregated transmit signals” to mean signals that increase user bandwidth. The Board’s final written decisions, however, construed that term without requiring that the signals increase bandwidth. The Board went on to hold the challenged claims obvious.The Federal Circuit vacated and remanded, holding that the Board “failed to provide Qualcomm adequate notice of and an opportunity respond to its sua sponte claim construction.” That failure, the Court held, violated the Administrative Procedure Act.Key to the Court’s analysis was that the Board departed from the parties’ agreed construction. In general, the Court explained, the Board “may adopt a claim construction of a disputed term that neither party proposes.” But here, the relevant point—whether the claimed signals must increase bandwidth—“was not in dispute.” The parties therefore could not have anticipated that this construction “was a moving target.”The Court rejected the notion that Qualcomm had adequate notice or an opportunity to respond at the oral hearing or by seeking rehearing. At the hearing, one judge had raised the increased-bandwidth requirement in questioning Intel. But the Court emphasized both the brevity and one-sidedness of that questioning: “The Board did not announce a construction, criticize the parties’ agreed-upon requirement, ask any follow-up questions to Intel, or ask any related questions to Qualcomm.” And even aside from the lack of notice, the hearing was an insufficient opportunity to respond because, for example, it gave Qualcomm no chance to submit evidence on the issue. The Court also held that Qualcomm was not required to seek rehearing before arguing on appeal that the Board denied it notice and an opportunity to respond.The case contains a few other points of interest. First, the Court held that the Board’s procedural error prejudiced Qualcomm, but it left open whether prejudice is required for this sort of procedural error. Second, Qualcomm had raised an Arthrex challenge but ultimately dropped it (<a target="_blank" href="https://federalcircuitry.mofo.com/topics/Arthrex-Looks-To-Be-Going-Out-With-A-Whimper---.html">a trend we recently discussed</a>). Finally, the last section of the Court’s opinion addressed another interesting issue, which we won’t get into in detail here. In brief, the Court declined to extend to electronic circuits a principle the Court had recognized for computers (namely, in a means-plus-function claim, the corresponding structure includes not just the computer but the computer programmed to carry out a disclosed algorithm for performing the function).

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Last Week in the Federal Circuit (July 26-30): Sua sponte claim construction

Last Week in the Federal Circuit (July 26-30): Sua sponte claim construction

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The Federal Circuit has its August sitting this week—its last before September’s scheduled return to in-person arguments. Before taking the virtual bench for th

Keniece Gray and Maryrose McLaughlin, Morrison & Foerster summer associates, co-authored this post.As expected, the Senate has voted to <a href="https://www.reuters.com/legal/legalindustry/senate-confirms-perkins-coies-tiffany-cunningham-federal-circuit-2021-07-19/">confirm</a> Tiffany Cunningham as the Federal Circuit’s newest judge. This makes history, giving the Federal Circuit its first ever Black judge and bringing the Court to <a href="https://federalcircuitry.mofo.com/topics/50-50-court" target="_self">gender parity</a> for the first time. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 2Non-precedential opinions: 6Rule 36: 8 Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1289.OPINION.7-22-2021_1808187.pdf">Chemours Company FC, LLC v. Daikin Industries, Ltd.</a>, No. 20-1289 (225 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/21-1168.OPINION.7-20-2021_1806494.pdf">In re: Kirilichin</a>, No. 21-1168 (14 days) Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1289.OPINION.7-22-2021_1808187.pdf">Chemours Company FC, LLC v. Daikin Industries, Ltd.</a>, No. 20-1289 Panel: Judges Newman, Dyk, and Reyna, with Judge Reyna writing for the majority and Judge Dyk concurring in part and dissenting in part You should read this case if: you have a matter involving objective indicia of nonobviousness (otherwise known as “secondary considerations”) In our case of the week, the Federal Circuit addressed objective indicia of nonobviousness, holding that the Board misapprehended three separate points of law.This week’s case is about a polymer that insulates communication cables. This polymer is unique because it can be extruded at high speeds without compromising on coating quality. Chemours Company owns two patents for this polymer, which Chemours sells commercially. Daikin Industries petitioned for inter partes review, challenging the claims as obvious. The Board agreed. In holding the claims obvious, the Board rejected Chemours’ attempt to show objective indicia of nonobviousness. Chemours asserted that its patented invention had commercial success. But the Board found an “insufficient nexus” between the claimed invention and its commercial success, faulted Chemours for failing to provide market share data, and discounted commercial success because Chemours’ patents were blocking patents. On appeal, the Federal Circuit identified three legal errors in that analysis. First, the Court rejected the Board’s nexus analysis. The Board had found no nexus between the claims and the product’s commercial success because the product’s key properties all appeared in the prior art. But those features appeared in separate prior art references, while the claimed invention combined them. The Federal Circuit agreed with Chemours that the Board improperly considered nonobviousness of individual elements rather than the invention as a whole. The Court held that in these circumstances—“where the invention is a unique combination of three interdependent properties”—“the separate disclosure of individual limitations” in the prior art “does not negate a nexus.” Second, the Court held that sales data alone could be enough to show commercial success. The Board had held that Chemours’ gross sales figures were inadequate absent market share data. But the Federal Circuit held that “market share data, though potentially useful, is not required.”Finally, the Court reversed the Board’s reliance on the blocking patents doctrine. The Board had reasoned that Chemours’ patent was a blocking patent, meaning it blocked later inventions from entering the market. Typically, when a blocking patent discourages later inventions from competing, courts hold that commercial success is a weaker indicator of nonobviousness, because the success could be attributable to the absence of competitors rather than to nonobviousness. The Board applied that doctrine here, determining that the existence of Chemours’ patent “would have precluded others from freely entering the market.” But the Court held that the Board incorrectly used the blocking patent doctrine. The Court held that “the challenged patent, which covers the claimed invention at issue, cannot act as a blocking patent,” and therefore the doctrine was inapplicable.For those reasons, the Court held the Board erred in its consideration of objective indicia of nonobviousness. The panel separately held—in a portion of its opinion that drew a dissent from Judge Dyk—that the Board’s obviousness analysis was unsupported by substantial evidence. Thus, the Court reversed the Board’s determination that Chemours’ claims was unpatentable as obvious.

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Last Week in the Federal Circuit (July 19-23): Considering Secondary Considerations

Last Week in the Federal Circuit (July 19-23): Considering Secondary Considerations

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Keniece Gray and Maryrose McLaughlin, Morrison & Foerster summer associates, co-authored this post.
As expected, the Senate has voted to confirm Tiffany Cunning

Keniece Gray, Morrison & Foerster summer associate, co-authored this post. We could have a new Federal Circuit judge today (achieving <a href="https://federalcircuitry.mofo.com/topics/50-50-court" target="_self">gender parity</a> on the Court). Last week, the Senate invoked cloture (by a 63-34 vote) on the nomination of Tiffany Cunningham to replace Judge Wallach, and the Senate is expected to vote on her confirmation this afternoon.The current members of the Court were busy last week too, issuing a whopping 17 opinions. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions: 6Non-precedential opinions: 11Rule 36: 2Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1718.OPINION.7-13-2021_1803269.pdf">Level Sleep LLC v. Sleep Number Corp.</a>, No. 20-1718 (189 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1897.OPINION.7-14-2021_1803996.pdf">Nite Glow Industries Inc. v. Central Garden & Pet Co.</a>, No. 20-1897 (34 days)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-2320.OPINION.7-14-2021_1804016.pdf">Sensormatic Electronics, LLC v. Wyze Labs, Inc.</a>, No. 20-2320Panel: Judges Newman, Lourie, and Dyk, with Judge Lourie writing the opinionYou should read this case if: you have a matter involving patent eligibility under AliceAbstract idea or patent-eligible subject matter? The Court took on that question (again) last week.In our case of the week, a company that helps retailers prevent theft, Sensormatic Electronics, LLC, asserted patent claims against home surveillance developer Wyze Labs, Inc. The patents at issue describe a surveillance system using wireless input devices. Wyze argued that the patent claims ineligible subject matter under § 101.Per Alice, patent eligibility first requires determination of whether the claims are directed to a law of nature, natural phenomenon, or an abstract idea. If so, the next step is to determine whether claims include an “inventive concept” that does more than recite an ineligible idea “while adding the words ‘apply it.’” The Federal Circuit emphasized here that the substance behind the claims—not whether they are drafted as machine or system claims—determines whether the claims are non-abstract.The district court held Sensormatic’s patent claims ineligible, and the Federal Circuit affirmed. The Federal Circuit concluded that the subject matter of Sensormatic’s asserted patents were ineligible for protection as “none of the claim limitations take the claims beyond those of abstract ideas” and the claims do not recite an inventive concept sufficient to transform them into patent-eligible subject matter.At Alice step one, Sensormatic argued its claims are directed to three nonabstract improvements to currently available surveillance technologies: (1) a configuration of surveillance sensors, (2) “dual encoding” of input data, and (3) detection of surveillance “trigger events” to prioritize input data. But the Court held that all of these are abstract ideas. It explained: (1) Sensormatic identified no particular non-abstract configuration, (2) the concept of decoding is abstract, and (3) prioritizing input data by detecting trigger events is merely an aspect of the abstract ideas of remote surveillance and image classification and organization. At step two, Sensormatic argued that the claims apply a particular configuration of wireless input devices “that was unconventional and improved surveillance technology.” But the Court held that Sensormatic failed to set forth any particular physical configuration beyond the conventional application of generic devices.Sensormatic also challenged the district court’s choice of a representative claim. But the Federal Circuit held that Sensormatic failed to identify any claim limitations that the district court failed to consider. The Court’s determination of patent ineligibility thus defeated all of Sensormatic’s asserted claims.

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Last Week in the Federal Circuit (July 12-16): Under Alice, Another Patent Bites The Dust

Last Week in the Federal Circuit (July 12-16): Under Alice, Another Patent Bites The Dust

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Keniece Gray, Morrison & Foerster summer associate, co-authored this post. 
We could have a new Federal Circuit judge today (achieving gender parity on the Cour