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

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

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Partner

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

Brian Matsui

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

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

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

Seth Lloyd

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

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

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

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Recently in the Federal Circuit: More on Indefiniteness in IPRs

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Recently in the Federal Circuit: Broadening Claims in IPRs

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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/opinions-orders/20-1718.opinion.7-13-2021_1803269.pdf" target="_blank">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/opinions-orders/20-1897.opinion.7-14-2021_1803996.pdf" target="_blank">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/opinions-orders/20-2320.opinion.7-14-2021_1804016.pdf" target="_blank">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

Last Week in the Federal Circuit

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: 1 Non-precedential opinions: 4Rule 36: 3 Longest and shortest (non-Rule 36) pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1637.opinion.7-8-2021_1801204.pdf" target="_blank">Rudisill v. McDonough</a>, No. 20-1637 (211 days) Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1837.opinion.6-28-2021_1796547.pdf" target="_blank">TVnGO Ltd. (BVI) v. LG Electronics, Inc.</a>, No. 20-1837Panel: Judges Prost, Schall, and Reyna, with Judge Prost writing the opinionYou should read this case if: you have a matter involving indefiniteness, particularly as it relates to claim construction Do you know what the phrases “overlay activation criterion” and “overlay activation signal” mean? If not, you’re not alone. This week’s case-of-the-week involves a look at how federal courts treat disputed claim terms that are not defined in a patent and do not have an ordinary and customary meaning. TVnGO owns a family of patents related to a system for merging broadcast TV signals with internet signals, which a user can control at home. For instance, picture a TV broadcasting the Olympics with smaller icons on the sides of the screen directing you to internet-based content such as Netflix or Spotify. TVnGO alleged that LGE’s “Smart TVs” infringe their asserted patents. The district court issued a claim construction opinion concluding that two of the phrases in the asserted claims are indefinite, thereby rendering the asserted claims invalid. Those two phrases, as you may have guessed, are “overlay activation criterion” and “overlay activation signal.” On appeal, the Federal Circuit reviewed the district court’s conclusion of indefiniteness de novo. The Court looked for intrinsic evidence about what the phrases meant, for ordinary meaning in the art, and for consistencies, or inconsistencies, in how these phrases, or words within the phrases, are used in the patents.In reading the claims, it was evident that these phrases relate generally to producing “overlays” of broadcast TV with internet content, but there was uncertainty regarding their precise meaning. The parties agreed that neither of these phrases has an ordinary meaning in the art. But TVnGO argued that meaning could be gleaned from splicing together the meaning of each individual word in these phrases. The Federal Circuit rejected this argument. The intrinsic patent record was also not helpful to TVnGO since neither of these phrases was even mentioned, let alone defined, in the specification. Rather, they were merely added to the claims during prosecution without clear meaning behind them. As the Court continued its search for reasonable certainty in the meaning of these phrases, the meaning of these terms became even less clear.The Federal Circuit pointed to intra-patent inconsistency between the specification and the claims when describing the result of each phrase. These inconsistencies were identified, in part, by looking at the patent’s use of “activates” or “activating.” The Court found that the use of these words in the specification pointed to one result (display of internet content associated with a pre-existing overlay) while the claims pointed to a different result (display of an overlay in the first place), thereby instilling doubt as to which is the “correct” result.The Federal Circuit then pointed to a second type of intra-patent inconsistency—an inconsistency within the claims themselves—for one of the phrases. Specifically, the independent claims indicated that an “overlap activation criterion” is provided over the internet to the user’s premises, while the dependent claims indicated that an “overlap activation criterion” can originate from the user’s premises through the remote control. The Court concluded that a person of ordinary skill in the art would lack reasonable certainty about whether the source of an “overlap activation criterion” is the internet or the user’s premises.As you might expect, the Federal Circuit affirmed the district court’s conclusion of indefiniteness because of a lack of reasonable certainty for what these phrases mean. Not only did the specification lack any definition, but there also was no ordinary meaning associated with these phrases, and further digging into the patents only caused more confusion due to intra-patent inconsistencies.

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Associate

Dr. Jeff Schmidt is a member of the firm’s Patent Group. His practice focuses on patent prosecution in the areas of life sciences, biotechnology, and pharmaceuticals, which includes the preparation an

Jeffrey W. Schmidt Ph.D.

Jeffrey Schmidt

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Last Week in the Federal Circuit (July 5-9): What Happens When the Federal Circuit Looks to Define the Undefined

Last Week in the Federal Circuit (July 5-9): What Happens When the Federal Circuit Looks to Define the Undefined

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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 o

Myles Douglas Young, Morrison & Foerster summer associate, co-authored this post.The Federal Circuit sits for oral arguments this week. Despite juggling argument preparation and the July 4 holiday weekend, the Court still managed to release several decisions last week. One was a precedential order granting mandamus to order a change of venue (a subject our blog has covered <a href="https://federalcircuitry.mofo.com/topics/last-week-in-the-federal-circuit-september-14-18-a-tale-of-two-mandamus-petitions.html">before</a>). 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: 5Rule 36: 0Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1775.opinion.6-29-2021_1797169.pdf" target="_blank">Corus Realty Holdings, Inc. v. Zillow Group, Inc.</a>, No. 20-1775 (391 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/20-2313.opinion.6-30-2021_1797837.pdf" target="_blank">GateArm Technologies, Inc. v. Access Masters, LLC</a>, No. 20-2313 (23 days) Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/21-139.order.6-30-2021_1797987.pdf" target="_blank">In Re Samsung Electronics Co., LTD., Samsung Electronics America, Inc., LG Electronics Inc., LG Electronics USA, Inc.</a>, No. 21-139. Panel: Judges Lourie, Dyk, and Reyna, with Judge Dyk writing the opinion You should read this case if: You have a matter involving a request for change of venue, especially if alleged attempts to manipulate venue are at issue. The plaintiffs in this week’s case tried to ensure that Texas was the only possible venue for their patent infringement suits. The Federal Circuit was unimpressed. Refusing to be “bound by a plaintiff’s efforts to manipulate venue,” the Court looked past the plaintiffs’ patent assignment agreements and the legal separation between corporate entities to hold that the suits must be transferred to California. The case concerns petitions for writs of mandamus related to patent infringement suits against Samsung and LG, directed at functionality in third-party applications that run on Samsung and LG devices. Both suits were brought by Ikorongo Technology (“Ikorongo Tech”) and Ikorongo Technology Texas (“Ikorongo Texas”) in the Western District of Texas. The relationship between Ikorongo Tech and Ikorongo Texas was, in the Federal Circuit’s eyes, an effort to manipulate venue. Although the two are legally separate entities, the Court saw them as related. The same five people own both companies, and Ikorongo Texas was created shortly before the filing of these suits. Ten days prior to filing its initial complaints, Ikorongo Tech assigned to Ikorongo Texas the exclusive rights to sue for infringement for the patents at issue within specified parts of Texas, including the Western District of Texas. According to the Ikorongo companies, this meant that venue could lie only in Texas, the only place where one of the plaintiffs—Ikorongo Texas—had relevant patent rights. Samsung and LG both moved under 28 U.S.C. § 1404(a) to transfer the suits to the Northern District of California, asserting that 60% of the accused third-party applications were developed by parties in that district, that the majority of potential witnesses resided in that district, and that no potential witness resided in the Western District of Texas. The district court denied the motion, finding that Samsung and LG had failed to establish the threshold requirement under § 1404(a): that the suit “might have been brought” in the transferee district. The court reasoned that Ikorongo Texas’ claims would not be subject to venue in the Northern District of California, so venue over the entirety of the actions was improper under §1404(a). In the alternative, the district court also held that under the next stage of the transfer analysis—a weighing of traditional public and private interest factors—a transfer was unwarranted.The Federal Circuit disagreed on all counts and granted mandamus relief. The Court held that it would not allow the Ikorongo companies to escape a venue transfer by way of “manipulative activities”—namely, the use of what amounted to a shell corporation to assure venue in the Western District of Texas. The Court observed that efforts to manipulate jurisdiction (rather than venue) are barred by statute, and that past cases had rejected venue manipulation under the public/private interest analysis. The panel extended that principle to § 1404(a)’s threshold requirement that the suit “might have been brought” in the transferee district. The Court ruled that § 1404(a) does not allow for defeat of a motion for change of venue deriving from “deliberate conduct of a party” favoring one venue over another. As a result, the Federal Circuit disregarded the limited claims by Ikorongo Texas and considered only the nationwide claims asserted by Ikorongo Tech (which could have been brought in the Northern District of California) in determining the appropriate venue.The Court also concluded that the district court abused its discretion in assessing the public/private interest factors. The Court determined that the district court had given too little weight to the fact that nearly all potential witnesses were located in the Northern California. Furthermore, the Federal Circuit rebuked the district court’s assertion that local interests in a patent case are generally a “fiction.” The Court held instead that “[l]ocal interests are not a fiction, and the record here shows a substantial local interest,” since the events leading to the infringement claims took place mostly in Northern California, and not Texas. Finally, the panel found that the district court overstated concerns about judicial economy. While Ikorongo Texas had pointed to a related suit filed in Texas, the Federal Circuit held that the cases overlapped only slightly, and that the asserted expediency of the Texas district courts in resolving these cases had no “particular significance in these cases.” Based on these considerations, the Circuit granted Samsung's and LG’s petitions for writs of mandamus and ordered the district court to transfer the case to the Northern District of California.

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Last Week in the Federal Circuit (June 28-July 2): What Do We Do with a Venue Dodger?

Last Week in the Federal Circuit (June 28-July 2): What Do We Do with a Venue Dodger?

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Myles Douglas Young, Morrison & Foerster summer associate, co-authored this post.
The Federal Circuit sits for oral arguments this week. Despite juggling argume

Maryrose McLaughlin, Morrison & Foerster summer associate, co-authored this post.The Federal Circuit announced last week that it will resume in-person oral arguments later this summer. The Court’s new protocols generally take effect with the September 2021 sitting, and we noticed that the Court has also scheduled some in-person arguments in July.That was the big news from the Federal Circuit last week; on the opinion front, the Court had a quieter week, with no precedential decisions. (The Supreme Court made up for that with a major patent <a target="_blank" href="https://federalcircuitry.mofo.com/topics/Supreme-Court-Preserves-Again-Inter-Partes-Review-Despite-Finding-Constitutional-Violation.html">decision</a> of its own.) But among the Federal Circuit’s decisions was an interesting opinion about claim construction and prosecution history. 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: 0Non-precedential opinions: 4Rule 36: 3Longest pending case from argument: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1144.OPINION.6-21-2021_1792989.pdf">Intex Recreation Corp. v. Team Worldwide Corporation</a>, No. 20-1144 (193 days)Shortest pending case from argument (non-Rule 36): <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1438.OPINION.6-23-2021_1794560.pdf">Apple Inc. v. Corephotonics, Ltd.</a>, No. 20-1438 (14 days)Case of the week: <a target="_blank" href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1144.OPINION.6-21-2021_1792989.pdf">Intex Recreation Corp. v. Team Worldwide Corporation</a>, No. 20-1144Panel: Judges Newman and Reyna (Judge Stoll was on the panel but did not participate in deciding the case)You should read this case if: You have a matter involving disavowal of claim scope during prosecution.This week’s case is about a patent for an air mattress. Team Worldwide Corp. owns a patent claiming “an inflatable body” with a recessed electric pump. Intex Recreation Corp. filed a petition for inter partes review, asserting obviousness and anticipation challenges. One piece of prior art Intex invoked was a patent for a hovering pillow. The pillow hovers by taking in air from a fan, then expelling it through holes on the bottom of the pillow.Whether the hovering pillow rendered the Team Worldwide’s claims unpatentable turned on the claim construction of the term “inflatable body.” Team Worldwide construed an “inflatable body” to mean “a substantially airtight structure that expands when filled with air or other gases.” Although the claim text and patent description were inconclusive, Team Worldwide used the prosecution history to support limiting the claims to a “substantially airtight” body.During prosecution, the examiner initially found another patent, “Sexton,” rendered some of the applicant’s claims unpatentable. The applicant distinguished its claims from Sexton by arguing Sexton lacked an inflatable body that was substantially airtight. The applicant said, “[F]or the combined structure to be an inflatable body, it must itself meet the criterion of an inflatable body, i.e., the combined structure taken as a whole must be substantially airtight and expand when filled with air or other gas.” Consequently, the examiner agreed the claims were patentable over Sexton.Based on that prosecution history, the Board agreed with Team Worldwide’s narrower construction limiting “inflatable body” to one that is “substantially airtight.” As a result, the Board found the claims patentable over the hovering-pillow patent.The Federal Circuit affirmed those determinations. On claim construction, the Court explained that precedent supports limiting a claim when statements during prosecution clearly and unmistakably disavow claim scope. Additionally, in certain contexts, the use of “i.e.,” can limit the claim scope when it defines a claim term. Here, the applicant used “i.e.,” immediately after the term “inflatable body,” to set forth “the criterion of” the term to the examiner during prosecution.These circumstances, the Federal Circuit concluded, were sufficient to limit the claims to an “inflatable body” that was “substantially airtight.” The Court held the applicant’s statements to the examiner disclaimed a different meaning. And based on that claim construction, the Court agreed with the Board that Team Worldwide’s claims were patentable over the hovering-pillow patent.The Court went on to vacate other aspects of the Board’s decision on different grounds, leading it to ultimately remand the case for further proceedings.

Last Week in the Federal Circuit (June 21–25): How Airtight Does an Air Mattress Have to Be?

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Maryrose McLaughlin is an associate in the Litigation Department of Morrison Foerster’s Washington, D.C. office.

Maryrose Fahy McLaughlin

Maryrose McLaughlin

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Last Week in the Federal Circuit (June 21–25): How Airtight Does an Air Mattress Have to Be?

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Maryrose McLaughlin, Morrison & Foerster summer associate, co-authored this post.
The Federal Circuit announced last week that it will resume in-person oral arg

If <a href="/topics/Last-Week-in-the-Federal-Circuit-June-14-Prosecution-Disclaimer--Whats-Good-for-the-Goose-.html" target="_blank">last week’s</a> post on prosecution disclaimer left you hoping for more decisions about the patent application process, you're in luck. This week we're covering another case about patent prosecution and the somewhat rare doctrine of prosecution laches. Below we provide our usualy weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.Precedential opinions:  7Non-precedential opinions: 5Rule 36: 3Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1086.opinion.6-10-2021_1788770.pdf" target="_blank">Anania v. McDonough</a>, No. 20-1086 (185 days)Shortest pending case from argument (non-Rule 36):  <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1839.opinion.6-9-2021_1788218.pdf" target="_blank">Cameron v. McDonough</a>, No. 20-1839 (33 days)Case of the week:<a href="http://www.cafc.uscourts.gov/opinions-orders/18-2390.opinion.6-1-2021_1784662.pdf" target="_blank">Hyatt v. Hirshfeld</a>, Nos. 2018-2390, -2391, -2392, 2019-1038, -1039, -1049, -1070 (June 1, 2021)Panel:  Judges Reyna, Wallach, and Hughes, with Judge Reyna writing the opinionYou should read this case if:  you are a patent prosecutor or are curious about the latest chapter in a long-running dispute between the Patent Office and a serial patent applicantOur case this week features independent inventor, Gilbert Hyatt, who filed an astonishing 381 patent applications during the “GATT Bubble” before the PTO’s June 8, 1995 transition from patent terms of 17 years from issuance to 20 years from filing. The applications largely relate to microchip and integrated circuit technology and are continuations of applications that date back to the 1970s and ’80s. Most are still pending. Any patents that issue will remain valid for 17 years from issuance, even though the original applications are decades old. The PTO calculated that processing Hyatt’s applications would require “532 years of examiner time,” or the equivalent of about “40,000 typical applications.”After the PTO rejected four Hyatt applications, Hyatt filed suit under 35 U.S.C. § 145, which allows applicants to seek a court order requiring the PTO to issue the patents. The PTO moved to dismiss based on prosecution laches, a defense the PTO had never before asserted in a district court case on pending applications. According to the PTO, Hyatt engaged in a pattern of delay during prosecution, filing overly long and complex applications, and repeatedly amending claims to shift their scope and create duplications. The district court sided with Hyatt, however, finding that substantial blame for the delay rested with the PTO and that prosecution laches did not bar issuance of the applications. The court ultimately ordered the PTO to issue many of Hyatt’s claims.On appeal, the Federal Circuit reached several important holdings about prosecution laches. As a preliminary matter, it held that prosecution laches can be a defense in a Section 145 action. And it held that the defense was available even if the Patent Office never rejected the claims for laches during examination.The Court explained that prosecution laches can “‘render a patent unenforceable when it has issued only after an unreasonable and unexplained delay in prosecution that constitutes an egregious misuse of the statutory patent system under a totality of the circumstances.’”  The Court held that the district court had failed to assess the totality of the circumstances in deciding whether that standard was met. For example, the district court should have considered evidence tending to show Hyatt’s “pattern of conduct across an enormous body of similar applications” beyond the four at issue. The Federal Circuit also found that the district court overemphasized alleged PTO delays and underemphasized Hyatt’s behavior in prosecution:It is not the case that an applicant may prosecute his patents however he or she wishes within the statute and PTO regulation, because the doctrine of prosecution laches places an additional, equitable restriction on patent prosecution conduct beyond those imposed by statute or PTO regulation. An applicant must therefore not only comply with the statutory requirements and PTO regulations but must also prosecute its applications in an equitable way that avoids unreasonable, unexplained delay that prejudices others.Further, the PTO’s conduct may be considered in the totality of circumstances, but its delay “cannot excuse the applicant’s own delay” in prosecution.The Federal Circuit also refined the standard for applying prosecution laches in a Section 145 action: it determined that, like in infringement actions, the PTO has an obligation to show prejudice in order for prosecution laches to apply. The Federal Circuit further concluded, however, that prejudice is presumptively met by a prosecution delay of six years or more. And finally, the Federal Circuit held that “clear abuse of the PTO’s patent examination system” constitutes prejudice. “Clear abuse” occurs when the applicant “unduly increases the administrative burden on the PTO.”Given these conclusions, the Federal Circuit determined that the PTO sufficiently met its initial burden with respect to prosecution laches. The burden thus shifted to Hyatt to prove that he did not, in fact, engage in unreasonable or unexplainable delay. The Court remanded for the district court to consider evidence and decide that issue in the first instance.

Last Week in the Federal Circuit (June 7-11):  Prosecution Laches—Following the Letter of the Law May Not Always Be Enough

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Last Week in the Federal Circuit (June 7-11): Prosecution Laches—Following the Letter of the Law May Not Always Be Enough

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If last week’s post on prosecution disclaimer left you hoping for more decisions about the patent application process, you're in luck. This week we're covering 

Although last week saw just four Federal Circuit opinions, they were all precedential ones and covered a range of interesting issues. 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: 4Non-precedential opinions: 0 Rule 36: 0Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/18-2390.opinion.6-1-2021_1784662.pdf" target="_blank">Hyatt v. Hirshfeld</a>, No. 18-2390 (481 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/20-2067.opinion.6-3-2021_1785911.pdf" target="_blank">Lynch v. McDonough</a>, No. 20-2067 (56 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1573.opinion.6-3-2021_1785939.pdf" target="_blank">SpeedTrack, Inc. v. Amazon.com, Inc.</a>, Nos. 2020-1573 & 2020-1660Panel: Judges Prost, Bryson, and Reyna, with Judge Prost writing the opinion.You should read this case if: you have a matter involving claim construction after an alleged prosecution disclaimer.If you’re wondering what disavowal of claim scope by prosecution disclaimer looks like, keep reading. The primary claim at issue relates to a computer filing system (think virtual folders) and recites, “the category descriptions hav[e] no predefined hierarchical relationship with such list or each other” (emphasis added). SpeedTrack sued retail website operators for infringement. Thereafter and relying on prosecution disclaimers made by SpeedTrack, the district court construed “hierarchical relationship” to mean that category descriptions are ranked into levels of subordination based on predefined, hierarchical field-and-value relationships. In other words, “French” would be a value (i.e., a subordinate) of the field of “language.” Based on that construction, the district court found that using computer filing systems with defined field-and-value relationships does not infringe. On appeal, the Federal Circuit acknowledged that its only job was to determine whether the district court’s claim construction was correct. If so, no infringement. Reviewing the prosecution history, the Court found that SpeedTrack added the “hierarchical” limitation as an amendment during prosecution to overcome prior art. In attempting to distinguish itself from the prior art during prosecution, SpeedTrack explained that its invention is “essentially ‘fieldless’” and “‘free-form,’” whereas the prior art taught a hierarchical system based on user-defined, field-and-value relationships. Perhaps sealing its fate, SpeedTrack noted that the “hierarchical” limitation was added to capture the difference between its claimed system and that of the prior art. On appeal, SpeedTrack argued that it distinguished the prior art on other additional grounds, but the Court didn’t bite. Precedent dictated that distinguishing prior art on particular grounds can serve as a disclaimer of claim scope, even if the applicant also distinguishes the prior art on additional grounds. SpeedTrack also made arguments during litigation to distinguish the prior art for reasons similar to its prosecution statements.  SpeedTrack argued on appeal that the Court shouldn’t consider those litigation statements because they were not part of the intrinsic patent record and so cannot demonstrate prosecution disclaimer. It’s unclear what weight the Court ultimately gave to the litigation statements. While the Court admitted it’s “[t]rue enough” that the statements were not made during prosecution, the Court still noted that the statements provided further reason why SpeedTrack’s appeal arguments failed.In the end, the Court reminded litigants that the doctrine of prosecution disclaimer is rooted in equitable concerns: claims shouldn’t be construed one way to achieve allowance and another way to determine infringement.

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Last Week in the Federal Circuit (June 1–4): Prosecution Disclaimer – What’s Good for the Goose …

Last Week in the Federal Circuit (June 1–4): Prosecution Disclaimer – What’s Good for the Goose …

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Although last week saw just four Federal Circuit opinions, they were all precedential ones and covered a range of interesting issues. Below we provide our usual

We hope our readers had a restful Memorial Day Weekend. Even DC’s <a href="https://www.washingtonpost.com/weather/2021/05/29/cold-weather-cicadas/">cicadas</a> took the weekend off. Before the long weekend, the Federal Circuit left us with 3 precedential opinions, including one addressing what qualifies as prior art. 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: 3 Non-precedential opinions: 4 Rule 36: 0 Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1203.opinion.5-26-2021_1783046.pdf" target="_blank">Edgewell Personal Care Brands v. Munchkin, Inc.</a>, No. 20-1203 (202 days) (opinion modified following grant of rehearing petition) Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1283.opinion.5-28-2021_1784022.pdf" target="_blank">SPEX Techs., Inc. v. Western Digital Corp.</a>, No. 20-1283 (25 days) Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1937.opinion.5-28-2021_1784040.pdf" target="_blank">Becton, Dickinson and Company v. Baxter Corporation Englewood</a>, No. 20-1937Panel: Judges Prost, Clevenger, and Dyk, with Judge Dyk writing the opinionYou should read this case if: you have a prior art patent that was cancelled in inter partes review In our case of the week, a patent challenger challenged patent claims as obvious in light of a prior patent. But that prior patent was itself cancelled in an inter partes review. Does that patent remain prior art for purposes of the obviousness analysis? Baxter, the patent owner in this case, argued “no.” In Baxter’s view, an inter partes review is a second look at the patent grant, so when the inter partes review results in cancellation, it’s as if the patent was never granted in the first place. Here, the prior patent was cancelled in an inter partes review before Becton, Dickinson and Company filed its petition challenging Baxter’s patent. According to Baxter, that meant that by the time of this challenge to its patent, the prior patent was not prior art.The Federal Circuit disagreed. It held that a patent, once granted, can qualify as prior art regardless of whether it is currently valid. The Court pointed to the language of the Patent Act. This case arose under the pre-America Invents Act version of the statute, when 35 U.S.C. § 102(e)(2) provided that prior art includes “a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.” (Today, the statute similarly provides in § 102(a)(2) that prior art includes “a patent issued under section 151 . . . in which the patent . . . names another inventor and was effectively filed before the effective filing date of the claimed invention.”) The Court held that “[t]he text of the statute requires only that the patent be ‘granted,’ meaning the ‘grant[]’ has occurred.” Once the patent is granted, the Court reasoned, that condition is satisfied—even if the patent is later cancelled. The Court went on to hold that the prior patent, in combination with other prior art, did render obvious the claim limitations at issue. It therefore reversed the Board’s contrary determination as unsupported by substantial evidence.

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Last Week in the Federal Circuit (May 24-28): Once A Granted Patent, Always a Granted Patent?

Last Week in the Federal Circuit (May 24-28): Once A Granted Patent, Always a Granted Patent?

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We hope our readers had a restful Memorial Day Weekend. Even DC’s cicadas took the weekend off. Before the long weekend, the Federal Circuit left us with 3 prec

There's a new Chief Judge at the Federal Circuit (as of Saturday), but life continues as usual here at Federal Circuitry. 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: 2 Non-precedential opinions: 5Rule 36: 0 Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1292.opinion.5-17-2021_1778434.pdf" target="_blank">Conway v. United States</a>, No. 20-1292 (159 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1956.opinion.5-18-2021_1779356.pdf" target="_blank">In re: Rajagopalan</a>, No. 20-1956 (14 days) Case of the (recent) week: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-2164.opinion.5-12-2021_1776598.pdf" target="_blank">Trimble Inc. v. PerDiemCo LLC</a>, 19-2164 (May 12, 2021)Panel: Judges Newman, Dyk, and Hughes, with Judge Dyk writing the opinionYou should read this case if: you have a declaratory judgment patent case involving specific personal jurisdictionSince there were no precedential patent decisions last week while the week before had several, we decided to switch things up slightly by writing about one of the earlier week’s cases. The decision caught our eye because the Court discusses the importance of avoiding special patent rules when it comes to general rules of civil litigation. The case is about whether, and under what circumstances, demand letters for patent infringement sent into a state suffice to establish specific personal jurisdiction in that state over the patent owner. The Federal Circuit rejected any bright-line rule on this issue. Instead it held that the “central question” is “whether a defendant’s connection to a forum is sufficient to satisfy the minimum contacts or purposeful availment test,” a question that must be answered based on each case’s specific facts. The Court identified three reasons for rejecting any bright-line rule. First, it stressed the Supreme Court’s continued warnings against creating “special rules for patent litigation in the context of rules governing civil litigation generally.” Both eBay—for permanent injunctions—and SCA—for laches—rejected such special patent rules. Unless “Congress has enacted a patent-specific statute that ‘placed patent infringement cases in a class by themselves,’” courts generally should not themselves undertake such an endeavor. Second, the Court read non-patent Supreme Court cases as holding “that communications sent into a state may create specific personal jurisdiction, depending on the nature and scope of such communications.” Past Federal Circuit decisions had applied that principle in the context of patent litigation. The Court also noted other factors that past Federal Circuit decisions have considered, such as “hiring an attorney or patent agent in the forum state to prosecute a patent application” or the “presence of ‘an exclusive licensee doing business in the forum state.’” Third, the Court held that specific jurisdiction in patent cases should consider “a broad set of a defendant’s contacts with a forum.” According to the Court, that broad set includes considering “nonexclusive patent licenses” connected to the forum state.Applying these considerations, the Federal Circuit held that the declaratory judgment plaintiffs had established specific personal jurisdiction over the patent-owner defendant. The patent owner “accumulat[ed] an extensive number of contacts with the forum in a short period of time,” going “far beyond ‘solely informing a party who happens to be located [in the forum state] of suspected infringement.’” The patent owner had also “negotiated some ten other nonexclusive licenses, including several with large firms operating nationwide.” Those and related facts were enough to satisfy the minimum contacts required for personal jurisdiction.

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 (May 17-21): Avoiding Special Rules For Patent Litigation

Last Week in the Federal Circuit (May 17-21): Avoiding Special Rules For Patent Litigation

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There's a new Chief Judge at the Federal Circuit (as of Saturday), but life continues as usual here at Federal Circuitry. Below we provide our usual weekly stat

The Federal Circuit had a busy week, issuing 18 opinions—8 of them precedential.  One of those cases put a new spin on two PTAB-related issues we’ve covered extensively on this blog:  <a href="https://federalcircuitry.mofo.com/search/?s=arthrex">Arthrex</a> (which held PTAB judges were unconstitutionally appointed) and <a href="https://federalcircuitry.mofo.com/search/?s=thryv">the AIA’s no-appeal bar</a>.  Read on for this week’s statistics and our case of the week.Precedential opinions:  8Non-precedential opinions:  8 Rule 36:  12Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1506.OPINION.5-11-2021_1776030.pdf">Free Stream Media Corp. v. Alphonso Inc.</a>, No. 19-1506) (251 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1399.OPINION.5-13-2021_1777271.pdf">New Vision Gaming v. SG Gaming, Inc.</a>, No. 20-1399 (34 days)Case of the week:<a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1399.OPINION.5-13-2021_1777271.pdf">New Vision Gaming & Development, Inc. v. SG Gaming, Inc.</a> Nos. 20-1399 & 20-1400 Panel:  Judges Newman, Moore, and Taranto, with Judge Moore writing the majority opinion and Judge Newman concurring in part and dissenting in partYou should read this case if:  you have an Arthrex challenge not raised before the agency or you have an IPR or CBM with a forum-selection clause issueThe majority opinion in our case of the week is just one paragraph long.  But this short precedential decision packs a punch, resolving one important issue and implicating several more.The issue the Court resolved concerns Arthrex.  The appellant here challenged the Board’s decision in a CBM review on Arthrex grounds, but did so for the first time on appeal.  Was the Arthrex challenge waived?  No, the Court held, not where the Board’s decision and the Board rehearing petition both came before the decision in Arthrex issued.  The Court noted that it had previously reached that conclusion in a non-precedential order, but now with this decision, the Court has made that holding precedential.As we’ve <a href="https://federalcircuitry.mofo.com/topics/201124-orders-of-interest-roundup-arthrex-style.html">observed</a> before, the Court has continued to apply its decision in Arthrex in some cases while the case is under review at the Supreme Court.  Add this case to the list:  the Court vacated and remanded on Arthrex grounds.The majority stopped there, but Judge Newman did not.  Her separate opinion concurred on the Arthrex issue but dissented from the majority’s decision not to reach other issues in the case.  One of those issues concerns a contractual forum-selection clause.  Years ago, the parties here entered a patent licensing agreement, which included a clause providing that disputes would be resolved in state or federal court in Nevada.  Does that clause bar the PTAB from conducting CBM review of the patent licensed in that agreement?  The Board answered “no,” reasoning that no “contractual estoppel defense” appears expressly in any statute or rule governing the Board.  But Judge Newman cited precedent generally requiring enforcement of forum-selection clauses.  And she noted a non-precedential Federal Circuit decision indicating that petitioning for PTAB review could violate a forum-selection clause.  While Judge Newman’s opinion did not ultimately state a firm answer to the question, she argued that the Court should have resolved the question before sending the case back to the PTAB.She thought the same about a related question the Court declined to reach:  Is the Board’s decision not to enforce a forum-selection clause appealable?  Both SG Gaming (which prevailed before the Board) and the PTO (as intervenor) argued that this issue falls within the judicial-review bar in 35 U.S.C. § 324(e).  That provision for CBM review—like the judicial-review bar for IPRs, 35 U.S.C. § 314(d)—makes the “determination by the Director whether to institute” review “final and nonappealable.”  According to SG Gaming and the PTO, the decision to conduct review despite a forum-selection clause is a decision whether to institute review, and therefore nonappealable.  But Judge Newman disagreed, arguing that the “rejection of the parties’ choice of forum is indeed subject to judicial review” because that decision concerns the Board’s “conduct” of review rather than its institution of review. While Judge Newman disagreed with the majority’s decision not to reach these issues in this case, it seems all but certain that these interesting, important questions will be back before the Court someday.

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Last Week in the Federal Circuit (May 10-14): The Arthrex and No-Appeal-Bar Gifts Keep on Giving

Last Week in the Federal Circuit (May 10-14):  The Arthrex and No-Appeal-Bar Gifts Keep on Giving

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The Federal Circuit had a busy week, issuing 18 opinions—8 of them precedential.  One of those cases put a new spin on two PTAB-related issues we’ve covered ext

Last week was Court week, so it was busy in the Federal Circuit with telephonic oral arguments. Despite all the activity, the Court still issued a dozen opinions, including two precedential ones. For our case of the week, we decided to focus in on a pretty rare question: how much fraud is required to reopen a patent judgment? For the answer, read below and take a look at our usual weekly statistics.Precedential opinions: 2 Non-precedential opinions: 10 Rule 36: 7 Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-2087.OPINION.5-5-2021_1773324.pdf">Cap Export, LLC v. Zinus, Inc.</a>, No. 20-2087 (65 days) Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1382.OPINION.5-6-2021_1774068.pdf">Olaplex, Inc. v. L'Oreal USA, Inc.</a>, No. 20-1382 (27 days) Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-2087.OPINION.5-5-2021_1773324.pdf">Cap Export, LLC v. Zinus, Inc.</a>, No. 20-2087 Panel: Judges Dyk, Bryson, and Hughes, with Judge Dyk writing the opinionYou should read this case if: you have a motion to reopen a judgment under Rule 60(b)(3)This week we take a look at a rare feat: a successful motion to set aside a judgment (and injunction) under Rule 60(b)(3) of the Federal Rules of Civil Procedure. Rule 60(b)(3) provides for relief from a judgment for reason of “fraud … , misrepresentation, or misconduct by an opposing party.” So how did the motion here clear Rule 60(b)(3)’s high bar? Basically, it took the patent owner’s president (who was also serving as an expert) denying knowledge of prior art in a deposition, and then admitting after judgment that his deposition statements were “literally incorrect” when it was revealed that he had knowledge of undisclosed prior art “functionally identical in design to the claims” of the patent. And the district court found the president’s explanations for his false deposition testimony “wholly implausible” and an affirmative misrepresentation.As background: the patent claims here are directed to a bedframe, where all the components fit in a compartment in the bed’s headboard compartment for compact shipping. Litigation ensued between the patent owner and an alleged infringer. The patent owner’s president was deposed, and he denied ever seeing anything like a bed shipped in one box or some components stored in another component for shipping. After several rounds of summary judgment and one trip to the Federal Circuit, the alleged infringer stipulated to entry of judgment of infringement and non-invalidity, $1.1 million in damages, and a permanent injunction.In most instances, that would be the end of the story. Not so here. The alleged infringer later learned the patent owner’s president actually knew of some prior art. In fact, before the patent’s priority date, he signed invoices buying 405 beds from a company that “had ‘all of the components of the bed (except the headboard) … packed inside of a zippered compartment in the headboard.” Based on this discovery, the alleged infringer moved to reopen the judgment, which the district court granted. On appeal, the Federal Circuit noted that it would apply regional circuit law—here, Ninth Circuit law—in addressing Rule 60(b)(3). In doing so, the Court ran into a wrinkle. It turns out that the Ninth Circuit imposes a due diligence requirement—that is, that the fraud not be discoverable by due diligence before or during the proceedings. The Federal Circuit noted that other Circuits don’t apply this requirement, and it runs counter to the text of other grounds for relief in Rule 60(b). For example, Rule 60(b)(2) imposes a diligence requirement for relief from judgments for newly discovered evidence. Nonetheless, the Court noted that even though the Ninth Circuit’s diligence requirement seems “questionable,” it would follow it in this case. In the end, the Ninth Circuit’s “questionable” requirement made no difference. The patent owner tried to use the diligence requirement “to blame the victim’s so-called ‘incompetent lawyers’ for the adverse consequences it suffered as a result of the fraud.” In other words, the patent owner argued that the alleged infringer’s lawyers could have discovered the prior art and the patent owner’s purchase of 405 prior art beds with better discovery requests. But the Court said that wasn’t the right inquiry. It’s not whether their lawyers fell below some “standard of care for attorneys practicing patent litigation,” but whether the alleged infringers “should have had reason to suspect fraud” and, if so, whether they took reasonable steps to investigate that fraud. On that test, the Court said ample evidence supported the district court’s determination that there was no reason to suspect fraud.

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

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Last Week in the Federal Circuit (May 3-7): The case of the missing beds and affirmative misrepresentations

Last Week in the Federal Circuit (May 3-7):  The case of the missing beds and affirmative misrepresentations

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Last week was Court week, so it was busy in the Federal Circuit with telephonic oral arguments. Despite all the activity, the Court still issued a dozen opinion