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

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

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Partner

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

Brian Matsui

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

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

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

Seth Lloyd

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

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

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

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

Recently in the Federal Circuit: More on Indefiniteness in IPRs

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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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

Last Week in the Federal Circuit

Today’s big news in the patent world is probably <a href="https://www.supremecourt.gov/search.aspx?filename=/docket/docketfiles/html/public/20-891.html">the CVSG in American Axle</a> and the potential for a new Supreme Court case on subject-matter eligibility. But the day-to-day work goes on at the Federal Circuit, including with an interesting decision on the scope of IP assignment provisions in employment contracts. 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: 6 Non-precedential opinions: 4 Rule 36: 1 Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1785.OPINION.4-29-2021_1770917.pdf">Bio-Rad Laboratories, Inc. v. International Trade Commission</a>, No. 20-1785 (Apr. 29, 2021) Panel: Judges Taranto, Chen, and Stoll, with Judge Taranto writing the opinionYou should read this case if: you have a dispute about whether an employment contract assigned ownership of an inventionConsider this scenario: an employment contract requires an employee to assign to the employer the entire right to any IP that the employee conceives, develops or creates during the term of employment. Does that provision give the employer co-ownership rights in an invention admittedly conceived after employment ends if the former employee based the invention at least in part on ideas allegedly developed during employment? The Federal Circuit said no in this week’s case of the week, interpreting an employment agreement like the above under California law.The case comes from the International Trade Commission, where the Commission found that Bio-Rad had violated section 337 of the Tariff Act of 1930 by infringing three patents related to tagging DNA samples with a barcode for genetic sequencing. As one of its defenses, Bio-Rad argued it could not be liable for infringement because it co-owned the asserted patents under assignment provisions that two named inventors signed when they were employees of Bio-Rad (and its predecessor). On appeal Bio-Rad did not dispute that the complete invention was conceived only after those two co-inventors left Bio-Rad. But it argued that those co-inventors developed ideas while employed with Bio-Rad (and its predecessor) that sufficiently contributed to the post-employment invention to qualify them as joint-inventors regardless of any contributions they made after leaving Bio-Rad. Bio-Rad believed that during-employment development meant it was a co-owner of the patents under the assignment agreement.The Federal Circuit rejected that defense for two reasons. First, the Court agreed with the Commission that “the assignment provisions do not apply to a signatory’s ideas developed during the employment solely because the ideas ended up contributing to a post-employment patentable invention in a way that supports co-inventorship.” The Court focused its analysis on the assignment provision’s language referring to “intellectual property,” which the Court read as a limitation on coverage. The assignment was a “right” to “intellectual property” and was temporally limited to IP “that Employee conceives, develops or creates … during the term of Employee’s employment.” “The most straightforward interpretation is that the assignment duty is limited to subject matter that itself could be protected as intellectual property before the termination of employment.” For a patent, the Court explained, there is no protectable intellectual property right “until at least conception.” The Court thus agreed with the Commission that “a significant contribution to post-employment invention” that fell short of conception was beyond the assignment provision’s reach.Second, the Court found no reversible error in the Commission’s independent determination that the co-inventors’ work during employment (as opposed to post-employment work) did not qualify them as joint inventors of the asserted patents. The Commission had found, and substantial evidence showed, that most of the ideas Bio-Rad pointed to as purportedly developed during employment had become public knowledge by the time of the invention’s post-employment conception. At most, then, Bio-Rad showed that the co-inventors “while at Bio-Rad, were working on the overall, known problem” of tagging small DNA segments, a problem “that was the subject of widespread work in the art.” That was insufficient to show a joint-inventorship-qualifying contribution to the eventual invention.

Seth Lloyd, a member of Morrison Foerster’s Appellate and Supreme Court practice, has been counsel in more than a hundred appeals in federal and state courts nationwide.

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Last Week in the Federal Circuit (April 26-30): The Potentially Limited Life Of IP Assignment Provisions In Employment Contracts

Ready, Set, Certify:  OFCCP Releases Mandatory Annual AAP Certifications

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Today’s big news in the patent world is probably the CVSG in American Axle and the potential for a new Supreme Court case on subject-matter eligibility. But the

Last Week in the Federal Circuit (April 26-30): The Potentially Limited Life Of IP Assignment Provisions In Employment Contracts

As many of you probably saw, Chief Judge Prost’s tenure as Chief Judge of the Federal Circuit is coming to a close, with Judge Moore set to become the new Chief Judge on May 22. But the upcoming transition doesn’t seem to have slowed down the Court. 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: 3Rule 36: 0Longest and shortest (non-Rule 36) pending case from argument: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1838.OPINION.4-19-2021_1765154.pdf">Morse v. McDonough</a>, No. 20-1838 (75 days) Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1036.OPINION.4-20-2021_1766044.pdf">Sebela Ireland Ltd. v. Prinston Pharmaceutical Inc.</a>, No. 18-1036 (46 days)Case of the week: <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1036.OPINION.4-20-2021_1766044.pdf">Sebela Ireland Ltd. v. Prinston Pharmaceutical Inc.</a>, No. 18-1036 (April 20, 2021)Panel: Judges Taranto, Chen, and Stoll, with Judge Chen writing the opinionYou should read this case if: you want to better understand the preclusive effect (or lack thereof) of contingent findings and alternative holdings.In this week’s featured case, the Federal Circuit resolved an interesting case where a patent-owner appellant appealed a district court judgment holding its patent claims invalid but asked the Federal Circuit to affirm invalidity. That perhaps surprising situation arose because the district court’s opinion supporting its judgment appeared to address multiple invalidity grounds, and the patent owner was seeking to protect against potential preclusive effects of some of those grounds. Ultimately, though, the Federal Circuit held that the district court had made only contingent findings rather than alternative holdings and dismissed the appeal for lack of constitutional standing.Sebela filed a number of patent infringement actions against Prinston and others in the District of New Jersey. In one of those actions, the district court found claims of the Sebela asserted patents to be invalid as obvious. The court also made certain findings about lack of written description and utility. Because Sebela was concerned those other invalidity findings would have preclusive effect under Third Circuit law on another of its actions involving a related patent, Sebela decided to attempt an “unusual” appeal. Particularly, Sebela asked the Federal Circuit to affirm the district court’s finding as to obviousness and make clear that it was not reaching the findings on lack of written description and utility so that those findings would have no preclusive effect.The Federal Circuit dismissed the appeal. It began by explaining that “there is good reason to think that, where alternative holdings are challenged on appeal and the appellate court does not reach them, preclusive effect would not be given to those holdings.” But the Federal Circuit read the district court’s opinion as reaching a “single holding for invalidating the patent” and found that the findings on lack of written description and utility were contingent and not alternative holdings.Several factors supported that conclusion. First, the district court’s obviousness discussion was “highly detailed” while the discussion about utility and written description was “brief[].” Second, the opinion’s final conclusion referenced only obviousness. Third, the findings on lack of written description and utility used “contingent and inconclusive language”—“if [it] had found . . . [it] would have concluded that . . .”—and not language that usually introduces alternative holdings—“even if . . .” or “even were . . . .” Finally, the district court itself in the other Sebela action had confirmed during the preliminary injunction hearing that obviousness was the lone holding: “But given the Court’s ruling which was on obviousness . . . .” Because the district court made just one holding which Sebela did not challenge, the Federal Circuit dismissed the appeal for the lack of constitutional standing.Although the Court dismissed Sebela’s appeal, Sebela may have still accomplished its goal. In discussing the difference between alternative holdings and contingent findings, the Federal Circuit indicated that “a contingent finding does not amount to an alternative holding, and therefore could not have preclusive effect” based on Third Circuit law. That may mean the Federal Circuit’s holding that the district court made only contingent findings will protect Sebela against a preclusion argument going forward.

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Last Week in the Federal Circuit (April 19-23): Contingent Findings v. Alternative Holdings

Last Week in the Federal Circuit (April 19-23): Contingent Findings v. Alternative Holdings 

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As many of you probably saw, Chief Judge Prost’s tenure as Chief Judge of the Federal Circuit is coming to a close, with Judge Moore set to become the new Chief

Last Week in the Federal Circuit (April 19-23): Contingent Findings v. Alternative Holdings

It was a busy week for the Federal Circuit, with a total of 18 new opinions, including a precedential opinion on enablement in the context of § 103 obviousness references.  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: 12Rule 36: 4Longest and shortest (non-Rule 36) pending case from argument: Raytheon Technologies Corp. v. General Electric Company, No. 20-1755 (72 days)Case of the week:Raytheon Technologies Corp. v. General Electric Company, No. 20-1755, April 16, 2021Panel:  Judges Lourie, Chen, and Hughes, with Judge Chen writing the opinionYou should read this case if:  you have a case involving (1) single-reference obviousness, or (2) prior art that is significantly older than the effective priority date of the patent.In this week’s featured case, the Federal Circuit rejected an obviousness theory based on a single prior-art reference for lack of evidence that the reference enabled its own disclosure (i.e., is “self-enabling”) or other supporting evidence showing a skilled artisan could have made the claimed invention.Raytheon owns a patent to a gas turbine engine, commonly used for powering airplanes.  The claims require the turbine to have a “power density” alleged to be “much higher than in the prior art” as the “key distinguishing feature of the claims.”The PTAB had found the patent unpatentable as obvious in view of Knip, a NASA technical memorandum.  Knip dates back to 1987, 25 years before the Raytheon patent’s alleged priority date.  Knip is a forward-looking document that “envisions superior performance characteristics for an imagined” engine.  It was undisputed that Knip’s “advanced” engine used “then-unachievable pressure ratios and turbine temperatures,” making the engine “unattainable at that time.”  It also was undisputed that the revolutionary materials required by Knip were unavailable by Raytheon’s priority date.  The PTAB nevertheless held the claims unpatentable for obviousness because it found that a skilled artisan could have used Knip’s disclosures to calculate the power density claimed by Raytheon’s patent.The Federal Circuit reversed because the PTAB’s focus was too narrow.  Rather than asking only whether Knip would have enabled a skilled artisan to calculate the claimed power density, the PTAB should have asked whether Knip enabled a skilled artisan to make the claimed invention as a whole.  And had it done so, it would have seen that there was no evidence of enablement of the invention as a whole.  In fact, the record would have shown only “extensive, unrebutted evidence of non-enablement.”The Federal Circuit was careful to explain that not all obviousness cases will require the same enablement inquiry.  It clarified that a 103 reference can be relevant without being self-enabling.  For example, “a reference that does not provide an enabling disclosure for a particular claim limitation may nonetheless furnish the motivation to combine, and be combined with, another reference in which that limitation is enabled.”  But where, as here, the reference is asserted on its own, without any other supporting evidence, the reference must “enable the portions of its disclosure being relied upon.”

Associate

Stephen Liu is a member of the firm’s Litigation Group and focuses his practice on Intellectual Property litigation.
Stephen earned his J.D. from Stanford Law School, where he was a senior editor of t

Stephen Liu

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Last Week in the Federal Circuit (April 12-16): Self-Enabling Prior Art

Last Week in the Federal Circuit (April 12-16): Self-Enabling Prior Art

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It was a busy week for the Federal Circuit, with a total of 18 new opinions, including a precedential opinion on enablement in the context of § 103 obviousness 

Last week was argument week, which sometimes means lots of Rule 36 affirmances and not a lot of precedential opinions.  Still, that didn’t stop the Court from issuing an interesting, and relatively rare, precedential decision on evidence admissibility.  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: 12Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1881.OPINION.4-8-2021_1760442.pdf">Wi-LAN Inc. v. Sharp Elecs. Corp.</a>, Nos. 20-1041, 20-1043 (120 days)Shortest pending case from argument (non-Rule 36):<a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1881.OPINION.4-8-2021_1760442.pdf">INVT SPE LLC v. Apple Inc.</a>, No. 20-1881 (3 days)Case of the week:<a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1041.OPINION.4-6-2021_1759180.pdf">Wi-LAN Inc. v. Sharp Elecs. Corp.</a>, Nos. 2020-1041 and 2020-1043 (Apr. 6, 2021)Panel:  Judges Dyk, Taranto, and Stoll, with Judge Dyk writing the opinion.You should read this case if: you have a case involving authentication of source code produced by a third party.The Federal Circuit issued a precedential opinion last week that shows some of the limitations of trying to authenticate source code produced by third parties via a custodial declaration.Wi-LAN asserted a patent for displaying interlaced video on a non-interlaced monitor against its competitors. But the competitors did not possess the source code for de-interlacing images in the accused products. That source code was in the hands of a third party, so Wi-LAN needed to find a way to get it to prove its infringement case.Eventually, Wi-LAN sued the third party in a separate action and managed to procure the source code and purportedly authenticating declarations from the third party’s employees. But the district court found the source code inadmissible and granted summary judgment of non-infringement. Without the source code, Wi-LAN did not have a case.The Federal Circuit affirmed. It agreed with Wi-LAN that declarations can serve as a proxy for trial testimony when deciding summary judgment motions. But “declarations cannot be used for this purpose unless the witness will be available to testify at trial.” When the district court asked Wi-LAN whether the declarants would testify at trial, Wi-LAN conceded they probably could not be forced to do so. “Wi-LAN thus did not establish that the declarants would be available to testify at trial and, as a result, the declarations could not be used as a substitute for trial testimony.”Wi-LAN also argued that the declarations themselves are admissible as evidence because they are business records under Federal Rules of Evidence 803(6). Once admitted, the declarations could be used to authenticate the source code without trial testimony. The Federal Circuit disagreed. The third party produced the declarations in response to Wi-LAN’s suit against it. Thus, “the declarations were created and prepared for the purposes of litigation, placing them outside the scope of the exception.”Nor did the declarations meet Rule 803(6)’s requirement of sufficient “trustworthiness.” The declarations stated that there were no material differences between the source code that was produced and any versions used since 2009. But the record showed that the third party contradicted this statement in the past. The third party “originally claimed that they could not produce one version of source code for all [system-on-chips] at issue in the case.” Further, Wi-LAN “failed to obtain change logs, file comparisons, or other evidence of code revisions that might clear up the inconsistencies in the code.” That evidence was enough to show a lack of trustworthiness in the declarations, precluding them from being admitted under Rule 803(6).This opinion shows that a custodial declaration from a third party is not always enough to authenticate the accompanying productions. It will be interesting to see how parties use this case going forward to try and block harmful documents from being admitted into evidence.

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Last Week in the Federal Circuit (April 5-9): Failure to Authenticate Third-Party Source Code

Last Week in the Federal Circuit (August 24-28): No Judicial Estoppel from Inventorship About-Face

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Last week was argument week, which sometimes means lots of Rule 36 affirmances and not a lot of precedential opinions.  Still, that didn’t stop the Court from i

Last Week in the Federal Circuit (April 5-9): Failure to Authenticate Third-Party Source Code

In a slow week, the Federal Circuit nevertheless gave patent litigators everywhere a non-precedential opinion to nibble on about the definition of the ever-present person having ordinary skill in the 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:  2Non-precedential opinions:  1Rule 36: 0Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1506.opinion.3-30-2021_1755902.pdf" target="_blank">Habas Sinai ve Tibbi Gazlar v. US</a>, No. 20-1506 (110 days)Shortest pending case from argument (non-Rule 36):<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1484.opinion.4-1-2021_1757300.pdf" target="_blank">McCoy v. HEAL Systems, LLC</a>, No. 20-1484 (83 days)Case of the week:<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1484.opinion.4-1-2021_1757300.pdf" target="_blank">McCoy v. HEAL Systems, LLC</a>, No. 20-1484 (April 1, 2021)Panel:  Judges Dyk, Reyna, and Taranto, with Judge Reyna writing the opinionYou should read this case if:  you have a case involving disputes over the definition of a person having ordinary skill in the art.In this week’s featured case, the Federal Circuit provided guidance about the definition of a person having ordinary skill in the art (“POSA”). The Court held that a POSA may have access to and rely on experts “if in the relevant art the POSA routinely would rely on such expert assistance.”The patentee appealed a PTAB final written decision finding the challenged claims unpatentable as obvious and anticipated.  In so finding, the Board accepted the patent challenger’s expert testimony that a POSA in the relevant art would have relied on expert assistance to evaluate or implement certain aspects of the invention.  The patentee argued that the Board erred by defining the POSA to encompass access to other experts and “improperly keyed its [obviousness] analysis to the skill of expert rather than ordinary skill, which allows for hindsight bias.” The Federal Circuit rejected the patentee’s argument and affirmed the PTAB’s final written decision.  The Court noted that the POSA definition is fact-dependent and “must be tailored to practice in the art” in each case.  In certain fields, it may be common for a POSA to rely on one type of expert, whereas “[r]eliance on another type of expert, if not routine in the art, might not be appropriate.”  In the instant case, the record included expert testimony that POSAs in the field would have been “trained and encouraged” to consult with technical experts in the field.  Furthermore, “[the patentee’s] expert admitted that even he frequently consults with field engineers and agreed that this did not make them experts.”  Given the record evidence, the Court concluded that the Board “did not improperly determine the challenged claims’ patentability from an expert’s perspective rather than the POSA’s perspective” merely by defining a POSA to encompass reliance on other experts. The patentee also contended that the Board’s obviousness determination improperly relied on the patent specification to determine what was known in the art at the time of the invention and to understand the workings of prior art systems.  The Court roundly rejected this argument and reiterated its long-held precedent that “[a] statement in a patent that something is in the prior art is binding on the applicant and patentee for determination of anticipation and obviousness.”  The Court commented that, “[b]y characterizing certain parts as conventional in the specification, the patentee effectively admits that such things would be known to a POSA.”

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Last Week in the Federal Circuit (March 29-April 2): A POSA By Any Other Name …

Last Week in the Federal Circuit (March 29-April 2): A POSA By Any Other Name … 

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In a slow week, the Federal Circuit nevertheless gave patent litigators everywhere a non-precedential opinion to nibble on about the definition of the ever-pres

Last Week in the Federal Circuit (March 29-April 2): A POSA By Any Other Name …

Spring seems to have arrived in DC, and cherry blossom trees are starting to bloom all over the region. But the beautiful weather this weekend didn’t stop us from our weekly review of all things 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: 3Non-precedential opinions: 5Rule 36: 1Longest pending case from argument: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1590.opinion.3-22-2021_1751275.pdf" target="_blank">Kimble v. US</a>, No. 19-1590 (381 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1284.opinion.3-25-2021_1753681.pdf" target="_blank">RideApp, Inc. v. Lyft, Inc.</a>, No. 20-1284 (23 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1288.opinion.3-25-2021_1753695.pdf" target="_blank">In re Board of Trustees of the Leland Stanford Junior University</a>, No. 20-1288 (March 25, 2021)Panel: Chief Judge Prost and Judges Lourie and Reyna, with Judge Reyna writing the opinionYou should read this case if: you have a case involving subject-matter eligibility, especially one involving the line between a patent-eligible improvement in a technological process versus a mere enhancement to an ineligible concept.In this week’s case of the week, the Federal Circuit provided another data point for distinguishing patentable improvements in a technological process from unpatentable uses, even if novel, of a computer to perform abstract ideas. The Patent Office rejected Stanford’s patent application claiming improved methods for inferring haplotype phase, a statistical estimation in genetics of the likelihood that a combination of alleles were inherited from a common parent. Stanford claimed to have improved on prior-art approaches by using data structured in a new way that increased accuracy and efficiency.The Federal Circuit held that Stanford’s claims were directed to abstract ideas and lacked an inventive concept. Much of the Court’s analysis focused on Alice step one. Stanford argued its claims were like those in McRO and similar cases because they claimed a practical application in haplotype prediction rather than simply an abstract mathematical or statistical technique. The Court rejected that view—although Stanford’s claims may improve the accuracy of calculating haplotype phase, they “recite[] no application, concrete or otherwise, beyond storing the haplotype phase” on a computer. The claims thus involved “merely an enhancement to the abstract mathematical calculation of haplotype phase itself” rather than any “improvement to a technological process.” “The different use of a mathematical calculation, even one that yields different or better results, does not render” claims patent eligible.Although the Court viewed Alice step two as a potential “a lifeline” that “can rescue and save a claim,” that lifeline wasn’t enough for Stanford’s application on the facts here. According to the Court, the claimed methods involved performing mathematical calculations on a computer using steps like “receiving, extracting, and storing data,” all of which the Court held were “well-known, routine, and conventional.” Similar to its step-one analysis, the Court rejected the notion that merely achieving “more accurate haplotype predictions” was “enough to transform the abstract idea” into a patent-eligible application. Novelty is not “the touchstone of patent eligibility.”

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Last Week in the Federal Circuit (March 22-26): Improving A Technological Process Or Merely Enhancing An Ineligible Concept

Last Week in the Federal Circuit (September 28 – October 2):  Product-by-Process Methods of Treatment

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In this week’s case of the week, the Federal Circuit provided another data point for the often fuzzy line between computer-implemented claims that are patentabl

Last Week in the Federal Circuit (March 22-26): Improving A Technological Process Or Merely Enhancing An Ineligible Concept

The Federal Circuit followed <a href="https://federalcircuitry.mofo.com/topics/Last-Week-in-the-Federal-Circuit-March-8-12--The-NeverEnding-Story-of-the-AIAs-No-Appeal-Bar.html">last week’s busy week</a> with a slower one, issuing ten total decisions.  In one of its two precedential opinions, the Court took on a circuit split over overtime compensation.  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:  8Rule 36:  0Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/19-2214.opinion.3-16-2021_1748706.pdf" target="_blank">PI Advanced Materials Co., Ltd v. Kaneka Corporation</a>, No. 19-2214 (162 days)Shortest pending case from argument (non-Rule 36):<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1601.opinion.3-16-2021_1748733.pdf" target="_blank">Sling TV, L.L.C. v. Realtime Adaptive Streaming</a>, Nos. 20-1601, -1602 (11 days)Case of the week:<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1622.opinion.3-15-2021_1747804.pdf" target="_blank">Akpeneye v. United States</a>, No. 20-1622Panel:  Judges Lourie, Schall, and Dyk, with Judge Dyk writing the opinionYou should read this case if:  you have an overtime-compensation case about meal breaksThe Fair Labor Standards Act (FLSA) entitles employees to overtime compensation when they work more than forty hours a week.  When does a meal break count towards that time?  In answering that question, the Federal Circuit identified a circuit split—and took a side.The plaintiffs here are police officers at the Pentagon.  Each work day, they received an unpaid 35-minute meal break.  During the break, they were replaced by other on-duty officers.  But they still had to obey certain restrictions (e.g., no watching online videos except in a private break room) and had some duties (e.g., responding to questions from members of the public they encountered).  The officers also often used their breaks to take care of administrative duties.Seeking compensation for that daily break time, the officers sued their employer—the federal government—in the Court of Federal Claims.  The Claims Court granted summary judgment to the government, holding that the breaks do not qualify as work time under the FLSA.The Federal Circuit affirmed.  The “central issue,” it explained, “is whether employees are required to ‘work’ within the meaning of the FLSA” during the breaks.  A Department of Labor regulation provides that a “bona fide meal period” does not qualify as “worktime.”  The statute, however, does not define “work.” The Court identified a circuit split over the legal standard for deciding when a meal break is “work.”  The Ninth Circuit looks to the Department of Labor regulation, which defines a “bona fide meal period” as one in which employees are “completely relieved from duty.”  Many other circuits (nine, by the Federal Circuit’s count) look instead to a Supreme Court decision limiting “work” under the FLSA to exertion “primarily for the benefit of the employer and his business.”  Tenn. Coal, Iron & R.R. Co. v. Muscoda Local No. 123, 321 U.S. 590, 598 (1944).  This put the Federal Circuit to a choice:  Should employees be paid for meal breaks as “work” (A) as long as they are not completely relieved from duty, or (B) only when their time is spent primarily for the employer’s benefit?The Court chose the latter “predominant benefit test,” siding with the majority rule.  It concluded that the Supreme Court’s definition of “work” was binding here.  And it held that the Department of Labor regulation was neither binding nor persuasive enough to warrant Skidmore deference.Under that test, the Court held that the meal breaks here did not qualify as work.  “The most important factor to consider when applying the predominant benefit test,” the Court explained, “is whether an employee is required to perform any ‘substantial duties’ or give up a ‘substantial measure’ of time and effort during a meal break.”  That was not the case here.  The Court held instead that the officers had fairly minimal duties and restrictions during their breaks, and “they were generally able to enjoy the primary benefit of” a break period “during a given shift.”Having decided all that, the Court still left enough material for a sequel.  While it picked the predominant benefit test and illustrated its application, the Court declined to decide “whether the employer or the employee has the burden of proof under the predominant benefit test.”  That question—which the Court held would not affect the result here—will occupy the Court another day.

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Last Week in the Federal Circuit (March 15-19): Compensation Conflict

Last Week in the Federal Circuit (March 15-19):  Compensation Conflict

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The Federal Circuit followed last week’s busy week with a slower one, issuing ten total decisions.  In one of its two precedential opinions, the Court took on a

Wow—it was a busy week at the Court last week.  Lots of opinions, and lots of precedential ones.  There were lots of good choices out there, so we sort of threw a dart at a board to see which one to write about.  In the end, we decided to look at the latest chapter in the never-ending story of the AIA's no-appeal bar.Precedential opinions: 10Non-precedential opinions: 10Rule 36: 6Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1367.opinion.3-12-2021_1746974.pdf" target="_blank">Cajun Services Unlimited, LLC v. Benton Energy Service Co.</a>, No. 20-1367 (158 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/20-1858.opinion.3-10-2021_1745807.pdf" target="_blank">Neapco Drivelines LLC v. American Axle & Manufacturing</a>, No. 20-1858 (8 days)Case of the week: <a href="http://www.cafc.uscourts.gov/opinions-orders/19-1688.opinion.3-9-2021_1745086.pdf" target="_blank">Uniloc 2017 LLC v. Facebook Inc.</a>, No. 19-1688 (Mar. 9, 2021)Panel:  Judges Lourie, Wallach, and Chen, with Judge Chen writing the opinion.You should read this case if: you have a case involving a question about the scope of 35 U.S.C. § 314(d)’s no-appeal barIf you follow IPRs, you’re by now familiar with 35 U.S.C. § 314(d), which has been the subject of multiple Supreme Court decisions (Cuozzo, SAS, Thryv).  Section 314(d) is titled “No Appeal” and declares that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”  In Cuozzo, the Supreme Court said that provision overcomes the strong presumption of judicial review for “questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.”So what happens when the Board institutes review but then the patent owner says post-institution developments require the Board to terminate the review (or at least terminate some petitioners’ involvement)—is judicial review precluded because the Board’s decision whether to terminate is “closely tied to” institution?  The Federal Circuit said no, at least when the alleged reason for termination is statutory estoppel based on events occurring after institution.  (The decision also is worth reading for what it says on the merits of the Board’s estoppel determinations, but we’re focusing on appealability today.)The relevant facts are that after the Board issued its institution decisions in the IPRs in this case, the Board issued a final written decision in a different IPR on the same patent.  Uniloc argued to the Board that the final written decision in that other IPR triggered statutory estoppel because at least one party was involved in both proceedings.  The Board generally rejected those arguments and allowed the IPRs to proceed, ultimately holding that Uniloc’s challenged claims were unpatentable.  Uniloc appealed, asking the Federal Circuit to review the Board’s estoppel determinations (among other things).The Federal Circuit held the no-appeal bar inapplicable on those facts.  It thought it critical that “no cause for termination at the time of petition existed and the basis for termination developed while the proceeding was ongoing.”  That fact distinguished this case from past ones where the bar had applied to Board estoppel determinations—in past cases, the post-institution estoppel determination was about facts that existed at the time of institution, such as whether a petitioner had properly named all real parties in interest when filing the petition.  The Court held that the text of the estoppel provision (35 U.S.C. § 315(e)) supports its view—it prevents petitioners from “request[ing] or maintain[ing] a proceeding” once estoppel arises.  “Section 315(e)(1)’s use of ‘maintain’ contemplates that the estoppel provision ‘governs at any stage of a subsequent proceeding,’” suggesting estoppel determinations are not “closely tied” to institution in every case.  Because the Board’s “no estoppel” decision “was later than and separate from its earlier institution decision,” judicial review was available.One question this case raises is whether the availability of review is one sided.  Here, because the Board sided with the patent challenger, holding estoppel inapplicable, it proceeded to a final written decision.  The Federal Circuit emphasized that “the question before” it was “whether 35 U.S.C. § 314(d) statutorily precludes judicial review, following a final written decision in an inter partes review proceeding, of a challenge to the Board’s” no-estoppel determination.  But what if the Board had sided with the patent owner, finding that estoppel applied and terminating review without issuing a final written decision on patentability?  Would review be available then?  Or does this case create another asymmetry in the availability of judicial review, as the Federal Circuit’s Wi-Fi One decision did for time-bar determinations (before Thryv overturned it)?  Maybe that'll be the next chapter in the no-appeal-bar story.

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Last Week in the Federal Circuit (March 8-12): The NeverEnding Story of the AIA’s No-Appeal Bar

Do We Already Know the Federal Circuit’s Final Answer in Arthrex?

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Wow—it was a busy week at the Court last week.  Lots of opinions, and lots of precedential ones.  There were lots of good choices out there, so we sort of threw

Last Week in the Federal Circuit (March 8-12):  The NeverEnding Story of the AIA’s No-Appeal Bar

Last week was argument week, and the Federal Circuit previewed its new YouTube channel for streaming live arguments (sadly, audio only for now).  Still, that didn’t slow the Federal Circuit down in issuing opinions, including six precedential ones.  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: 4Rule 36: 7Longest pending case from argument:<a href="http://www.cafc.uscourts.gov/opinions-orders/19-2261.opinion.3-4-2021_1742616.pdf" target="_blank">Safeguard Base Operations, LLC v. United States</a>, No. 19-2261 (241 days)Shortest pending case from argument (non-Rule 36): <a href="http://www.cafc.uscourts.gov/opinions-orders/19-2280.opinion.3-4-2021_1742622.pdf" target="_blank">Olaplex, Inc. v. L’Oreal USA, Inc.</a>, No. 19-2280 (55 days)Case of the week:<a href="http://www.cafc.uscourts.gov/opinions-orders/20-1646.opinion.3-2-2021_1741285.pdf" target="_blank">Rain Computing, Inc. v. Samsung Electronics America, Inc.</a>, Nos. 20-1646, -1656Panel:  Judges Lourie, Dyk, and Moore, with Judge Moore writing the opinionYou should read this case if:  you have a claim term with functional language that may be subject to means-plus-function interpretationEveryone knows patents must end with claims that “particularly point out and distinctly” identify the invention.  35 U.S.C. § 112(a).  But some inventions don’t lend themselves to succinct delineation in the claims.  So Congress provided an alternative—rather than identify in the claims an exact structure or step that is an element of the invention, patentees can express the element as “a means or step for performing a specified function.”  35 U.S.C. § 112(f).  When they do, the claim will be “construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”  Id.  Congress thus allowed a sort of shorthand—patentees can detail the structure, material, etc. essential to their invention in other parts of the specification and use so-called means-plus-function (or step-plus-function) language to incorporate those details into the claims.This week’s case deals with when claims trigger means-plus-function interpretation and what details the specification must give about the corresponding structure, material, or acts.  Rain Computing owns a patent to a method for providing software over a network.  The claimed method requires a step of sending “a user identification module configured to control access” to software.Does that language trigger means-plus-function interpretation?  The Federal Circuit said yes.  It applied a rebuttable presumption that “user identification module” was not a means-plus-function term because it lacks the word “means.”  It held the presumption rebutted—“module” is “a well-known nonce word that can operate as a substitute for ‘means.’”  That was how the patent here used the term, as a “black box recitation of structure.”  The prefix “user identification” was no help—it “merely describes the function of the module: to identify a user.”  Nor did it matter that the applicant had amended the claims from “user identification module for accessing” to “user identification module configured to control access.”  The “configured to” phrasing was still “purely functional.”  The Court also clarified that method claims can include a “nested” means-plus function term.Because “user identification module” was a means-plus-function term, the Court asked whether other parts of the patent disclose adequate structure corresponding to the claimed function.  The Federal Circuit rejected the district court’s view that the patent’s disclosure of generic “computer-readable media or storage devices” was adequate structure.  “These computer-readable media or storage devices amount to nothing more than a general-purpose computer.”  But Federal Circuit precedent had long required more than a general purpose computer except in the “rare” situation where any general purpose computer can perform a claimed function “without any special programming.”  The Court held this was not that rare situation, as both the patent owner and the inventor agreed some programming would be required.  And under that precedent, Rain Computing’s claims were invalid for indefiniteness—the lack of adequate corresponding structure meant the patent failed to particularly point out and distinctly claim the invention.

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Last Week in the Federal Circuit (March 1-5): Purely Functional Claiming And Means-Plus-Function Elements

Last Week in the Federal Circuit (March 1-5):  Purely Functional Claiming And Means-Plus-Function Elements

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Last week was argument week, and the Federal Circuit previewed its new YouTube channel for streaming live arguments (sadly, audio only for now).  Still, that di