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 is a partner in Morrison Foerster’s Appellate and Supreme Court practice. Having argued more than 30 appeals, Brian is a go-to appellate advocate for sophisticated clients in complex appeals nationwide. Chambers USA reports Brian is a “‘terrific’ practitioner with a ‘warm and enthusiastic’ approach to matters.”Clients 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 10 of his last 11 appeals in that Court, which includes four reversals of Patent Trial and Appeal Board or district court decisions. His more than 20 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 is an Editor of Morrison Foerster’s <a href="https://federalcircuitry.mofo.com/" target="_blank">Federal Circuitry</a> blog, which takes a data-driven approach to analyzing the Federal Circuit and its decisions.Brian also briefs and argues cases in appellate courts nationwide. He has argued multiple times in the D.C., Second, Ninth and, Eleventh Circuits. His arguments include significant victories in class action appeals and in appeals for leading financial services companies. For example, Brian 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.In addition to arguing cases before the appellate courts, Brian 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. Legal 500 US recommends him for appellate litigation, and the National Law Journal named Brian a “Minority 40 under 40.”Brian 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. 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 on the Ninth Circuit and Judge David F. Levi on 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="_self">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/200515-william-paulus-v-ocera-therapeutics-inc" target="_self">C.R. Bard Inc. v. Medline Industries, Inc. </a>(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" 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/190507-arch-development-corp-v-osi-pharmaceuticals-llc" target="_self">ARCH Development Corp. v. OSI Pharmaceuticals, LLC</a> (12:40) (Fed. Cir.) Successfully argued and briefed appeal involving the invalidation of patent claims directed to cancer treatment methods</li><li><a href="/resources/video-audio/20190805-neev-v-alcon-lensx-inc" target="_self">Neev v. Alcon LenSx, Inc.</a> (13:31) (Fed. Cir.) Successfully argued and briefed appeal involving claim construction and non-infringement issues in a suit involving surgical lasers</li><li><a href="/resources/video-audio/200410-kurtz-v-costco" target="_self">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" 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><li><a href="/resources/video-audio/170113-monkeymedia-inc-v-buena-vista-home-entertainment" target="_self">Monkeymedia, Inc. v. Buena Vista Home Entertainment </a>(12:35) (Fed. Cir.) Successfully argued and briefed appeal involving the invalidation of patent claims directed to the transmission of video content, including over the Internet</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 R. 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. Among his successes at the U.S. Supreme Court, Seth helped secure unanimous reversal of the Alabama Supreme Court’s refusal to grant full faith and credit to a lesbian couple’s Georgia adoption judgment. 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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Of Counsel

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-751012987{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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Seth W. Lloyd

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

Recently in the Federal Circuit: The New Board Construction Conundrum

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Morrison & Foerster and the Berkeley Center for Law & Technology (BCLT) have teamed up to present a recurring podcast addressing recent Federal Circuit decisions.In this episode, <a href="https://www.mofo.com/people/seth-lloyd.html">Seth Lloyd</a>, an associate in Morrison & Foerster’s Appellate + Supreme Court practice, and <a href="https://www.law.berkeley.edu/research/bclt/about/staff/">Wayne Stacy</a>,  BCLT’s Executive Director, discuss the Federal Circuit’s recent decision in <a href="https://cafc.uscourts.gov/opinions-orders/20-1828.OPINION.12-28-2021_1885998.pdf" target="_blank">Intel v. Qualcomm</a>, including:<ul><li>what facts suffice to establish Article III standing for IPR petitioners who supply only a component of a product alleged to fall within the scope of the challenged claims; and</li></ul><ul><li>the importance of grounding claim interpretations in what the specification shows the inventor actually invented.</li></ul>‎ Listen now on <a href="https://open.spotify.com/episode/3TnWcOTPyXcDRd3ervTUiF" target="_blank">Spotify</a>, <a href="https://podcasts.apple.com/us/podcast/beyond-the-holding-a-nuanced-look-at-the/id1579362102?i=1000547239697" target="_blank">Apple</a>, or <a href="https://podcasts.google.com/feed/aHR0cHM6Ly9iY2x0LWV4cGVydC1zZXJpZXMuY2FzdG9zLmNvbS9mZWVk/episode/aHR0cHM6Ly9iY2x0LWV4cGVydC1zZXJpZXMuY2FzdG9zLmNvbS9wb2RjYXN0cy8yNzE1MS9lcGlzb2Rlcy9iZXlvbmQtdGhlLWhvbGRpbmctYS1udWFuY2VkLWxvb2stYXQtdGhlLWZlZGVyYWwtY2lyY3VpdHMtcGF0ZW50LWRlY2lzaW9ucy1lcGlzb2RlLTY?sa=X&ved=0CAYQkfYCahcKEwiAuJOomKj1AhUAAAAAHQAAAAAQAQ" target="_blank">Google</a>.

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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Podcast: Beyond the Holding - A Nuanced Look at the Federal Circuit's Patent Decisions (Episode 6)

Podcast: Beyond the Holding - A Nuanced Look at the Federal Circuit's Patent Decisions (Episode 6)

10_07_professionalmicrophone_blog_v13

Morrison & Foerster and the Berkeley Center for Law & Technology (BCLT) have teamed up to present a recurring podcast addressing recent Federal Circuit decision

Podcast

Morrison & Foerster and the Berkeley Center for Law & Technology (BCLT) have teamed up to present a recurring podcast addressing recent Federal Circuit decisions.In this episode, <a href="https://protect-us.mimecast.com/s/ZKMgCW6jp1U5yq649uxUzkW?domain=www2.mofo.com">Brian Matsui</a>, a partner in Morrison & Foerster’s Appellate + Supreme Court practice and <a href="https://protect-us.mimecast.com/s/JP5uCXDkqPHXMK495HDrdnN?domain=www2.mofo.com">Allison Schmitt</a>, BCLT's Life Sciences project director discuss:<ul><li>When do post-marketing tests required by the U.S. Food and Drug Administration (FDA) that lead to the claimed combination not demonstrate obviousness?</li><li>The interplay between reasonable expectation of success and disclosed ranges in prior art.</li></ul>‎ Listen now on <a href="https://protect-us.mimecast.com/s/PwXWCYElrZFL6lD91iV9NPy?domain=www2.mofo.com">Spotify</a>, <a href="https://podcasts.apple.com/us/podcast/beyond-the-holding-a-nuanced-look-at-the/id1579362102?i=1000546938977">Apple</a>, or <a href="https://podcasts.google.com/feed/aHR0cHM6Ly9iY2x0LWV4cGVydC1zZXJpZXMuY2FzdG9zLmNvbS9mZWVk/episode/aHR0cHM6Ly9iY2x0LWV4cGVydC1zZXJpZXMuY2FzdG9zLmNvbS9wb2RjYXN0cy8yNzE1MS9lcGlzb2Rlcy9iZXlvbmQtdGhlLWhvbGRpbmctYS1udWFuY2VkLWxvb2stYXQtdGhlLWZlZGVyYWwtY2lyY3VpdHMtcGF0ZW50LWRlY2lzaW9ucy1lcGlzb2RlLTU?sa=X&ved=0CAUQkfYCahcKEwjw5PbcnaD1AhUAAAAAHQAAAAAQAg" target="_blank">Google</a>.

Clients turn to Brian for his substantial experience in patent appeals in the Federal Circuit. He has argued 17 times in that Court, winning appeals from both district courts and the Patent Trial and 

Brian Matsui

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Podcast: Beyond the Holding – A Nuanced Look at the Federal Circuit’s Patent Decisions (Episode 5)

Podcast: Beyond the Holding – A Nuanced Look at the Federal Circuit’s Patent Decisions (Episode 5)

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<p style="box-sizing: inherit;margin-top: 0px;margin-right: 0px;margin-bottom: 1.25rem;margin-left: 0px;padding-top: 0px;padding-right: 0px;padding-bottom: 0px;padding-left: 0px;font-size: 1.0625rem;line-height: 1.6;text-rendering: optimizelegibility;font-variant-numeric: normal;font-variant-east-asian: normal;color: rgb(82, 83, 87);hyphens: manual;overflow-wrap: normal;">Morrison & Foerster and the Berkeley Center for Law & Technology (BCLT) have teamed up to present a recurring podcast addressing recent Federal Circuit decisions.<p style="box-sizing: inherit;margin-top: 0px;margin-right: 0px;margin-bottom: 1.25rem;margin-left: 0px;padding-top: 0px;padding-right: 0px;padding-bottom: 0px;padding-left: 0px;font-size: 1.0625rem;line-height: 1.6;text-rendering: optimizelegibility;font-variant-numeric: normal;font-variant-east-asian: normal;color: rgb(82, 83, 87);hyphens: manual;overflow-wrap: normal;">In this episode, Seth Lloyd and Allison Schmitt, Director of the Life Sciences Program at BCLT, teamed up to discuss the recent Celgene v. Mylan decision. The case explores the intersection between Hatch-Waxman litigation and patent-specific venue requirements.<p style="box-sizing: inherit;margin-top: 0px;margin-right: 0px;margin-bottom: 1.25rem;margin-left: 0px;padding-top: 0px;padding-right: 0px;padding-bottom: 0px;padding-left: 0px;font-size: 1.0625rem;line-height: 1.6;text-rendering: optimizelegibility;font-variant-numeric: normal;font-variant-east-asian: normal;color: rgb(82, 83, 87);hyphens: manual;overflow-wrap: normal;">Grab the podcast using your favorite podcast provider, or try one of the links below:<p style="box-sizing: inherit;margin-top: 0px;margin-right: 0px;margin-bottom: 1.25rem;margin-left: 0px;padding-top: 0px;padding-right: 0px;padding-bottom: 0px;padding-left: 0px;font-size: 1.0625rem;line-height: 1.6;text-rendering: optimizelegibility;font-variant-numeric: normal;font-variant-east-asian: normal;color: rgb(82, 83, 87);hyphens: manual;overflow-wrap: normal;"><a href="https://protect-us.mimecast.com/s/GiUMCOY5LGhp2NxmEcvVOID?domain=www2.mofo.com">Apple Podcasts</a><p style="box-sizing: inherit;margin-top: 0px;margin-right: 0px;margin-bottom: 1.25rem;margin-left: 0px;padding-top: 0px;padding-right: 0px;padding-bottom: 0px;padding-left: 0px;font-size: 1.0625rem;line-height: 1.6;text-rendering: optimizelegibility;font-variant-numeric: normal;font-variant-east-asian: normal;color: rgb(82, 83, 87);hyphens: manual;overflow-wrap: normal;"><a href="https://protect-us.mimecast.com/s/WS09CPN5gGSK50XEJT1jRzs?domain=www2.mofo.com">Google Podcasts</a><p style="box-sizing: inherit;margin-top: 0px;margin-right: 0px;margin-bottom: 1.25rem;margin-left: 0px;padding-top: 0px;padding-right: 0px;padding-bottom: 0px;padding-left: 0px;font-size: 1.0625rem;line-height: 1.6;text-rendering: optimizelegibility;font-variant-numeric: normal;font-variant-east-asian: normal;color: rgb(82, 83, 87);hyphens: manual;overflow-wrap: normal;"><a href="https://protect-us.mimecast.com/s/zAa3CQW5jXikNXPjJIkepPk?domain=www2.mofo.com">Spotify</a>

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Podcast: Hatch-Waxman and Venue - Simple Stuff, RIght?

Podcast: More IPR Constitutional Challenges & More Attorneys’ Fees

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Podcast: Hatch-Waxman and Venue - Simple Stuff, RIght?

Morrison & Foerster and the Berkeley Center for Law & Technology (BCLT) have teamed up to present a bi-weekly podcast addressing recent Federal Circuit decisions.In this episode, Brian Matsui and Wayne Stacy discuss the most recent constitutional challenges to IPRs addressed by the Federal Circuit.  They also take a look at how much discretion district courts have in addressing attorneys’ fees under Section 285.Grab the podcast using your favorite podcast provider, or try one of the links below:<a href="https://podcasts.apple.com/us/podcast/beyond-the-holding-a-nuanced-look-at-the/id1579362102?i=1000540070077">Apple Podcasts</a><a href="https://podcasts.google.com/feed/aHR0cHM6Ly9iY2x0LWV4cGVydC1zZXJpZXMuY2FzdG9zLmNvbS9mZWVk/episode/aHR0cHM6Ly9iY2x0LWV4cGVydC1zZXJpZXMuY2FzdG9zLmNvbS9wb2RjYXN0cy8yNzE1MS9lcGlzb2Rlcy9iZXlvbmQtdGhlLWhvbGRpbmdhLW51YW5jZWQtbG9vay1hdC10aGUtZmVkZXJhbC1jaXJjdWl0MzlzLXBhdGVudC1kZWNpc2lvbnMtZXBpc29kZS0z?sa=X&ved=0CAUQkfYCahcKEwiApaCmmfDzAhUAAAAAHQAAAAAQAg">Google Podcasts</a><a href="https://open.spotify.com/episode/1PkBRMRLZ6e09fMEd5BAM2">Spotify</a>

Podcast: More IPR Constitutional Challenges & More Attorneys’ Fees

Morrison & Foerster and the Berkeley Center for Law & Technology (BCLT) have teamed up to present a bi-weekly podcast addressing recent Federal Circuit decision

Morrison & Foerster and the Berkeley Center for Law & Technology (BCLT) have teamed up to present a bi-weekly podcast addressing recent Federal Circuit decisions. In our most recent episode, Seth Lloyd and Wayne Stacy discuss a recent decision about whether a non-disclosure agreement with a forum selection clause can prevent a party from filing a petition for inter partes review.  Seth and Wayne also look at another recent decision that serves as an important reminder for both appellants and appellees to be on the look out for alternative rationales in an appealed decision.  Grab the podcast using your favorite podcast provider, or try one of the links below:<a href="https://podcasts.apple.com/us/podcast/beyond-the-holding-a-nuanced-look-at-the/id1579362102?i=1000538715581">Apple Podcasts</a><a href="https://podcasts.google.com/feed/aHR0cHM6Ly9iY2x0LWV4cGVydC1zZXJpZXMuY2FzdG9zLmNvbS9mZWVk/episode/aHR0cHM6Ly9iY2x0LWV4cGVydC1zZXJpZXMuY2FzdG9zLmNvbS9wb2RjYXN0cy8yNzE1MS9lcGlzb2Rlcy9iZXlvbmQtdGhlLWhvbGRpbmdhLW51YW5jZWQtbG9vay1hdC10aGUtZmVkZXJhbC1jaXJjdWl0MzlzLXBhdGVudC1kZWNpc2lvbnMtZXBpc29kZS0y?sa=X&ved=0CAUQkfYCahcKEwiIicDlm9fzAhUAAAAAHQAAAAAQAQ">Google Podcasts</a><a href="https://open.spotify.com/episode/5nRHruxwJG5PJ6Ma5sWuLr">Spotify</a>

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Podcast: NDAs & IPRs & Forum Selection Clauses, Oh My!

Our Podcast with BCLT and the comeback kid: SRI v. Cisco round II

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Podcast: NDAs & IPRs & Forum Selection Clauses, Oh My!

At Federal Circuitry, we’ve started discussing interesting Federal Circuit cases and developments with the Berkeley Center for Law & Technology in their Expert Series Podcasts. Please find the first episode discussing <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1685.OPINION.9-28-2021_1841166.pdf">SRI International v. Cisco Systems</a> <a href="https://www.law.berkeley.edu/research/bclt/bclt-podcast-series/">here</a> (or directly on Spotify <a href="https://open.spotify.com/episode/2g1AeJ0GRHlVJNEOSyEHG9">here</a>).We very easily could have done a case of the week post about SRI, as it’s an interesting case on so many levels—both on the process and law. Starting with a bit of process: SRI is a comeback case. A comeback case is one that gets remanded by the Court and then comes back to the Court after the remand. (It also can be one where the Court rules and the Supreme Court sends it back too, but that’s not the circumstance here.) When a case comes back to a court of appeals after being remanded to a district court or agency, different circuits have different rules on whether—and to what extent—the original panel judges get the case back. In the Federal Circuit, usually one or two of the original judges on the panel hear the case when it gets appealed again. Sometimes you can find comeback cases on the Federal Circuit’s list of <a href="http://www.cafc.uscourts.gov/scheduled-cases">“scheduled cases”</a>—cases where a judge is being substituted into a panel are noted with a “+” sign. One reason (but not the only reason) a judge is being substituted into a “plus” panel can be to reconstitute some of the original panel that heard the case the first time it went on appeal.SRI is a little unique because not only is it a comeback case, but it has all three of the original panel members on it the second time around: Judges Lourie, O’Malley, and Stoll. And both times Judge Stoll wrote the opinion, the first time in favor of the defendant and the second time in favor of the patent owner plaintiff.What’s also interesting is what happened between the first and second times the case was decided by the Federal Circuit. While there were a lot of issues in the case, we’re just going to focus on one: willfulness. In round 1, the Court vacated and remanded the verdict of willful infringement that led to doubling the jury’s award of over $23 million. The Court concluded that “the record is insufficient to establish that Cisco’s conduct rose to the level of wanton, malicious, and bad-faith behavior required for willful infringement.” <a href="https://scholar.google.com/scholar_case?case=7298931823735333061&q=930+f3d+1295&hl=en&as_sdt=20006">SRI I</a>. And the Court noted that Cisco was unaware of SRI’s patent until May 2012, so there could be no willful infringement (and no enhanced damages) before that date. It thus remanded for the district court to determine whether the record supported willfulness after Cisco had knowledge of SRI’s patent and, if so, whether damages should be enhanced.On remand, the district court faithfully applied the willfulness standard that the Federal Circuit made “clear” in SRI I. The district court did state, in “a side note,” that “the Court of Appeals is not entirely consistent in its use of adjectives to describe what is required for willfulness.” The district court noted that in other cases, the Federal Circuit stated that “no more than deliberate or intentional infringement” is required. Nonetheless, the district court did not find substantial evidence that Cisco’s infringement was “wanton, malicious, and bad-faith” to permit willful infringement and enhanced damages.That brings us to round 2 in the Federal Circuit. The Court noted that “the district court reasonably read our opinion to require a more stringent standard for willful infringement than our other cases suggest—conduct rising to ‘the level of wanton, malicious, and bad-faith behavior.’” And rather than fault the district court or allow any confusion to persist, the Court stated:To eliminate the confusion created by our reference to the language “wanton, malicious, and bad-faith” in Halo, we clarify that it was not our intent to create a heightened requirement for willful infringement. Indeed, that sentence from Halo refers to “conduct warranting enhanced damages,” not conduct warranting a finding of willfulness.The Court then made clear that willfulness requires “a jury to find no more than deliberate or intentional infringement.” Applying that standard, the Court held that substantial evidence supports the jury’s willful infringement finding—reversing the district court, again (although this time for setting aside the jury finding rather than upholding it). As an outside observer, it definitely seems fitting and helpful that the same exact panel decided both cases, and could clarify—if not correct—what it said the first time around.One final thought: the Court didn’t remand for the district court to decide whether enhanced damages were warranted for willful infringement. One might wonder, how can that be? After all, enhancement is not automatic; “[d]iscretion remains with the district court to determine whether the conduct is sufficiently egregious to warrant enhanced damages.” Yet here, the Court reinstated the original enhancement award, noting that the district court “properly considered this issue” in its original decision (before SRI I) and that “vacating and remanding for the district court to decide the issue anew would serve little purpose.” Reinstatement was justified in part because the “parties informed this court for the first time in this appeal” of further facts about the damages period supporting the district court’s enhancement, facts the Court was unaware of in the first appeal. Whether that makes some part of SRI I merely an advisory opinion is a metaphysical question that perhaps we should leave for another day.

Our Podcast with BCLT and the comeback kid: SRI v. Cisco round II

At Federal Circuitry, we’ve started discussing interesting Federal Circuit cases and developments with the Berkeley Center for Law & Technology in their Expert 

Topic Archives: Podcast

Podcast: Beyond the Holding - A Nuanced Look at the Federal Circuit's Patent Decisions (Episode 6)

By: Seth W. Lloyd

Podcast: Beyond the Holding – A Nuanced Look at the Federal Circuit’s Patent Decisions (Episode 5)

By: Brian R. Matsui

Podcast: Hatch-Waxman and Venue - Simple Stuff, RIght?

By: Seth W. Lloyd

Podcast: More IPR Constitutional Challenges & More Attorneys’ Fees

By: Brian R. Matsui

Podcast: NDAs & IPRs & Forum Selection Clauses, Oh My!

By: Seth W. Lloyd

Our Podcast with BCLT and the comeback kid: SRI v. Cisco round II

By: Brian R. Matsui