News & Analysis as of

Patents Rule 36

Morrison & Foerster LLP - Federal Circuitry

Is It Ever Too Late To Be Rule 36’d?

Those that regularly practice before the Court know about Rule 36s. We’ve written about them before. It’s a one-line per curiam decision that generally comes a few days after oral argument...more

Morrison & Foerster LLP - Federal Circuitry

Who Wins, Who Loses – Still Worse To Be The Patent Owner On Appeal

We’ve been updating our stats pretty frequently but haven’t had a recent post about what—if anything—has changed in affirmance rates as more data has been compiled.  So with basically 2½ years of data, I thought we could look...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Introduction

Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no exception. It briefly returned to live...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (November 8-12): An Arbitrability Tongue Twister

Fall colors are on full display in DC. But leaf peeping can’t keep us from following the latest news at the Federal Circuit. Below we provide our usual weekly statistics and our case of the week—our highly subjective...more

Morrison & Foerster LLP - Federal Circuitry

Last Week In The Federal Circuit (August 30-September 3): Candor At The Patent Office

The Federal Circuit returned to a full week of in-person arguments last week.  But that didn’t keep it from issuing a range of decisions in patent and non-patent cases.  Below we provide our usual weekly statistics and our...more

Morrison & Foerster LLP - Federal Circuitry

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

The Federal Circuit announced last week that it will resume in-person oral arguments later this summer. The Court’s new protocols generally take effect with the September 2021 sitting, and we noticed that the Court has also...more

Morrison & Foerster LLP - Federal Circuitry

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

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

Morrison & Foerster LLP - Federal Circuitry

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

The Federal Circuit had a busy week, issuing 18 opinions—8 of them precedential.  One of those cases put a new spin on two PTAB-related issues we’ve covered extensively on this blog: Arthrex (which held PTAB judges were...more

Morrison & Foerster LLP - Federal Circuitry

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

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...more

Morrison & Foerster LLP - Federal Circuitry

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

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...more

Morrison & Foerster LLP - Federal Circuitry

Revisiting Cancelled Oral Arguments

It has been a little while since we took a look at what—from a statistics standpoint—went down at recent oral arguments. Since the Federal Circuit went remote, there was an initial wave of a high percentage of appeals that...more

Morrison & Foerster LLP - Federal Circuitry

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

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...more

Morrison & Foerster LLP - Federal Circuitry

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

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...more

Morrison & Foerster LLP - Federal Circuitry

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

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...more

Haug Partners LLP

Objective Indicia of Nonobviousness – Considered as Part of a “Totality of the Evidence” Approach or a “Prima Facie Framework”?

Haug Partners LLP on

On February 11, 2021, Amarin Pharma, Inc. (“Amarin”) filed a petition for a writ of certiorari with the Supreme Court seeking reversal of the Federal Circuit’s decision to affirm a finding that Amarin’s patents are invalid as...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (February 8-12): Patent Term Adjustments When Examiners Back Down

Did you remember to send your favorite examiner a Valentine’s Day card?  Okay, so maybe that’s not the typical applicant/examiner relationship.  But this week we do look at some potential consequences from the back and forth...more

Morrison & Foerster LLP - Federal Circuitry

Is Your Appeal More Likely to Be Affirmed Since the Court Went Remote? a Post Valentine’s Day Definitely, Maybe…

Last week I took a look at affirmance rates—both in general and excluding Rule 36s (see It’s Two Weeks After Your Argument, And You’ve Heard Nothing. What Does That Mean). This week I decided to see what things have been...more

Morrison & Foerster LLP - Federal Circuitry

It’s Two Weeks After Your Argument, And You’ve Heard Nothing. What Does That Mean?

Since we started this blog, we have taken a look at win-loss percentages a number of times.  Now that we recently updated our statistics, we took another look.  This time we thought we’d add a twist to our calculations by...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (February 1-5): The Growing Universe of Printed Publications

Since yesterday was the Super Bowl, we assume that all of our readers spent today as we did, thinking about the Federal Circuit's recent decision in M&K Holdings about a video compression patent. If not, we've got you...more

Morrison & Foerster LLP - Federal Circuitry

Who Gets Oral Argument (Revisited): January Argument Recap/February Argument Preview

Out with the old, and in with the new: it’s Court week for the short February month, so we thought we’d revisit what happened at oral arguments last month and what’s happening now....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Data and Trends: AIA PTAB Appeals to the Federal...

These charts and graphs appear in the firm's Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions report... Appeals from the USPTO dipped in FY20, reaching their lowest level since FY15. After four...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (January 4-8): Mooting your opponent’s appeal

Now that the new year has started, we’re seeing an uptick in precedential opinions.  This week we decided to turn back to patent appeals, taking a look at IPRs and Article III—always a fun topic.  Below we provide our usual...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (December 14-18): And/or confusion

Last week, we got what may be the last big batch of Federal Circuit opinions of 2020.  (In 2019, only six more opinions issued between this time and the end of the year.)  Although most of last week’s decisions were issued...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (December 7-11): Standing and Invalidating the Court’s Own Local Rule

This week we talk about the most important standing decision decided by any court last week.  Ok, perhaps, it was the second most important standing decision.  Last week’s case addresses who may sue, and when they must sue...more

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