Beyond the holding—A nuanced look at the Federal Circuit's patent decisions | Episode 3 BCLT's Expert Series

    • Education

This week, we interview Brian Matsui:
Is the USPTO bonus system for APJs still vulnerable if challenged by a factually-armed patent owner? And how much clearer can the Federal Circuit be—District Court judges have significant discretion on inequitable conduct.
 
Every other week, BCLT Executive Director Wayne Stacy conducts interviews with a Morrison & Foerster team member to discuss the Federal Circuit’s recent patent decisions. We all know the basic holdings. The key, however, lies in the nuances of how the Federal Circuit reached its decision. If you want to know more—with an eye toward predicting the future—we have the nuanced information for you.
 
SPEAKERS
Brian Matsui, Wayne Stacy
 
Wayne Stacy  00:00
Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series Podcast. I'm Wayne Stacy, the Executive Director for BCLT. And today, Brian Matsui from Morrison Foerster will walk us through a few of the recent interesting rulings from the Federal Circuit. Brian, thanks for joining us again.
 
Brian Matsui  00:20
Thanks a lot, Wayne.
 
Wayne Stacy  00:21
Well, Brian the last two weeks have been lied at the Federal Circuit on on precedential decisions. But we did get two interesting cases. So I'd love to start with the Mobility Workx case, which is another constitutional challenge to the PTAB structure. As we maybe haven't had enough yet. We get another one that's fairly unique. So you want to tell us about this one?
 
Brian Matsui  00:45
Yeah, I mean, this is sort of like the ghost of Arthrex, or something like that, since we're right around the time of Halloween right now. This is another IPR appeal, and the patent owners claims were cancelled. So again, since it's a constitutional challenge, we don't ever get to the merits of the actual IPR decision on what happened to the claims themselves. There were a couple of constitutional issues here. The patent owner requested to remand under the Supreme Court's Arthrex decision, you know, which, of course everybody knows, found an appointment clause violation. But actually, rather than just remanding the case and being done with it, the Federal Circuit first addressed a couple other constitutional challenges that the patent owner made. And I think that's probably the reason why we have a precedential opinion here, rather than just a straight remand, the Federal Circuit was able to sort of address these two issues and potentially, you know, foreclose them or make them more difficult for future litigants that want to raise them.
 
Wayne Stacy  01:46
So Brian, one of the issues that that came up earlier in this case, and that seems to be coming up frequently is the government forfeiture arguments. You want to explain why the government keeps raising and losing this one?
 
Brian Matsui  01:59
That's a good question. I mean, I think to take a step back, we should just look at why the government's involved in this case, because you know, it's an IPR dispute. And, of course, you know, the government can defend and does defend the final written decisions, but they're not usually in these IPR decisions. And whenever you raise a constitutional challenge to a federal law on appeal, you have to tell the Court of Appeals that you're doing so, so the court can tell the attorney general, and then the Department of Justice typically comes in and intervenes to defend the law. And that's what happened here. And what the government has been doing in these types of constitutional challenges to IPRs,

This week, we interview Brian Matsui:
Is the USPTO bonus system for APJs still vulnerable if challenged by a factually-armed patent owner? And how much clearer can the Federal Circuit be—District Court judges have significant discretion on inequitable conduct.
 
Every other week, BCLT Executive Director Wayne Stacy conducts interviews with a Morrison & Foerster team member to discuss the Federal Circuit’s recent patent decisions. We all know the basic holdings. The key, however, lies in the nuances of how the Federal Circuit reached its decision. If you want to know more—with an eye toward predicting the future—we have the nuanced information for you.
 
SPEAKERS
Brian Matsui, Wayne Stacy
 
Wayne Stacy  00:00
Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series Podcast. I'm Wayne Stacy, the Executive Director for BCLT. And today, Brian Matsui from Morrison Foerster will walk us through a few of the recent interesting rulings from the Federal Circuit. Brian, thanks for joining us again.
 
Brian Matsui  00:20
Thanks a lot, Wayne.
 
Wayne Stacy  00:21
Well, Brian the last two weeks have been lied at the Federal Circuit on on precedential decisions. But we did get two interesting cases. So I'd love to start with the Mobility Workx case, which is another constitutional challenge to the PTAB structure. As we maybe haven't had enough yet. We get another one that's fairly unique. So you want to tell us about this one?
 
Brian Matsui  00:45
Yeah, I mean, this is sort of like the ghost of Arthrex, or something like that, since we're right around the time of Halloween right now. This is another IPR appeal, and the patent owners claims were cancelled. So again, since it's a constitutional challenge, we don't ever get to the merits of the actual IPR decision on what happened to the claims themselves. There were a couple of constitutional issues here. The patent owner requested to remand under the Supreme Court's Arthrex decision, you know, which, of course everybody knows, found an appointment clause violation. But actually, rather than just remanding the case and being done with it, the Federal Circuit first addressed a couple other constitutional challenges that the patent owner made. And I think that's probably the reason why we have a precedential opinion here, rather than just a straight remand, the Federal Circuit was able to sort of address these two issues and potentially, you know, foreclose them or make them more difficult for future litigants that want to raise them.
 
Wayne Stacy  01:46
So Brian, one of the issues that that came up earlier in this case, and that seems to be coming up frequently is the government forfeiture arguments. You want to explain why the government keeps raising and losing this one?
 
Brian Matsui  01:59
That's a good question. I mean, I think to take a step back, we should just look at why the government's involved in this case, because you know, it's an IPR dispute. And, of course, you know, the government can defend and does defend the final written decisions, but they're not usually in these IPR decisions. And whenever you raise a constitutional challenge to a federal law on appeal, you have to tell the Court of Appeals that you're doing so, so the court can tell the attorney general, and then the Department of Justice typically comes in and intervenes to defend the law. And that's what happened here. And what the government has been doing in these types of constitutional challenges to IPRs,

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