En Banc Question: When does Remote Work Become an “Established Place of Business?”

by Dennis Crouch

In re Monolithic Power Systems, Inc. (Fed. Cir. 2022) (MonolithicEnBancPetition)

Back in 2021, Bel Power sued Monolithic for patent infringement in Waco Texas. 21-cv-00655.  Monolithic did not want to be a defendant before Judge Albright and so moved to dismiss/transfer:

  1. to dismiss/transfer the case for improper venue, 28 U.S.C. 1400(b), and alternatively
  2. to transfer the case on convenience grounds. 28 USC 1404(a).

Judge Albright denied both motions and Monolithic immediately petitioned the Federal Circuit for a writ of mandamus.  In September 2022, that petition was denied with a 2-1 decision. Judges Chen and Stark joined together in a per curiam majority opinion and Judge Lourie wrote in dissent.  Dennis Crouch, Remote Work and Patent Venue, Patently-O (Sept 30, 2022).

Now Monolithic has asked the Federal Circuit to reconsider its case en banc., focusing on the interpretation of 28 U.S.C. § 1400(b)’s requirement of a “regular and established place of business” in today’s remote-work and global-shipping world.  Here, Monolithic has several employees who work in the district for the purpose of serving customers in the district.  This includes both sales and engineering. And, at least according to Judge Abright this is not a ‘work-wherever-you-want’ situation. Rather, Monolithic wants some boots on the ground in Austin and other WDTX. locations to serve their clients in those locations.  In that regard, Judge Albright concluded that Monolithic maintains a continuous physical presence within the district by replacing the local employees that leave/move.  There is an expectation that those folks will keep MPS stored property in WDTX as well, both for sales and service.  In its en banc petition, Monolithic cites a long line of cases going back 100+ years that employee homes don’t count.

Proper venue is rarely a big deal these days in Federal Litigation.  Congress amended the venue statutes so that, in most cases, venue rises and falls with personal jurisdiction.   But, patent law is different.  In the late 1800s Congress created a special venue statute for patent cases that has stuck despite changes in the general law.  A US corporate defendant can be sued either:

  1. In the state of incorporation; or
  2. In a district where the defendant (a) “has committed acts of infringement” and (b) “has a regular and established place of business.”

28 U.S.C. 1400(b).  When a lawsuit is filed based upon improper venue, the district court will need to either dismiss the action or transfer the case to a district having proper venue.  Here, Monolithic argues that venue is improper because it lacks “a regular and established place of business” within the Western District of Texas. Meanwhile, the case is proceeding before Judge Albright. Claim construction is complete and discovery is ongoing. Trial is set for May 12, 2023.

One thing I’ll note is that in 2020, Monolithic filed two different patent infringement lawsuits in Waco as plaintiff.  22-cv-00320; 20-cv-00876.  But, there is no “good for the gander” principle for proper venue.  The statute has no clause indicating that suing a third party does not generally serve as an admission of proper venue.  (I believe it should serve as an admission that venue is likely convenient under 1404(a)).  What it does do, however, is make Monolithic an unsympathetic mandamus petitioner.

Patents at issue: U.S. Patent Nos. 6,936,999, 6,949,916, 7,000,125, 7,049,798, 7,080,265, and 7,456,617.  The primary accused product is a power management bus (MPM3695) used on integrated circuits.

= = =

Both parties have a team of lawyers, but it appears that Bell Power is primarily represented by Brian Sodikoff’s team at Katten Muchin.  Morrison & Foerster’s Deanne Maynard is representing Monolithic at the Federal Circuit.  MoFo is also at the district court, along with attorneys from Perkins Coie.

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PPAC 2022 Annual Report

The Patent Public Advisory Committee (PPAC) includes nine voting members appointed by the Secretary of Commerce.  The committee is charged with reviewing “policies, goals, performance, budget, and user fees of the United States Patent and Trademark Office … and advise the Director on these matters.”  35 USC 5. The statute also charges the committee with preparing an annual report.  This year’s report is one of the most thoughtful that I have read and focuses the adjectives that we’d like to see in our patent system:  accessible, predictable, durable, enforceable, affordable, and understandable patent rights.

Read the report here: https://www.uspto.gov/sites/default/files/documents/PPAC-2022_annual-report.pdf

Fifth Circuit Seems to Raise the Bar on Venue Transfer Mandamus

by Dennis Crouch

The Federal Circuit has been extremely active over the past few years in hearing mandamus petitions filed under the convenient venue provisions of 28 U.S.C. 1404(a).  Most often, these petitions have come from patent infringement defendants who were sued in Judge Albright’s Waco court.  To be clear, these are cases where venue is proper, but where the defendant argue that a different venue will be clearly more convenient:

For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought or to any district or division to which all parties have consented.

28 U.S.C. 1404(a).  Convenient venue is not a patent-specific doctrine and so the Federal Circuit follows the law of the regional circuits when deciding these cases.  For cases out of Texas, this is 5th Circuit law.   The 5th Circuit very rarely decides mandamus cases, so the Federal Circuit has actually been substantially developing the law in the interim.  But, the 5th Circuit recently issued a mandamus denial that  should tend to help Judge Albright (and other patent law loving district court judges) keep their patent cases.

In re Planned Parenthood Fedn. of Am., Inc., 52 F.4th 625 (5th Cir. 2022).

This case started as a qui tam false claims act against Planned Parenthood–alleging millions of dollars of false or fraudulent Medicaid claims.  The case was originally filed in Amarillo (N.D.Tex.), and Planned Parenthood moved for a transfer of venue to Austin (W.D.Tex) as a much more convenient forum.  The district court denied the motion and Planned Parenthood filed this mandamus petition.

The 5th Circuit has denied the petition on several grounds. Although all three members of the panel agreed to the denial, only one other judge joined Judge Elrod’s decision (Joined by Judge Graves; with Judge Ho concurring in judgment).

The opinion walks through several important elements of 5th Circuit venue-mandamus jurisprudence, but the opinion repeatedly returns to the broad discretion given to district courts in deciding convenient venue questions:

We reiterate that district courts have broad discretion in deciding motions to transfer; they need only grant such a motion where the evidence demonstrates that the destination venue is “clearly more convenient” than the chosen venue. We review that decision “only for clear abuses of discretion that produce patently erroneous results.” The district court carefully considered each of the private and public interest factors, ultimately concluding that they do not weigh in favor of transfer. The standard for reversing that holding is high.

Id.  These statements are all found in prior precedent, but the forceful new precedent may shift Federal Circuit’s doctrine.

The Federal Circuit has been reticent to give Judge Albright credit for his familiarity with technology and patent law (as well as that of his magistrate judge).  In Planned Parenthood, the Amarillo district court had noted his familiarity with the law as one factor for keeping the case.  On mandamus, the appellate panel found no abuse of discretion with that approach.

One common factor analyzed by the courts is location of the evidence.  Here, the appellate panel explained that factor can be important, but not where the “vast majority of the evidence [is] electronic, and therefore equally accessible in either forum.”  In its prior precedent of Volkswagen, the 5th Circuit had placed greater weight on this factor, but that was because the evidence was “physical in nature.”

The court also felt it was appropriate to take into account the low cost of staying in hotels and eating in Amarillo as compared to Austin.  Although Waco may be a bit more costly than Amarillo, it is so much cheaper than Silicon Valley or Delaware.  “[W]e cannot say that this analysis is based on incorrect legal principles or erroneous factual findings such that it would constitute an abuse of discretion.”

A key factor in this caw that weighed against transfer is that Planned Parenthood first made a 12(b)(6) motion to dismiss the case and then, after losing that motion, filed its motion to transfer. “inexcusable delay” can strongly weigh against transfer.

More on the Patent Attorney Rolls

by Dennis Crouch

The USPTO Office of Enrollment & Discipline’s list of registered patent attorneys and agents includes 48,625 individuals. Since there are no annual dues, CLE requirement, or even check-in many folks continue to stay on the rolls even though they are not practicing patent law.  One example is my colleague Professor Royce Barondes who passed the patent bar exam prior to law school and then never practiced in the field. Instead, he practiced law at Cravath in NYC and now teaches business courses, contracts, and firearms law. I wanted to get a more accurate number of folks currently practicing in the patent prosecution area. Do do this, I downloaded and parsed through USPTO records for utility patent applications filed since mid 2018 and that have been made public. (Series codes 16 and 17).

The Totals: 26,756 practitioners are associated with at least one application filed over the past four years; with 23,793 associated with at least 10 different utility patent applications.  About 80% are attorneys with the remaining 20% being patent agents. The result here does not necessarily mean that all of these attorneys worked on patent prosecution because many firms use a comprehensive customer number that lists all registered attorneys in the firm’s patent group.  This leads to crazy situations like patent agent Maki Saitoh of Oblon being associated with 31,000+ laid open applications filed over the past 4 years.  In addition, we have some undercounting because some folks doing patent prosecution work are not listed in the customer number (e.g., often in house counsel will not be listed).

I mentioned Oblon above. Although Oblon is not in the top-25 of firms in terms of patent attorneys, they are the #1 filer of US patent applications followed closely by Sughrue.  They are able to file so many applications because most of their apps claim priority to a foreign or PCT filing — so they don’t need to write a new original application.  Some firms with lots of patent attorneys don’t do much patent prosecution work.  An extreme of this is Kirkland & Ellis that has over 100 patent attorneys but does not do any patent prosecution.

Firms with the Most Patent Attorneys and Agents

The following list ranks the top 25 firms with the most registered  patent law professionals.  All of these firms have 100+ patent attorneys/agents.  I also include a note following the firm with some information about how the numbers have changed since 2010.

  1. Fish & Richardson (Steady)
  2. Finnegan Henderson (Down 50+, Spin-off firms, including Bookoff McAndrews & McNeill Baur)
  3. Wilson Sonsini (More than doubled, mostly new attorneys/agents)
  4. Knobbe Martens (Steady)
  5. Kilpatrick Townsend (Big growth from merger of firms)
  6. Foley & Lardner (Steady)
  7. Baker Botts (Steady)
  8. IBM (Steady)
  9. Perkins Coie (More than doubled)
  10. Morrison & Foerster (Steady)
  11. Cooley (More than doubled, mostly new attorneys/agents)
  12. Sterne Kessler (Some growth)
  13. Morgan Lewis (Some growth)
  14. Jones Day (Some decline)
  15. Schwegman Lundberg (Doubled)
  16. Wolf Greenfield (Doubled)
  17. Banner & Witcoff (Some growth)
  18. Polsinelli PC (Huge growth, including folks from Novak Druce;  Dorsey; etc. and also new attorneys)
  19. Johnson & Johnson (company)
  20. Alston & Bird (Steady)
  21. Kirkland & Ellis (Steady)
  22. Haynes and Boone (Growth – mostly new attorneys)
  23. Mintz Levin (Doubled – mostly new attorneys)
  24. Qualcomm (Some growth)
  25. Harness IP (Some decline)

Firms with the biggest losses of folks since 2010 include Kenyon & Kenyon (firm closed — 150 people); Brinks (down to 86 from 160, folks left to go to lots of different places); Woodcock (most joined BakerHostetler); Blakely Sokoloff (firm closed an many joined Womble Bond but also spin-off firms of Jaffery Watson; Nicholson De Vos); Connolly Bove (firm closed); Fitzpatrick Cella (Firm closed with many joining Venable); Ropes & Gray (lots of folks left to other firms, including spin-off Haley Guiliano); Novak Druce (lots of poaching, including by Polsinelli; Duane Morris, etc.).

The list has a some big caveats.  (1) The data comes from the USPTO register, and some attorneys are not good at updating their information. For example. Kenyon & Kenyon closed its doors in 2016, but 30+ registrations still list the firm.  (2) A number of folks use their home (or some other) address rather than firm address for the registration. (3) Retired folks often do not update their registration.

Buyers Guide for your Patent Attorney

Happy Thanksgiving to Patently-O readers out there — new and old!   I am grateful to you for all your kindness, trust, and support through the years. Let me know how I can help in the future!

If you are shopping for holiday gifts for the patent attorney in your life (or perhaps self-indulging), here are a few gift ideas.

  1. Autonomous Vacuum: If they don’t have a robot vacuum. Oh my.  Any real patent law firm will have a few of these always skirting around. The iRobot Roomba j7 is a great option.
  2. Dyson Airwrap.  This device is super cool and “makes hair styling a breeze”(TM).  It is also the subject of dozens of patent and trademark infringement lawsuits with Dyson relentlessly pursuing knock-off brands.  Knock-offs are  still profitable because this baby costs $$$.
  3. Pad and Paper. Many of us work on computers all day and it is helpful to get offline whenever possible. But, searching for notebooks online is pretty tricky because Google thinks we’re wanting to buy a computer.  The German-made LEUCHTTURM1917 cuts through the tech with 251 numbered pages of DOTTED paper for your dreams, thoughts & ideas.
  4. Patent Art. I have a Wright-brothers patent on the wall in my office as well as a couple of products that I helped protect back-in-the-day.  There are lots of suppliers of these.  I bought mine from My Patent Prints as with most things, Amazon also has a wide variety.
  5. Spill-Free Mug: I ride my bicycle to work and so a non-spillable mug is important. This Contigo Coffee Mug takes a licking without any leaking (and dishwasher safe).
  6. Camping Gear: I do short solo camping trips a couple of times every year.  Although it is a bit harsher, I prefer the winter because usually I’m the only human in the woods at an otherwise popular campsite.  You don’t need much gear to get started: (1) tent; (2) sleeping bag.  One key is to have a nice thick sleeping pad.  These were developed by Therm-a-Rest, but their patents seem to have expired and so there are thousands on the market.
  7. Red Light Therapy: A couple of years ago while my spouse was away at a conference, I ordered a bunch of cedar and a sauna in my house.  I have a 220v Finnish style heater, and I also have an array of red-lights for red-light therapy.  I went all-out, but it is easy to get started with simply the red-lights that have been shown to provide lots of health benefits.  My set comes from a friend of mine who runs the company Sauna Space.  His are incandescent bulbs and so also give off lots of heat.  Lots of LED versions are also available.
  8. EMS: OK – The Katalyst Fit just looks super cool to me.  It uses “electro muscle stimulation” to help you lift and shock your muscles into action.
  9. Sony Playstation Classic: This classic console comes pre-loaded with 20 games from the late 1990s, including Final Fantasy 7.

I left off the one thing I’ve been thinking about – a fancy espresso machine.  I am usually the first one up in my house and take a few minutes to make myself an espresso coffee. But, it is a bit of a process because I use an Italian stove-top espresso pot – a Moka Pot.  After that, I usually add some almond milk and some protein powder.  What do folks think about the small Breville machine?  OK – after watching this video on Cleaning the Breville, my process seems much simpler, faster, and cheaper.

Jack Daniel’s Properties v. v. VIP Products (Supreme Court 2022)

Link to the docket: https://www.supremecourt.gov/search.aspx?filename=/docket/docketfiles/html/public/22-148.html

Happy thanksgiving everyone.


Is TRUMP TOO SMALL for the Supreme Court?

by Dennis Crouch

Vidal v. Elster (2022)

Over the past decade, a number of traditional prudential limits on trademark coverage have been found to be unconstitutional limits on free speech. See, Matal v. Tam, 137 S. Ct. 1744 (2017) (disparaging marks) and Iancu v. Brunetti, 139 S. Ct. 2294 (2019) (immoral . . . or scandalous matter).  The most recent showdown involves Steve Elster’s attempt to register the mark TRUMP TOO SMALL.  The USPTO refused to register the mark based upon the statutory requirement barring registration of “a name, portrait, or signature identifying a particular living individual except by his written consent.”  Lanham Act Section 2(c).  On appeal, however, the Federal Circuit ruled that that the limit here is content-based and that the Government had not provided a compelling or even substantial government interest.

[T]he government does not have a privacy or publicity interest in restricting speech critical of government officials or public figures in the trademark context–at least absent actual malice, which is not alleged here.

In a new request-for-extension filing, the US Gov’t has indicated that it is considering petitioning the case to the U.S. Supreme Court as a step too far.  The request does not detail the potential question presented but simply that time is needed.

The Solicitor General has not yet determined whether to file a petition for a writ of certiorari in this case. Additional time is needed for further consultation within the Department of Justice and with the Department of Commerce and the USPTO regarding the potential legal and practical ramifications of the court of appeals’ decision.

The petition is now due December 29, 2022.

Trade Dress Product Design: Power of the Presumption of Validity

by Dennis Crouch

SoClean v. Sunset Healthcare Solutions (Fed. Cir. 2022)

The SoClean’s eponymous product cleans CPAP machine parts. Sunset was a former distributor for SoClean, but has now become a competitor.  The SoClean device has a compact filter that should be replaced every six-months–creating a nice subscription market. Sunset sells a generic version of the same filter. Litigation ensued.

SoClean’s problem back in 2018 was how to protect these filters with intellectual property.  The company had waited too long to file for patent protection and so it turned to trademark.  The USPTO complied and issued registered two trademarks on the filter shape.  The two (shown below) are almost identical except for some dashed lines.

With the trademark registration in-hand, the district court partially granted SoClean’s motion for preliminary injunction.  However, instead of barring Sunset from selling its competing products, it prohibited Sunset marketing or advertising its filter in any bare form.  Rather, the defendant must “prominently display the Sunset brand name in a manner that leaves no reasonable confusion that what is being sold
is a Sunset brand filter.” District Court Opinion.   The case is still pending at the district court (involving other products and claims), but an order granting a preliminary injunction is automatically appealable.  And, because the complaint includes patent infringement claims, the appeal was directed to the Federal Circuit.

On appeal, the Federal Circuit affirmed, but only after reviewing some interesting arguments from Sunset.

Secondary Meaning: Trade dress is only protectable upon showing of secondary meaning.  Here, however, Federal Registration serves as prima facie evidence of validity. 15 U.S.C. § 1057(b).  Sunset pointed to mistakes made by the trademark examiner, but the appellate court found those complaints legally insufficient.  In particular, the court concluded that the statutory presumption of validity implicitly forbids simply reviewing and reconsidering the work already done by the TM examiner.

[S]crutinizing the application process and deciding whether the trademark examiner was correct to issue the registration in the first place is the opposite of presuming that the registration as issued is valid.

Slip Op.  Sunset can undermine secondary meaning, but it must do so by providing evidence rather than simply poking holes in the prosecution process.

Important note here.  I mentioned errors by the trademark examiner.  They are actually quite significant.  I read looked through the USPTO file jacket and was unable to see any evidence presented of secondary meaning except for a self-serving statement from SoClean’s VP of IP that the product was distinctive and had been used for at least five years in a manner that was “substantially exclusive and continuous.”  In general, that amount of evidence is insufficient to support a product design trade dress registration.

In order to protect trade dress, the courts apply a “vigorous evidentiary requirement” to ensure that the mark has obtained secondary meaning.  Because the burdens had shifted upon registration, the district court wrote that Sunset now had the “vigorous” requirement.  On appeal, the Federal Circuit rejected the “vigorousness” portion of the district court’s opinion, but fount that a harmless error.  Sunset’s burden is simply to provide a preponderance of the evidence showing that the mark lacks secondary meaning.  But here, presented evidence that was “equivocal, at best.”

Equivocal evidence plainly fails to satisfy a preponderance-of-the-evidence standard, so Sunset is wrong to suggest that the district court would have reached a different result had it applied the correct standard. The district court’s misstatement of the applicable standard of  roof is harmless error.

Slip Op.

Functionality: You likely considered the filter above and thought – this seems like the purview of patents rather than trademarks. Here, Sunset argues that the trade dress design “is entirely utilitarian” and therefore not protectable as trade dress.  The district court concluded that the filter head design includes “some arbitrary elements” — enough so that the presumption of validity applies here.

Irreparable Harm: The Trademark Modernization Act of 2020 states that a TM plaintiff seeking any injunction “shall be entitled to a rebuttable presumption of irreparable harm.” 15 U.S.C. § 1116.  Sunset did not attempt to rebut that presumption in this case.

Illusion Systems

Mike Brister is a theme park designer and I love his 2022 patent directed to a “vanishing illusion system.”  U.S. Patent No. 11,235,258 .

The basic idea is that a portion of the glass is reflective while other portions are transparent. But, the room on the other side is a mirror-image room–identical except that for the person trying to see himself in the mirror. A higher tech-version involves moving the mirror/transparent portions for various effects.

Patent examiner issued a first-action allowance on the following claim:

1. A system for generating a vanishing illusion, the system comprising: a first room; a second room, wherein the second room mirrors the first room; a wall separating the first room from the second room, wherein the wall comprises: a transition glass comprising a mirrored portion and a transparent portion; and a frame through which the transition glass is configured to move; and an actuator configured to move the transition glass with respect to the frame such that the mirrored portion is in alignment or out of alignment relative to the frame based on a trigger or a condition being met.

= = = =

Query: If an illusionist had used something similar to fool audiences in public performances, would it be prior art?

You can find a great post on magical patents from Leopoldo Belda Soriano on his blog: Magical Patents.

MAGICAL PATENTS (When magic is patented)

Dual-Purpose Communications and Privilege

by Dennis Crouch

The NY IP Law Association (NYIPLA) recently filed an amicus brief in the pending  anonymous Supreme Court case captioned In re Grand Jury, 21-1397 (2022).  The case focuses on the scope of attorney client privilege, especially with regard to dual-purpose communications.

Petitioner is a law firm specializing in international tax and had provided tax law advice to an expatriation client and also prepared individual tax returns for the client.  Later, the US Gov’t began a criminal tax investigation of the client and subpoenaed the law firm to provide Grand Jury testimony and evidence.  The law firm resisted, but both the district court and Ninth Circuit Court of Appeals ordered compliance.  In prior precedent, the courts have ruled that preparation of a tax return is a non-legal function, and thus, communications for that purpose are not privileged.  However, advice regarding tax planning and tax controversies is legal advice and thus communications are privileged. The attorney-client communications in this case thus fall under the category of dual-purpose communications where some aspect of the communications are privileged and other aspects are not privileged.

The lower court approach was two-fold. First, the court concluded that dual-purpose communications are entirely protected only when the primary purpose of the communication involved seeking legal advice.  Using that test, the court found that some of the communications were not privileged because they were primarily associated with tax return prep.  Thus, the law firm was ordered to deliver the documents.  Still, the court did not run entirely roughshod over attorney-client privilege. Rather, the second part of the lower court approach that any portions of the communications that contain attorney-client privileged material can be redacted.  Still, the law firm doesn’t want to disclose the communications at all and suggests that communications should entirely protected when the legal advice was “one of [its] significant purposes.” The Supreme Court recently agreed to hear the case with oral arguments set for January 2023.

Question Presented: Whether a communication involving both legal and non-legal advice is protected by attorney-client privilege where obtaining or providing legal advice was one of the significant purposes behind the communication

[Petition]. In its responsive briefing, the U.S. Government reframed the question as follows:

Whether the district court permissibly denied petitioner’s general claim of attorney-client privilege over communications, related to the preparation of a tax return, that did not have obtaining legal advice as their primary purpose, while instructing that all legal advice contained in the communications be redacted

[Gov’t Opposition].  The “significant purpose” test comes from a 2014 D.C. Circuit decision by Judge Kavanaugh, who is now a member of the Supreme Court. In re Kellogg Brown & Root, 756 F.3d 754 (D.C. Cir. 2014).

In their Amicus Brief, NYIPLA argues that the situation faced by the tax lawyers here is also prevalent for IP attorneys because IP lawyers are often experts in both the law and in the relevant field of the IP. For example, many patent attorneys also hold advanced degrees in a particular technical field and regularly use that knowledge in providing advice.  Likewise, many patent attorneys (especially in-house counsel) develop extensive knowledge of the firm’s business activities and goals and integrates those into their analysis.  According to the briefs, the 9th circuit rule “which requires courts to balance the legal and nonlegal aspects of a communication to determine its predominant purpose, hamstrings IP attorneys and clients.”   Irena Royzman (Kramer Levin) is counsel of record for the NYIPLA brief.



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Cross-Border Inventing

by Dennis Crouch

The chart below highlights an important trend in patenting: increased joint-inventorship where the inventors reside in different countries.  The top (blue-circle) series looks generally at cross-border joint-inventing while the lower (orange-square) series reports a subset where at least one of the inventors has a US residence.

One important caveat here is that the inventor’s permanent residence does not necessarily mean that the inventors where physically distant since one or more inventors may have been temporarily on location.  Further, residence is typically designated at the time the patent application is filed, and inventors may have moved in the interim between inventing and their US filing.  The rise in cross-border inventing also correlates with the rise in joint inventorship.  From 2005 to 2022, the average number of inventors per patent rose from 2.5 up to over 3.   If we reach back to 1985, most US patents listed only one inventor. By 2005, only 37% of utility patents were single inventor endeavors.  Today, the figure is down to 26%.


Disclaimer: Now and Later

by Dennis Crouch

The Federal Circuit’s decision in CUPP Computing v. Trend Micro includes a big discussion on treatment of disclaimers.  The patentee (CUPP) filed the appeal after the PTAB issued its final written IPR decisions finding the claims of three mobile device cybersecurity patents to be unpatentably obvious. IPR2019-00764, -00765, -00767.

In the IPR, CUPP was seeking a narrow construction of its claims in order help it skirt the prior art.  The claims all require a “security system processor” that is “different than” from the mobile device processor.  During prosecution, CUPP distinguished prior art that included both processors using the same motherboard as not “different.”  Later during the IPR, CUPP argued that this distinction meant that the two processors must be “separate and remote” from one another.  During the IPR, CUPP also expressly disavowed claim coverage where the security system processor is embedded in the mobile device.  Despite these arguments, the PTAB gave the claims a broad construction that allowed for both processors to be embedded next to one another.  This interpretation meant that the prior art killed the claims.

On appeal, the Federal Circuit has affirmed on this point.  First, as to the original prosecution.  The court concluded that the statements were not a clear disavowal of scope.  The court noted that the statements could be reasonably interpreted in more than one way and thus failed to meet the high burden of prosecution disclaimer.

The doctrine of prosecution disclaimer precludes patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution. However, a patentee will only be bound to a disavowal that was both clear and unmistakable.

Slip Op. (quotation marks, alterations, and citations omitted).

As to disavowal during the IPR, the Federal Circuit has previously held the PTAB is not required to accept a disavowal of scope during an IPR.  However, that prior decision was non-precedential. VirnetX Inc. v. Mangrove Partners Master Fund,
Ltd., 778 F. App’x 897, 910 (Fed. Cir. 2019).  Here, the court makes the ruling binding:

The Board concluded that it could ignore this disavowal in construing the claims. We agree. . . . The Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments. A rule permitting a patentee to tailor its claims in an IPR through argument alone would substantially undermine the IPR process. . . .

If patentees could shapeshift their claims through argument in an IPR, they would frustrate the Patent Office’s power to “revisit” the claims it granted, and require focus on claims the patentee now wishes it had secured.

Slip Op. (citations removed).

The court goes on to make a some what powerful extension of issue preclusion doctrine:

To be clear, a disclaimer in an IPR proceeding is binding in later proceedings, whether before the PTO or in court. We hold only that a disclaimer is not binding on the PTO in the very IPR proceeding in which it is made, just as a disclaimer in a district court proceeding would not bind the district court in that proceeding. This follows from the adjudicatory nature of IPR proceedings as contrasted with initial examination.

Id. Truthfully, it is difficulty to this aspect of the court’s decision as it relates to preclusion law in general.  But, perhaps the court is simply saying that if the disclaimer had been successful during the IPR, then it would be binding before a subsequent tribunal.

= = =

Also note that all this law of prosecution disclaimer is made-up law by the judges based upon their preferred policy arguments.  The statute does discuss disclaimer under Section 253, but this is disclaimer of a claim as a whole. “[A] patentee … may disclaim any complete claim . . . Such disclaimer shall be in writing and recorded.”

Prosecution Delays and Patent Term Adjustment on the Rise Again

by Dennis Crouch

In the standard case, a US utility patent will expire 20 years from its effective filing date.  But, there are several circumstances that might alter the patent term. As a consequence, only a minority of patents fit the standard.  One circumstance involves unduly delayed patent prosecution that results in “patent term adjustment” or PTA under 35 U.S.C. 154(b).  The two chart below show PTA awards over the past 17 years.  Of some importance here — over the past 18 months PTA has been steadily creeping-up.  This is generally an indication that the prosecution process has slowed down.

These numbers will likely continue to rise as indicated by the USPTO’s delays in issuing an initial office action rejection — only about 30% of cases are receiving a first office action within the 14 months allotted by Congress.  I’ll note here that the PTA does not ‘cost’ the USPTO anything in terms of up-front money and, may make it more likely that the patentee will pay the issue and back-end maintenance fees.

Minerals Separation v. Hyde, 242 U.S. 261 (1916)

by Dennis Crouch

Almost all the briefs filed in Amgen v. Sanofi cite to the 1916 Supreme Court decision in Minerals Separation v. Hyde, 242 U.S. 261 (1916). It is an interesting little case that primarily focuses on obviousness (i.e., “invention”), but also touches upon inventorship and sufficiency of disclosure.  In Amgen, the Supreme Court is tasked with reconsidering the law of enablement, and so it is this final issue that is most relevant.

Mined ore is typically a mixture of metals and various non-metallic gangue (often quartz).  Although folks had figured out various ways to separate the two, the solutions were not yet cost effective.  One form of separation was based upon the knowledge that certain oils tended to attach only to the metal.  Various prior patents used this law of nature to either cause the metal to float to the top of a liquid mixture or otherwise sink to the bottom.  But, those prior processes required a lot of oil; were not cost effective; and thus did not succeed in the marketplace.  Our patentees in this case are a trio of London metallurgists who developed their own approach of “froth flotation.”  They mixed in a very small amount of oil (0.5% of ore weight) into the powdered ore and then vigorously shook the mixture.  The shaking caused the oil to form air bubbles that rose to the top in a froth form.  And, because of the affinity between the oil and the metal, the metal power and flakes would line the surface of the frothed bubbles.  U.S. Pat. No. 835,120 (1906).

On the enablement issue, although the patentee had conducted tests on various oils and acids; agitation levels; addition of heat; etc, it was also clear that the method required refining for each different type of ore.  In particular, a user would need to conduct preliminary tests to figure out the amount of oil and level of agitation that works best.  The patent itself admitted that “in the concentration of any particular ore a simple preliminary test is necessary to determine which oily substance yields the proportion of froth or scum desired.’’

The Supreme Court considered this issue, but found the disclosure sufficient.

The composition of ores varies infinitely, each one presenting its special problem, and it is obviously impossible to specify in a patent the precise treatment which would be most successful and economical in each case. The process is one for dealing with a large class of substances and the range of treatment within the terms of the claims, while leaving something to the skill of persons applying the invention, is clearly sufficiently definite to guide those skilled in the art to its successful application, as the evidence abundantly shows. This satisfies the law.

Minerals Separation, 242 U.S. at 270-271.  In the same paragraph, the court also included a sentence on claim definiteness, using the same language of reasonable certainty that the Court later reiterated in Nautilus: “the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject matter.”

The district court had also decided the case in favor of the patentee, concluding that “a range of quantities that leaves something to the judgment of the operator is all that can be described, and is sufficiently definite.”  Minerals Separation v. Hyde, 207 F. 956 (D. Mont. 1913), rev’d, 214 F. 100 (9th Cir. 1914), rev’d, 242 U.S. 261 (1916).  The issue does not appear to have been briefed to the Supreme Court, but the court addressed it anyway.

Both the District Court and the Supreme Court cite to Mowry v. Whitney, 81 U.S. 646 (1871).  In that case, Justice William Strong explained that a patent is not awarded simply for the act of invention. Rather, the inventor must also “teach the public how to practice it.”  Still, the court went on to explain that the specification is directed to those of skill in the art. Thus, disclosures insufficient the general public may still be sufficient to teach those already knowledgeable. “[I]t may leave something to their skill in applying the invention, but it should not mislead them.” Id.  In Mowry, the court concluded that the patent was valid despite “vague and uncertain directions” as to the amount of heat to add as part of a casting process.

But it is obvious that only vague and uncertain directions could have been given respecting the extent to which the heat is necessary to be raised. It must differ with the difference in the progress of cooling which has taken place before the wheels are removed from the moulds. . . . That, in the nature of things, must be left to the judgment of the operator.

Id.  In Minerals Separation, the Supreme Court also cited to Ives v. Hamilton, 92 U.S. 426 (1875).  In Ives the patent introduced a mechanism to impart a rocking motion a reciprocal saw being used in a saw mill.  The patentee used a “curved guide” but did not describe the exact nature of the curve.  In the case, the Supreme Court sided with the patentee and found the disclosure sufficient:

The complaint made by the defendants, that the patent is defective in not stating the nature of the curve for the guides, whether that of a circle or of some other figure … [is] not sufficient to affect its validity. Any good mechanic acquainted with the construction of sawmills, and having the patent and diagram before him, would have no difficulty in adopting the improvement, and making suitable curves.

Id.  The statutory text at the time was codified in R.S. Sec. 4888. The text is remarkably similar to the language found today in Section 112(a).  It required the the patentee to file:

a written description of the [invention or discovery], and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same; and in case of a machine, he shall explain the principle thereof, and the best mode in which he has contemplated applying that principle, so as to distinguish it from other inventions; and he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.

R.S. Sec. 4888 (1910).

After Granting Certiorari In Enablement Case, Supreme Court Declines Opportunity To Address Written Description

by Chris Holman

As reported in posts by Dennis and Jason, the Supreme Court recently granted certiorari in Amgen v. Sanofi, marking the first time that the Court has taken up patent law’s enablement requirement since enactment of the Patent Act of 1952. The claims at issue are directed to a genus of functionally-defined molecules having therapeutic utility, i.e., monoclonal antibodies defined in terms of binding specificity. For the sake of brevity, I will refer to claims of this type as “chemical genus claims.”

A few days later, on November 7, the Supreme Court denied certiorari in Juno v. Kite, a case challenging the Federal Circuit’s interpretation of the written description requirement. The claims struck down for lack of adequate written description in Juno are strikingly similar to the claims that were invalidated under the enablement requirement in Amgen, being directed towards nucleic acids encoding chimeric T cell receptors (for use in Car T-cell therapy), comprising, inter alia, a functionally defined “binding element,” as exemplified by a single-chain antibody variable fragment (‘‘scFv’’).

The scope afforded to chemical genus claims under 35 USC § 112(a)’s enablement and written description requirements has been hot topic recently (at least in certain quarters). Professors Lemley, Seymore, and Karshtedt (it is so sad that he is no longer with us) published an article in 2020 entitled The Death of the Genus Claim, which asserts that “the law has changed dramatically in the last thirty years, to the point where it is nearly impossible to maintain a valid genus claim.” Amgen’s successful petition for certiorari relies heavily on Death, and its authors filed an amici curiae brief in support of Amgen’s petition.

While Death clearly raises some valid concerns regarding the challenges inventors face in trying to secure effective patent scope for inventions of this type, in my view it is an overstatement to say that chemical genus claims are “dead.” I responded to Death in a two-part article arguing, for example, that the case law identified in Death provides scant support for its assertion that the standard for compliance with the enablement and written description requirements has become significantly more stringent in recent years. Christopher M. Holman, Is the Chemical Genus Claim Really “Dead” at the Federal Circuit?: Part II, 41 Biotechnology Law Report 58 (2022); Christopher M. Holman, Is the Chemical Genus Claim Really “Dead” at the Federal Circuit?: Part I, 41 Biotechnology Law Report 4 (2022).

I also point out that relatively broad chemical genus claims continue to survive § 112(a) challenges in the district courts and at the Federal Circuit.  See, for example, Ajinomoto Co. v. Int’l Trade Comm’n, 932 F.3d 1342 (Fed. Cir. 2019); Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964 (Fed. Cir. 2021); Plexxikon Inc. v. Novartis Pharmaceuticals Corp., Case No. 17-cv-04405-HSG, Document 565, July 22,2021 (N.D. Cal.).

Section 112(a)’s enablement and written description requirements, sometimes referred to as the “adequate disclosure requirements,” constitute U. S. patent law’s primary non-prior art-based limitations on claim scope. Although Supreme Court has in the past indicated that it views the patent eligibility doctrine as playing an important role in preventing patent claims from broadly “preempting” abstract ideas and natural phenomena, more recently the Court’s patent eligibility decisions have focused on the sufficiency of “inventive concept,” as opposed to claim breadth per se.  Absent such limitations, under a regime in which claim scope would only be limited by the prior art, an inventor could potentially secure patent claims encompassing huge swaths of yet-to-be invented technologies.

Hypothetically, for example, the inventor of the first practical method for communicating at a distance using electricity, e.g., the telegraph, might have ended up with a patent claim encompassing all means of communicating at a distance using electricity, e.g., the internet. The inventor of a rudimentary, barely functional electric light bulb could, assuming it was the first lightbulb, potentially have obtained a patent claim encompassing all lightbulbs, including far superior lightbulbs produced by subsequent inventors. While I have simplified the facts quite a bit, the gist of these examples have been the subject of actual Supreme Court decisions. O’Reilly v. Morse and Consol. Elec. Light Co. v. McKeesport Light Co..  Not surprisingly, in both cases the Supreme Court struck down the patent claims as overly broad, invoking what we would today refer to as the enablement requirement.

More pertinent to the facts of Amgen v. Sanofi, the inventor of the first antibody capable of recognizing a particular antigen could potentially obtain a patent encompassing all antibodies capable of recognizing that antigen. For example, an inventor who has succeeded in producing a mouse monoclonal antibody that binds to a particular human protein (useless as a human therapeutic) could in principle obtain a patent claim encompassing all monoclonal antibodies that bind to that particular human protein, even a fully humanized antibody that functions as a safe and effective biologic drug, e.g., AbbVie’s blockbuster Humira, or the accused product in Amgen, Praluent.  Again, the gist of this example comes from an actual Federal Circuit decision, Noelle v. Lederman, wherein the claims at issue were struck down under the written description requirement.

The Federal Circuit has invoked both the written description and enablement requirements as doctrinal tools for policing claim scope. Although as a formal matter the written description requirement focuses on whether the inventor has demonstrated “possession” of the full scope of the claim, while the enablement requirement asks whether the scope of the claim is “commensurate” with the scope of disclosure, as a practical matter the two requirements have been applied in a manner that is largely redundant, albeit with a few distinctions of arguable significance discussed later in this post. In my article responding to Death, for example, I point out that the Ariad factors that the Federal Circuit has identified as relevant to assessing compliance with the written description requirement are, in substance, virtually identical to the Wands factors used in the enablement inquiry. If anything, the written description requirement has been seen as the more stringent of the two, particularly in the context of biotechnology – the written description requirement has often been referred to as a  “super-enablement” requirement.

And in fact, prior to Amgen, the Federal Circuit has tended to invoke the written description requirement, rather than the enablement requirement, in striking down monoclonal antibody genus claims. See, for example, Noelle v. Lederman, 355 F.3d 1343, 1349 (Fed. Cir. 2004)(disclosure of mouse monoclonal antibody specific for mouse antigen (CD40CR) did not provide adequate written description for claim encompassing any monoclonal antibody capable of binding the human analog of the CD40CR antigen); Centocor Ortho Biotech v. Abbott Laboratories, 636 F.3d 1341(Fed. Cir. 2011)(disclosure of previously characterized antigen (human TNF-alpha) and mouse antibodies to the antigen did not provide adequate written description for claim encompassing fully human monoclonal antibodies capable of binding to a specific neutralizing epitope of the antigen); AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285 (Fed. Cir. 2014)(disclosure of about 300 antibodies falling within the scope of the claim did not provide adequate written description for a claim reciting neutralizing human antibodies capable of specifically binding human interleukin-12 (IL-12)).

Of course, given the redundancy of the doctrines, a claim struck down as overly broad for lack of enablement is highly likely to be invalid for lack of adequate written description, and vice versa. In Amgen, for example, the jury found Amgen’s claims not invalid under the enablement and written description requirements, but on a motion for JMOL the district court overruled the jury and found that, as a matter of law, the claims are invalid under both the enablement and written description requirements. In Amgen, the Federal Circuit decided the issue based on a failure to comply with the written description requirement, rendering the enablement issue moot, but in the past the Federal Circuit has been more inclined to find claims of this type invalid for failure to comply with the written description requirement.  See the examples provided above, as well as the Juno decision.

Thus, one of the big elephants in the room with respect to the grant of certiorari in Amgen is that the question for review appears to focus solely on the enablement requirement. Even if the Supreme Court lowers the bar for compliance with the enablement requirement, the ruling would presumably have no direct impact on the written description requirement, which has conventionally been thought of as imposing an even higher bar for the sort of claim at issue in the case, e.g., functionally defined chemical genus claims.

Sanofi raised this point in its Opposition brief, arguing that any ruling by the Supreme Court would not be dispositive of the case because, if the Supreme Court overturns the enablement verdict, the Federal Circuit would likely still find the claims invalid for lack of adequate written description. Sanofi points out that Amgen’s own amici, i.e., Professors Lemley, Seymore and Karstedt, concluded in Death that the Federal Circuit had “strongly suggested” that the claims were not only invalid under the enablement requirement, but also the written description requirement.

Indeed, the Federal Circuit has on occasion explicitly noted that a claim’s compliance with the written description and enablement requirements generally rise and fall together. For example, in Idenix v. Gilead, a recent case involving claims analogous to those at issue in Amgen, the jury also found the claims to be not invalid under the enablement and written description requirements. The district court overturned the jury verdict with respect to enablement, but denied a motion for JMOL with respect to written description. On appeal, the Federal Circuit affirmed the district court’s holding that the claims were invalid for lack of enablement, but reversed its denial of JMOL for failure to meet the written description requirement, finding the claims invalid under both doctrines.

Under the Federal Circuit’s current interpretation of the written description and enablement requirements, I think it would be highly unusual for the court to find claims of the type at issue in Amgen invalid for lack of enablement but not for lack of adequate written description. In fact, when the district court decision in Idenix v. Gilead initially came out, finding the claims invalid under the enablement requirement but not under the written description requirement, I thought it was so striking that I wrote an article about it.   Christopher M. Holman, Enablement Invoked as a ‘‘Super-Written Description Requirement’’ to Overturn $2.5 Billion Jury Verdict, 37 Biotechnology Law Report 63 (2018). So I was not at all surprised when the Federal Circuit reversed and explicitly found the claims invalid under both the enablement and written description requirements, even though the Federal Circuit could have chosen not to address the written description issue as moot in light of the enablement ruling, as it did in Amgen.

In retrospect, I wonder if it might have been better for the Supreme Court to take up the issue of adequate disclosure in a case like Idenix, where the Federal Circuit explicitly addressed both the enablement and written description requirements in the context of the same chemical genus claims. As Jason intimated in his blog post, while it is relatively easy to point out the shortcomings in the Federal Circuit’s current § 112(a) jurisprudence, it is much harder to come up with an effective alternative. I have to think that it will be particularly difficult for the Supreme Court to make a positive contribution to the law of adequate disclosure without also taking into account the written description requirement.

Although the written description requirement has long been used to police the claiming of new matter, it only took on the role of policing claim scope as what is in essence an alternate enablement requirement in 1997 when the Federal Circuit decided UC Regents v. Eli Lily, creating what I refer to as the “Lilly written description requirement” (so as to distinguish it from the “traditional written description requirement” used prevent the claiming of new matter). Early on, the Lilly written description requirement seemed to impose a much higher threshold than enablement, particular for biotechnology inventions, hence its characterization as a “super-enablement requirement.” But it seems to me that at this point in time the standards for compliance with the written description and enablement requirements have become for the most part indistinguishable, as illustrated by the redundancy of the Ariad and Wands factors, and the paucity (or, to my knowledge, the absence) of any judicial decisions (upheld on appeal) explicitly finding a claim invalid under the Lilly written description requirement but not invalid for lack of enablement, or vice versa.

Nonetheless, Federal Circuit precedent has carved out some clear differences between the written description requirement and enablement, although as a practical matter it is not clear to me how significant those differences are.  For example, the Federal Circuit treats the written description requirement as a question of fact, and the enablement requirement as a question of law based on underlying factual findings.  In its petition for certiorari, Amgen also asked the Court to rule that enablement, like written description, is a question of fact, but the Court declined to take up that question. In principle, a decision by a jury (or judge in a bench trial) should be afforded more deference with respect to a question of fact, which might explain why in Amgen and Idenix the district courts overturned the juries’ enablement decisions, but not their written description decisions. However, it seems to me that when case reaches the Federal Circuit the formal distinction between question of fact and “question of law based on underlying factual findings” has little practical effect.  See, for example, Centocor Ortho Biotech v. Abbott Laboratories, 636 F.3d 1341(Fed. Cir. 2011)(overturning jury decision finding claim encompassing fully human monoclonal antibodies not invalid for failure to comply with the written description requirement).

Another difference between the two doctrines has to do with the admissibility of evidence.  In the Federal Circuit’s first decision in Amgen v. Sanofi (the grant of certiorari is with respect to the Federal Circuit second decision in the case), the court held that the district court had committed legal error by improperly excluding post-priority date evidence of antibodies falling within the scope of the claim, including the accused product (Praluent). The district court based its decision to exclude the evidence on a 1977 decision of the Court of Customs and Patent Appeals, In re Hogan, which the Federal Circuit has interpreted as prohibiting, in the context of the enablement inquiry, admission of “post-priority-date evidence proffered to illuminate the post-priority-date state of the art.”  Without questioning the continuing vitality of Hogan, the Federal Circuit held that, in the context of the written description inquiry, post-priority-date evidence is admissible to show that a patent fails to disclose a representative number of species, explaining that Hogan is silent with respect to evidence of this type. Thus, it seems that under some circumstances post-priority-date evidence illustrating the structural and functional breadth of a chemical genus claim could be admissible for purposes of a written description challenge but not a challenge for lack of enablement.

Venue Transfers Without Delay

by Dennis Crouch

In re Apple, — F.4th — (Fed. Cir. Nov 8, 2022)

The Federal Circuit has again ordered Judge Albright to halt pending litigation until he decides Apple’s motion to transfer venue on grounds of inconvenience under 28 U.S.C. 1404(a).  In particular, the court (1) vacated the scheduling order; and (2) directed Judge Albright to postpone fact discovery and “any other substantive proceedings.”

Aire Technology sued Apple for infringement back in October 2021.  In April 2022, Apple filed its motion to transfer.  At that point, the parties conducted some amount of ‘venue discovery’ that was completed around the end of June 2022.  However, instead of ruling on the motion, Judge Albright  told the parties he would postponed ruling for another 7-8 months while fact discovery in the case was ongoing.  Apple then petitioned for writ of mandamus, arguing that delay created a critical injury to the tech giant’s convenience that deserved immediate remedy. And, the Federal Circuit has complied–ordering the district court to go ahead and decide the transfer motion.

In this situation, I have tremendous sympathy for Judge Albright’s ruling.  Albright had previously noted problems with Apple’s venue declarant, Mark Rollins who “frequently and repeatedly submitted unreliable and misleading declarations to this Court.”  Scramoge Tech. Ltd. v. Apple Inc., 2022 WL 1667561 (W.D. Tex. May 25, 2022) (finding Rollins to be not credible).  Even without these particular problems with a 30(b)(6) declarant, my experience is that the witnesses and evidence arguments made in the 1404(a) context at the pleading-stage are notoriously unreliable because they do not reflect the actual evidence/witness issues that become clear around the end of discovery.  Further, parties treat the Section 1404(a) factors as a scorecard or checklist in ways that are often divorced from the interests of justice.

This mandamus is particularly about delaying a transfer decision while the case is developed.  I see little harm in that delay.  Discovery in federal courts is a nationwide endeavor. Evidence is exchanged electronically; parties go to the location of witnesses to conduct discovery; and discovery disputes needing court intervention are ordinarily resolved over the phone (or Zoom).  Thus, there would not be much difference for the parties during this period in terms of litigating in N.D. Cal. vs W.D. Tex.–with the one exception that Judge Albright  remains the judge if the case stays in W.D. Tex.  It is clear that this final Albright-factor underlies Apple’s true purpose in filing these motions and mandamus actions: to escape from Judge Albright.  Of course, that true reason is not justified under the law and so is never mentioned.

One key benefit of an early transfer would be to permit the new district court to get up-to-speed on the issues in the case and begin exerting their own style of case management.  That said, N.D.Cal. judges ordinarily defer the whole discovery process to a magistrate judge and thus rarely become involved.  The Federal Circuit cited some precedent about how an early transfer avoids double-work by two district courts. However, it is not clear how that precedent is applicable in this situation.

In its decision, the Federal Circuit did not delve into the particular issues, but rather focused on prior precedent that “entitles parties to have their venue motions prioritized.”  Id.