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Beyond the Holding: A Nuanced Look at the Federal Circuit's Patent Decisions, Episode 5

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

Morrison & Foerster and the Berkeley Center for Law & Technology (BCLT) have teamed up to present a biweekly podcast addressing recent Federal Circuit decisions.In this episode, Brian Matsui, a partner in Morrison & Foerster’s Appellate + Supreme Court practice and <a href="https://www.law.berkeley.edu/research/bclt/about/staff/#_blank" target="_blank">Allison Schmitt</a>, Berkeley Law & Technology Center’s (BCLT) 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></ul><ul><li>The interplay between reasonable expectation of success and disclosed ranges in prior art.</li></ul>Listen now using your favorite podcast provider, or try the link below:Listen to the <a href="https://open.spotify.com/episode/2PEHAGNMjWEvSm6JRiImJ2?si=409aab65e3784d45&nd=1" target="_blank">full podcast</a>.

Beyond the Holding: A Nuanced Look at the Federal Circuit's Patent Decisions, Episode 5

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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 nine of his last ten appeals in that Court, which includes three reversals of Patent Trial and Appeal Board decisions. His nearly 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/">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>

Brian R. Matsui

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