En Banc Activity

As a reminder, once a month we provide an update on activity in cases pending before panels of the Federal Circuit where the cases involve at least one amicus brief. Today with respect to these cases we highlight one opinion, briefing in six cases, a recent oral argument, and three upcoming oral arguments. (Note you can always find information related to these cases on our “Other Cases” page.) On to the update.


This past month the Federal Circuit issued one opinion in a case that attracted amicus briefs.

TCL Communication Technology Holdings Ltd. v. Telefonaktiebolaget LM Ericsson

The appeal between TCL and Ericsson attracted a number of amicus briefs addressing the issue of whether the district court correctly determined reasonable compensation for infringement of standard essential patents, when the patent owner had committed to license those patents on fair, reasonable, and nondiscriminatory (FRAND) terms. As we previously reported, however, the Federal Circuit did not reach that issue in its opinion, instead resolving the appeal based upon its finding that the district court erred by depriving the plaintiff-patent owner of its right to a jury trial.

New Cases

Four cases have attracted amicus briefs.

Immunex Corp. v. Sandoz Inc.

In this case, Sandoz presents the following questions:

  1. “Whether the patents-in-suit are invalid for [obviousness-type double patenting], where Immunex— which owns all substantial rights in those patents, including the ability to control patent prosecution—had already obtained earlier-expiring patents claiming obvious variants of the same inventions.”
  2. “Whether the claims-in-suit are invalid for lack of written description, where the original specification did not disclose the key claimed features of etanercept and Immunex had to amend the specification to add them.”
  3. “Whether the district court’s ruling on obviousness was infected by legal error.”

Sandoz’s opening brief attracted two amicus briefs.

  • Samsung Bioepis filed a brief supporting Sandoz’s arguments related to obviousness. In particular, it argues the Federal Circuit to “correct the district court’s errors and reverse the district court’s judgment in order to make clear that the standards for obviousness are no different for biologic compositions than they are for any other claimed chemical entity.”
  • The Association for Accessible Medicines likewise filed a brief supporting Sandoz’s arguments, but on the issue of double-patenting. According to the Association, this case presents the important question of “whether a patentee may circumvent the doctrine of obviousness-type double patenting (ODP) by presenting itself as licensee, rather than assignee, of a patent application despite having all substantial rights in the application.”

Bio-Rad Laboratories, Inc. v. 10X Genomics Inc.

According to the appellant, 10x Genomics, this case involves five questions related to claim construction, literal infringement, the doctrine of equivalents, damages, and injunctive relief. The Broad Institute, however, filed an amicus brief in support of neither 10x Genomics nor Bio-Rad and limited only to the issue of injunctive relief. According to the Institute, there is a “significant public interest implicated when considering whether a permanent injunction is an appropriate remedy in a patent case and the scope of that injunction.” Moreover, the Institute argues that in this case the district court “improperly imposed an injunction that limits the use of technology essential to ambitious biomedical research efforts currently being undertaken.”

Sanford Health Plan v. United States

This case is a sister case to the three cases argued at the Supreme Court earlier this month, MaineModa, and Land of Lincoln. Here, the United States is challenging another decision by the Court of Federal Claims that held it liable for damages based on failure to compensate insurance companies for costs they incurred pursuant to the Affordable Care Act.

This case attracted two amicus briefs:

  • Common Ground Healthcare Cooperative filed a brief supporting the health insurance companies and, in particular, disputing various arguments submitted by the United States in its opening brief.
  • A group of insurance companies likewise filed their own brief to dispute the government’s positions. For example, they argue that the government’s positions “squarely contradict controlling precedents of this Court and the U.S. Supreme Court, not to mention fundamental principles of statutory construction.”

American Institute for International Steel v. United States

According to the appellant, the American Institute for International Steel, “this case presents a facial challenge to section 232 of the Trade Expansion Act of 1962, as amended, 19 U.S.C. § 1862, and its use to impose more than $4.7 billion of tariffs on steel products.” The Institute argues that “section 232 unconstitutionally delegates legislative power to the President in violation of Article I, Section 1 of the U.S. Constitution.”

The case has attracted four amicus briefs, two supporting the appellant and two supporting the United States:

  • The Cato Institute argues in its brief that the Federal Circuit “should reverse the decision below and hold that Section 232 is a permissible legislative delegation only if complemented by calibrated judicial review.”
  • Gasari Farms contends that “[t]he gravity of the harm caused to the agricultural industry, and the fact that said harm is likely to continue, strengthens appellants’ argument that this Court should address the merits of appellants’ claim that Section 232 is an unconstitutional delegation of legislative authority.”
  • United States Steel maintains that “[j]udicial review of the President’s exercise of discretionary authority is not necessary to save the constitutionality of a delegation like the one in Section 232.”
  • American Iron and Steel Institute and Steel Manufacturers Association likewise argue that because a “direct challenge to the implementation of these tariffs was rejected in 2018 by the Court of International Trade . . . the Appellants here structure their claim as a facial challenge to Section 232 itself.” But “that claim too has already been litigated—more than forty years ago, the Supreme Court expressly held that Section 232 was a permissible delegation of authority, and that holding controls this case.”

New Briefing

New briefs have been filed in two cases we previously noted.

Nevro Corp. v. Stimwave Technologies, Inc.

Since we last reported on this case, which involves an amicus brief seeking a holding that denies any injunctive relief, Nevro has filed its response brief. In it, Nevro argues that “[a]mici never address the gaping hole in Stimwave’s argument—whether any patient needs Stimwave’s system operated at high frequency rather than low frequency.” Moreover, “[e]ven if they had, their unsworn brief would provide no basis to overturn the district court’s finding.”

Amgen Inc. v. Watson Laboratories, Inc.

This case involves an amicus brief supporting the appellees, Watson Laboratories. The brief argues that the Federal Circuit lacks jurisdiction because there is a settlement agreement that resolved the underlying dispute, but anyway the Federal Circuit should affirm the district court’s .

Since we last reported on this case, Amgen has filed its reply brief. Amgen argues that, “[c]ontrary to competitor amici Cipla’s assertion, as the continuation of this appeal makes plain, the Amgen-Watson litigation is not moot while the district court’s non-infringement judgment remains in place.”

Argument Recaps

In re Google LLC

On Friday the Federal Circuit held oral argument in this case, where Google presented a petition for mandamus asking “[w]hether a defendant who keeps computer equipment in the facility of a third party in a judicial district has a ‘regular and established place of business’ in that district under the patent venue statute. 28 U.S.C. § 1400(b).” We plan to post an argument recap later this week.

Upcoming Oral Arguments

Next month there are three cases being argued that attracted amicus briefs. For each of these cases, we plan to present argument previews early next month.

Dragon Intellectual Property v. DISH Network LLC

In this case, Dish Network and Sirius XM Radio present a question to the court about the appropriate way to determine a prevailing party for purposes of awarding attorney’s fees under the patent statute. The Electronic Frontier Foundation submitted an amicus brief supporting the appellants.

Sanford Health Plan v. United States

As discussed above, this case is a sister case to the three cases argued at the Supreme Court earlier this month, MaineModa, and Land of Lincoln, and two amicus briefs support the insurance company’s claims against the government.

American Institute for International Steel v. United States

As discussed above, this case involves a challenge to the use of section 232 of the Trade Expansion Act of 1962, as amended, 19 U.S.C. § 1862, to impose more than $4.7 billion of tariffs on steel products, and both the plaintiff and the United States each drew support from two amicus briefs.