En Banc Activity / Petitions
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Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include three new petitions (including, notably, in Arthrex, Inc. v. Smith & Nephew, Inc.), a response to the petition and several amicus briefs in support of the petition in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, and the denial of three petitions. Here are the details.

New Petitions

New petitions for en banc rehearing were filed in three cases.

Arthrex, Inc. v. Smith & Nephew, Inc.

Petitions were filed by all of the parties in this case: the government, Arthrex, and Smith & Nephew.

The government presented the following questions:

  1. “Whether the administrative patent judges of the Patent Trial and Appeal Board are inferior officers of the United States under the Appointments Clause, U.S. Const. art. II, § 2, cl. 2, such that Congress permissibly vested their appointments in a department head, rather than principal officers who must be nominated by the President and confirmed by the Senate.”
  2. “Whether this Court should entertain an Appointments Clause challenge a litigant forfeited by failing to raise it before the agency.”
  3. “How to remedy any Appointments Clause defect in the Patent Trial and Appeal Board.”

Arthrex presented the following questions:

  1. “Whether Congress would have enacted the IPR statute, 35 U.S.C. §311 et seq., creating quasi-judicial review of issued patents, without tenure protections for APJs necessary to ensure their independence and impartiality.”
  2. “Whether APJs remain principal officers under the Constitution even without tenure protections when they still have the power to issue Final Written Decisions absent meaningful review by an officer nominated by the President and confirmed by the Senate.”

Smith & Nephew presented the following questions:

  1. “Whether Administrative Patent Judges are inferior or principal officers of the United States.”
  2. “If APJs are principal officers, what remedy is warranted for any defect in their appointment.”

Duke University v. Biomarin Pharmaceutical Inc.

Duke University filed a petition asking the en banc court to consider the following questions:

  1. “Whether objective evidence of nonobviousness under Graham v. John Deere Co., 383 U.S. 1 (1966), is entitled to a presumption of nexus, where unrebutted evidence establishes that the objective evidence is tied to a specific product or method that is the invention disclosed and claimed in the patent.”
  2. “Whether this Court’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140, 2019 U.S. App. LEXIS 32613 (Fed. Cir. Oct. 31, 2019), holding that the appointment of Administrative Patent Judges (‘APJs’) to the Patent Trial and Appeal Board (‘Board’) violated the Appointments Clause, U.S. Const., art. II, § 2, cl. 2, was a significant change in the law governing this appeal.”
  3. “Whether, after Arthrex, the Director’s delegation of institution authority to APJs acting as principal officers violated 35 U.S.C. § 314 and due process of law.”

DiStefano Patent Trust III v. LinkedIn Corp.

DiStefano Patent Trust III filed a petition requesting consideration of the following questions:

  1. “Whether the Federal Circuit’s standard for evaluating a Complaint’s factual allegations on a Rule 12(b)(6) motion to dismiss, requiring that the district court determine if the factual allegations are ‘plausible,’ is inconsistent with Supreme Court precedent requiring the ‘claim for relief’—as opposed to the factual allegations—to be ‘plausible’ and Third Circuit Precedent, which governs review of matters not unique to patent law.”
  2. “Whether the Federal Circuit’s consideration of a 35 U.S.C. § 101 affirmative defense in a Rule 12(b)(6) motion to dismiss is inconsistent with both Supreme Court precedent, Iqbal and Twombly, and also with Third Circuit precedent, which governs review of procedural matters and does not require responses to affirmative defenses to be pled in a complaint.”

New Responses

Neapco Holdings filed a response to the petition filed in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC. The petition (supported by several new amicus briefs, as discussed below) argued that the en banc court should reconsider questions related to the law of eligibility. According to Neapco, however, “the claims, as the majority correctly found, merely instruct one to ‘apply’ Hooke’s law (a law of physics discovered centuries ago) in some ‘unbounded’ way (ad hoc trial-and-error) to achieve a ‘desired result’ (reduced vibrations).” As a result, Neapco argues that “the real-world consequence of these claims is that they ‘impede innovation more than’ they ‘promote it,'” and, anyway, “any concern over the potential impact of this case on future cases is vastly overstated, and this case is narrowly limited to the unique claims at issue.”

New Amicus Briefs

As mentioned, several new amicus briefs were filed in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, all supporting the petitioner:

Denials

In addition to the above activity, the Federal Circuit denied the petitions in the following cases: