Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include two responses to a petition raising questions related to prosecution history estoppel; one amicus brief in a case raising questions related to venue; and the denial of three petitions related to attorney’s fees, transfer, and Arthrex-related arguments. Here are the details.
Two responses were filed in Amgen Inc. v. Amneal Pharmaceuticals LLC, a case in which the petitioner raised two questions related to prosecution history estoppel.
Piramal Healthcare filed a response arguing that Amgen waived the arguments it made in its petition because its “arguments on the [tangentiality] exception were never fully developed—either in the district court or on appeal.” Piramal explains that “Amgen never argued that only non-hardening binders were surrendered” and that, on appeal, “Amgen never contested or even addressed the district court’s rationale for its holding” that clarified why the tangentiality exception did not apply. In addition to the waiver argument, Piramal contends that Amgen’s petition should be denied because it “fails to show that the panel decision is inconsistent with precedent or that this case involves a question of ‘exceptional importance.’”
Zydus Pharmaceuticals and Cadila Healthcare also filed a short response to the petition conceding that “that the panel’s decision was confusing as to its application of the law of both literal infringement and infringement under the doctrine of equivalents” and that the court’s decision “will create uncertainty.”
New Amicus Briefs
In In re Google LLC, US Inventor, Inc. filed an amicus brief in support of the petition for rehearing en banc. US Inventor argues that “the panel grafted a requirement onto the language of the patent venue statute that does not exist” and, as such, “the Court should grant en banc review to apply correct principles of statutory interpretation.” US Inventor also argues that “this case presents a unique opportunity for the en banc Court to decide for the first time the correct legal test under the ‘place of business’ prong of the patent venue statute.”
The Federal Circuit denied the petitions for rehearing en banc in each of the following three cases:
- Diem LLC v. BigCommerce, Inc. (attorney’s fees)
- Uniloc 2017 LLC v. Cisco Systems, Inc. (Arthrex-related arguments)
- In re Apple Inc. (transfer)