En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit. Highlights include new petitions filed in five cases raising questions related to claim construction, prevailing party status, assignor estoppel, forum selection clauses, and injunctive relief. In addition, a new amicus brief was filed in two cases raising questions related to patent eligibility. Here are the details.

New Petitions

New petitions were filed in five cases.

In Biogen International GmbH v. Banner Life Sciences LLC, Biogen asked the en banc court to review the following two questions:

  1. “Whether the panel’s decision allows an infringer to avoid an innovator’s patent term extension by using the claimed and bioequivalent active moiety of the compound in the patentee’s approved drug product.”
  2. “Whether patent term extension under 35 U.S.C. § 156(b)(2) for method claims is limited to the ‘approved product’ only, where the only limit that Congress imposed on patent term extension for method claims is ‘any use claimed by the patent and approved for the product,’ and Congress further provided that ‘[a]s used in this subsection, the term “product” includes an approved product’ (i.e., is not ‘limited’ to an approved product). 35 U.S.C. § 156(b) (emphases added).”

In Dragon Intellectual Property v. DISH Network LLC, petitioners raised the following three questions:

  1. “How does the legal standard for the determination of ‘prevailing party’ status apply in a case terminated as a result of intervening mootness?”
  2. “When, if ever, can a litigant be deemed the ‘prevailing party’ in a case terminated as a result of mootness?”
  3. “How does the rule of United States v. Munsingwear, Inc., 340 U.S. 36 (1950), and its progeny affect the determination of ‘prevailing party’ status.”

In In re Apple Inc., Apple raised the following two questions:

  1. Whether “the panel decision in this appeal conflicts with the Supreme Court’s decision in Atlantic Marine Construction Co. v. U.S. District Court, 571 U.S. 49 (2013), and this Court’s decision in General Protecht Group, Inc. v. Leviton Manufacturing Co., 651 F.3d 1355 (Fed. Cir. 2011).”
  2. “[W]hether a district court addressing a transfer motion may decide the merits of a contractual defense before enforcing the contract’s forum-selection clause dedicating the issue to another forum.”

In Hologic, Inc. v. Minerva Surgical, Inc., Appellants Hologic and CYTYC Surgical Products asked the en banc court to review the following two questions:

  1. “Whether ‘an assignor can circumvent the doctrine of assignor estoppel by attacking the validity of a patent claim in the Patent Office’—even though the assignor may not ‘do the same in district court’—and then returning to district court to assert collateral estoppel based on the Patent Office’s finding of invalidity.”
  2. “Whether the Court should ‘revisit [its] construction of the America Invents Act and reevaluate [its] interpretation of the statute as prohibiting the doctrine of assignor estoppel,’ or alternatively ‘change the application of the doctrine in district court.'”

In the same case, Cross-Appellant Minerva Surgical asked the en banc court to review the following two questions:

  1. “[W]hether assignor estoppel bars an inventor-assignor from asserting lack of enablement and lack of written description when the assignee broadened claims after assignment.”
  2. “[W]hether a patent specification must include an explicit ‘disclaimer’ before claim terms are construed as used in the specification.”

In Verinata Health, Inc. v. Ariosa Diagnostics, Inc., Appellants Verinata and Illumina raised the following two questions:

  1. “Whether it is a sufficient basis for denying a permanent injunction that the infringer directly competes with third parties that license completely different patents from the patentholder.”
  2. “Whether the panel improperly affirmed the denial of a permanent injunction where uncontradicted evidence proves:
    • the patentholder and infringer view each other as competitors;
    • the infringer has never licensed the patent-at-suit;
    • the infringer previously purchased from the patentholder before it created an infringing substitute;
    • infringing competition decreases demand for the patentholder’s products and has caused the patentholder’s customers to negotiate lower [redacted];
    • the infringer’s marketing undercuts the patentholder’s brand; and
    • the infringer [redacted] to [redacted] a product that would further compete in the patentholder’s primary market through infringement.”

New Amicus Briefs

A new amicus brief was filed in two cases, both titled Customedia Technologies, LLC v. DISH Network Corporation, in support of the court rehearing the case en banc. In the brief, former Chief Judge Paul R. Michel argues that the court has “the en-banc obligation and opportunity to clarify its precedents and hold that, as to both step-one of the Mayo-Alice framework generally and the step-one test for improved computer technology, the phrase ‘directed to’ should have the same definition.”