En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit. Highlights include new petitions filed in four patent cases raising questions related to remedies, transfer of venue, novelty, non-obviousness, and real-party-in-interest rules, as well as a response to a petition raising questions related to double-patenting. Here are the details.

New Petitions

New petitions were filed in four patent cases.

In Gensetix, Inc. v. Baylor College of Medicine, Baylor College of Medicine asked the en banc court to review the following question:

  • Whether “a non-patentee has a remedy by civil action for infringement.”

In In re Adobe Inc., Synkloud Technologies, LLC presented the following questions:

  1. “Whether the Fifth [C]ircuit’s standard for granting mandamus petition related to transfer decision based on convenience factors in 1404(a), defined in In re Volkswagen of Am., Inc., 545 F.3d 304, 315–16 (5th Cir. 2008) and further clarified and classified in In re Radmax, Ltd., 720 F.3d 285, 290 (5th Cir. 2013), finding of ‘extraordinary error’ only when ‘not a single relevant factor favors the plaintiffs’ chosen venue‘ expansively encompasses finding ‘extraordinary error’ even when ‘single factor that the court weighed in favorof retaining the case was the court congestion factor‘, especially when no other factor significantly favors transfer[.]”
  2. “When a party proffers evidence on court congestion from a recent ruling wherein the district court relied on statistics of time to trial provided by both parties from different sources and over different time frames and also weighed in scheduling order in its own docket finding that the court congestion factor weighs against transfer, can there be clear abuse of discretion by the district court [j]udge in the Fifth Circuit in denying transfer when the court congestion factor is in addition to the plaintiff’s choice of forum, both weighing against transfer?”
  3. “When the third party subpoenas in the transferee forum were already served in early discovery in the transferor from, when there was no motion to quash subpoena in response, and when discovery pursuant to the third party subpoena was served and completed, did the district court clearly abuse its discretion by according the compulsory process factor ‘slightly’ favoring weight and not ‘significantly’ favoring for transfer?”
  4. “When: (i) there is no evidence that identified third-party witnesses from the transferor forum would be willing to testify in the transferee forum, in contrast (ii) there was a declaration from the only identified third-party witness from the transferee forum that he is willing to testify in transferor forum, did the district court clearly abuse its discretion by according the witness convenience factor ‘slightly’ favoring weight and not ‘significantly’ favoring for transfer?”
  5. “Whether the equities lie considerably against granting mandamus, United States v. Dern, 289 U.S. 352, 359 (1933), Zabel v. Tabb, 430 F.2d 199, 208 (5th Cir. 1970), and In re Telular Corp., 319 F. App’x 909, 911 (Fed. Cir. 2009), when, defendant, operates in, hires employees and transacts business in transferor forum, whereas, (i) plaintiff is not subject to personal jurisdiction or venue in the transferee forum; (ii) a declaratory judgment action of patent non-infringement could not have been brought against plaintiff in the transferee forum; and (iii) a small business such as plaintiff would be forced to incur significant delays and doubled out of pocket costs and expenses in the transferee forum[.]”
  6. “Whether the district court’s lack of explanation makes it impractical for the Federal Circuit, see In re Archer Direction Drilling Servs., L.L.C., 630 F. App’x 327, 329 (5th Cir. 2016), to determine whether the district court clearly abused its discretion given that there is a rational basis for denying transfer when all the facts are accounted for[.]”

In Dana-Farber Cancer Institute Inc. v. Ono Pharmaceutical Co., Ono Pharmaceutical asked the en banc court to review the following questions:

  1. “Whether the panel erred in adopting a bright-line rule that the novelty and non-obviousness of an invention over alleged contributions to conception are ‘not probative’ of whether those alleged contributions were significant to conception.”
  2. “Whether the panel erred in holding that alleged contributions to the conception of an invention can be ‘significant’ even though the content of the alleged contributions was publicly disclosed before the date of conception.”

And in Fall Line Patents, LLC v. United Patents, LLC, Fall Line Patents presented the following question:

  • “Whether this Court’s mandamus power is categorically unavailable to police egregious violations of the Board’s duty to apply the real-party-in-interest rules to petitioners whose entire business model is to challenge patents on behalf of others.”

New Response

In Immunex Corp. v. Sandoz Inc., Immunex filed its response to Sandoz’s petition for en banc review, which alleged the court’s panel decision “[warped] the all-substantial-rights test [for double-patenting] and [opened] the door for more companies to obtain multiple patents—and longer patent terms—for a single invention.”

In its response to the petition, Immunex asserts that en banc review is not warranted. It argues that “the ’31 years of patent protection . . .’ that Sandoz bemoans . . . does not exist.” Additionally, it contends that the panel’s decision “was correct and consistent with this Court’s precedent, and that assessment is unlikely to have significant consequences for either obviousness-type double patenting (ODP) or prudential standing.”