Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received three petitions concerning issues related to transfer and petitions for writs of mandamus, inter partes review and deference to the Patent Trial and Appeal Board, and anticipation. The court also invited a response to a petition concerning the scope of appellate review. Lastly, the court denied a petition in a case concerning induced infringement and the Hatch-Waxman Amendments. Here are the details.
En Banc Petitions
In In re Uber Technologies, Inc., Ikorongo Technology LLC and Ikorongo Texas LLC asked the en banc court to review the following questions:
- “Can a district court transfer a matter to a statutorily proscribed district based on expressly disregarding undisputed facts creating the proscription?”
- “What is the applicable standard of review for a petition for a writ of mandamus based on a dispute of law?”
- Whether “the panel decision is contrary to the following decisions of the Supreme Court of the United States and the precedents of this court: Bankers Life & Cas. Co. v. Holland, 346 U.S. 379 (1953); In re EMC Corp., 677 F.3d 1351 (Fed. Cir. 2012); Hoffman v. Blaski, 363 U.S. 335 (1960); Van Dusen v. Barrack, 376 U.S. 612 (1964).”
In Intex Recreation Corp. v. Team Worldwide Corp., Team Worldwide Corp. asked the en banc court to review the following questions:
- Whether “[t]he panel decision warrants en banc rehearing because the panel went outside the grounds as set forth in the IPR petition to reverse the Board’s determination of patentability, which is a clear violation of the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (2018).”
- Whether “[t]he panel decision warrants en banc rehearing because the panel afforded the PTAB no deference and should have, but did not, review the PTAB decision to determine if the Board’s decision was ‘arbitrary and capricious’ or ‘unsupported by substantial evidence’ in accordance with Section 706 of the Administrative Procedure Act pursuant to the Supreme Court’s decision in Dickinson v. Zurko, 527 U.S. 150 (1999).”
In Apple Inc. v. Corephotonics, Ltd., Apple asked the en banc court to review the following questions:
- “Does anticipation require a showing both that a prior art reference itself is ‘operative’ and that the prior art enables the challenged claims?”
- Whether “[t]he panel’s decision misapprehends or overlooks the holding of the very case upon which it relies: In re Dowty, 118 F.2d 363, 366 (CCPA 1941), and is contrary to the following decision of the Supreme Court of the United States and precedents of this court: Pickering v. McCullough, 104 U.S. 310 (1881); Raytheon Techs. Corp. v. Gen. Elec. Co., 993 F.3d 1374 (Fed. Cir. 2021); In re Dowty, 118 F.2d 363 (CCPA 1941).”
New Invitation to Respond
The Federal Circuit invited a response to the petition in Becton, Dickinson and Co. v. Baxter Corp. Englewood, where Baxter Corp. Englewood raised issues concerning the scope of the panel’s initial review.
The Federal Circuit denied the petition for rehearing en banc in GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., which raised issues concerning concerning induced infringement and the Hatch-Waxman Amendments.