Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received three new petitions raising questions related to tolling for post-trial motions, the Federal Circuit’s reversal of a judgment in an inter partes review proceeding based on a teaching away finding, and a denial of a petition for a writ of mandamus seeking to order transfer. The court also invited a response to a petition concerning deference to the Patent Trial and Appeal Board. Lastly, the court denied petitions in two cases relating to transfer and the standard for review for petitions for writs of mandamus and a third case relating to patent eligibility. Here are the details.
En Banc Petitions
- “The Supreme Court has repeatedly admonished that ‘jurisdictional rules should be clear.’ Lapides v. Bd. of Regents of Univ. Sys. of Ga., 535 U.S. 613, 621 (2002). Federal Rule of Appellate Procedure 4(a)(4)—which governs appellate jurisdiction by specifying the time within which a notice of appeal ‘must’ be filed if specified post-trial motions are filed below—implements the Supreme Court’s admonition through a clear, bright-line directive by stating that ‘the time to file an appeal runs for all parties from the entry of the order disposing of the last such remaining motion.’ Fed.R.App.P. 4(a)(4)(A). If an appellant follows the Rule’s bright-line instruction by waiting to file its notice of an interlocutory appeal to this Court under 28 U.S.C. §1292(c)(2) until the district court ‘dispos[ed] of the last such remaining motion,’ does the Court nevertheless lack jurisdiction if the last such remaining motion does not ‘relate to’ the particular judgment being appealed?”
In The Chemours Co. v. Daikin Industries, Ltd., Daikin Industries, Ltd. asked the en banc court to review the following questions:
- “Whether this Court has authority to review and reverse an agency’s determination on a factual ground, here, ‘teaching away,’ that was explicitly disclaimed by the party bearing the burden of proof, never ruled upon by the agency, and contradicted by record evidence.”
- Whether “the panel decision conflicts with Supreme Court and this Court’s precedent on: (1) this Court’s limited review of factual issues in agency decisions, e.g., Securities and Exchange Commission v. Chenery Corporation, 318 U.S. 80 (1943), In re NuVasive, Inc., 842 F.3d 1376 (Fed. Cir. 2016), In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000); (2) the strict standard for finding a teaching away from claim limitations, e.g., Meiresonne v. Google, Inc., 849 F.3d 1379 (Fed. Cir. 2017), Bayer Pharma AG v. Watson Laboratories, Inc., 874 F.3d 1316 (Fed. Cir. 2017), In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012); and (3) secondary considerations, e.g., Novartis AG v. Torrent Pharmaceuticals Limited, 853 F.3d 1316 (Fed. Cir. 2017), Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023 (Fed. Cir. 2016).”
In In re Apple Inc., Apple Inc. asked the en banc court to review the following questions:
- “Whether a district court’s mere application of each § 1404(a) factor precludes mandamus relief even in the face of multiple clear legal errors in the analysis?”
- Whether “the panel decision is contrary to at least the following precedents of this Court: In re Samsung Elecs. Co., Ltd., 2 F.4th 1371 (Fed. Cir. 2021); In re Apple Inc., 979 F.3d 1332 (Fed. Cir. 2020); In re Acer Am. Corp., 626 F.3d 1252 (Fed. Cir. 2010).”
New Invitation to Respond
The Federal Circuit invited a response to the petition in Intex Recreation Corp. v. Team Worldwide Corp., which raised issues concerning deference to the Patent Trial and Appeal Board.
The Federal Circuit denied petitions in the following cases: