Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received a new petition raising questions related to the proper interpretation of a forum selection clause and whether it impacts inter partes review. The court also invited a response and received three new amicus briefs in a case that raised a question related to the written description requirement. Finally, the court denied three petitions raising questions relating to the Patent Trial and Appeal Board’s analysis of the non-obviousness requirement, inter partes review estoppel, and the Federal Circuit’s reversal of a judgment in an inter partes review proceeding based on a teaching away finding. Here are the details.
En Banc Petitions
New Petition
In Kannuu Pty Ltd. v. Samsung Electronics Co., Kannuu Pty asked the en banc court to review the following questions:
- “Can parties who engage in patent-licensing discussions agree that all disputes relating to the potential patent license will be adjudicated exclusively in district court, thereby precluding IPR proceedings on the patents that were the subject of those licensing discussions?”
- “Should a court give a forum-selection clause its proper scope?”
New Invitation to Respond
The Federal Circuit invited a response to the petition in Juno Therapeutics, Inc. v. Kite Pharma, Inc., which raised questions concerning the written description requirement.
New Amicus Briefs
The court also received three new amicus briefs in Juno Therapeutics, Inc. v. Kite Pharma, Inc., which, again, raised questions concerning the written description requirement. All three amicus briefs support rehearing. One of the briefs came from a children’s research hospital, a medical school, and a cancer center. In it they argue, the panel’s decision will cause “researchers [to] expend their limited resources and time attempting to satisfy the Panel’s super-heightened description standard by exhaustively identifying, making, and testing innumerable embodiments for old technology, rather than devoting resources and time towards new innovate technologies and improvements.” According to the friends of the court, this is not “tenable, and both will harm innovation without any corresponding benefit to the public.” Here is a list of the recently-filed amicus briefs:
- Brief of Amicus Curiae City of Hope in Support of Petition for Rehearing
- Brief of Amici Curiae Amgen Inc. and Association of University Technology Managers, Inc. (“AUTM”) in Support of Panel Rehearing or Rehearing En Banc
- Brief of St. Jude Children’s Research Hospital, Inc., Albert Einstein College of Medicine, and the University of Texas MD Anderson Cancer Center as Amicus Curiae in Support of Rehearing or Rehearing En Banc
New Denials
The Federal Circuit denied the petitions for rehearing en banc in three cases:
- Sirius XM Radio Inc. v. Fraunhofer-Gesellschaft Zur Forderung Der Angewandten Forschung E.V. (Patent Trial and Appeal Board’s analysis of the non-obviousness requirement)
- In re DMF, Inc. (inter partes review estoppel)
- Chemours Co. v. Daikin Industries, Ltd. (the Federal Circuit’s reversal of a judgment in an inter partes review proceeding based on a teaching away finding)