En Banc Activity / Petitions
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Here is an update on recent en banc activity at the Federal Circuit. In the only pending en banc case, a veterans case, the appellant filed his en banc reply brief and the court scheduled the oral argument to occur in February. We will post an argument preview prior to the oral argument. As for petitions for rehearing en banc in patent cases, the court received two new petitions raising questions relating to the standard for enhanced damages and the Federal Circuit’s jurisdiction. The court also received responses to two petitions raising questions related to the inducement doctrine’s interaction with the Hatch-Waxman Amendments and the notice required to collect damages for infringement. Finally, the court denied three petitions raising questions related to the interpretation of a forum selection clause, a writ of mandamus, and comparable licenses and royalty calculations, and another petition in a pro se case. Here are the details.

En Banc Case

In the only pending en banc case, a veterans case entitled Taylor v. McDonough, Taylor filed his en banc reply brief. In its brief, the VA argues that “Congress has not authorized the payment of appropriated funds for periods that predate a claimant’s application for benefits, even for sympathetic claimants, and an order directing payment of such funds here based upon equitable estoppel would violate the separation of powers.” In response, Taylor argues that separation of powers does not “prevent this Court from correcting executive misconduct” and that “[a]pplying estoppel to this case does not violate ‘separation of powers'” but, rather, “vindicates it.”

The court also scheduled oral argument for this case for February 10, 2022. Be on the lookout for our argument preview in January.

En Banc Petitions

New Petitions

In SRI International, Inc. v. Cisco Systems Inc., Cisco Systems asked the en banc court to review the following question:

  • Whether “the panel decision is contrary to the following precedents of the Supreme Court and this Court: Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016); Apple Inc. v. Samsung Electronics Co., 839 F.3d 1034, 1039 (Fed. Cir. 2016) (en banc); Advanced Software Design Corp. v. Fiserv, Inc., 641 F.3d 1368, 1381-1382 (Fed. Cir. 2011); and Durango Associates, Inc. v. Reflange, Inc., 912 F.2d 1423, 1425 (Fed. Cir. 1990).”

In Roku, Inc. v. Universal Electronics, Inc., Roku asked the en banc court to decide the following question:

  • Whether “this Court has jurisdiction under 28 U.S.C. § 1295(A)(4) to hear a direct appeal from a final agency action by the United States Patent and Trademark Office’s Patent Trial and Appeal Board (‘Office’ or ‘Board’) denying inter partes review (‘IPR’) under 35 U.S.C. § 314(a), notwithstanding the prohibition on appeals from institution decisions in 35 U.S.C. § 314(d), where the appellant alleges at least two different unlawful agency actions under the Administrative Procedure Act (‘APA’).”

New Responses

In GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., GlaxoSmithKline filed its response to Teva Pharmaceutical’s petition for rehearing en banc. In its petition, Teva argued that “Congress allowed generics to adopt ‘skinny labels'” and “Teva followed that pathway.” Teva maintains that, when “the majority held that Teva induced infringement despite the carve-out,” however, “the decision placed every skinny-labeled generic at risk.” In response, GlaxoSmithKline argues that “the majority has now twice applied black letter law to conclude that substantial evidence supported the jury’s factual findings.” GGlaxoSmithKline contends that “[t]here is no need for this Court to revisit the jury’s verdict a third time.”

In Lubby Holdings LLC v. Chung, Henry Chung filed his response to Lubby Holdings’ petition for rehearing en banc. In its petition, Lubby Holdings argued that it “provided, at minimum, a qualified charge of infringement” that was sufficient notice under 35 U.S.C. § 287. In response, Chung argues that “the panel majority correctly interpreted and applied the standard for actual notice” and “the majority correctly applied precedent in holding that Chung met his initial burden to identify unmarked, patented products.”

New Denials

The Federal Circuit has denied the petitions in the following cases: