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 written description requirement. The court also received a new response to a different petition also raising a question related to the written description requirement. In addition, the court denied a petition for hearing en banc raising a question related to the Federal Circuit’s jurisdiction to hear appeals from denials of petitions for inter partes review. Here are the details.
En Banc Petitions
In Biogen International GmbH v. Mylan Pharmaceuticals Inc., Biogen International asked the en banc court to review the following questions:
- “Does 35 U.S.C. § 112’s requirement to provide ‘a written description of the invention’ require that the specification prove the invention’s efficacy?”
- “Does a specification that discloses multiple embodiments have to repeatedly describe and single out the claimed embodiment?”
- “May a court of appeals defer to a district court’s factfinding while declining to address multiple legal errors that skewed that factfinding?”
In Juno Therapeutics, Inc. v. Kite Pharma, Inc., Kite Pharma filed its response to Juno Therapeutics’ petition for rehearing en banc. In its petition, Juno Therapeutics argued a “rigid written-description inquiry is particularly devastating for pharmaceuticals inventions” and a “bright-line rule of ‘possession’ . . . is essentially impossible to meet.” In response, Kite Pharma argues that “Juno offers no new reasons to drastically change the status quo” and “rehashes the same arguments about text, precedent, and policy that the en banc Court thoroughly considered and rejected” in Ariad Pharmaceuticals, Inc. v. Eli Lily & Co.
The Federal Circuit denied the petition for hearing en banc in Roku, Inc. v. Universal Electronics, Inc., which raised a question relating to the Federal Circuit’s jurisdiction to hear appeals from denials of petitions for inter partes review.