This morning the Federal Circuit issued a precedential opinion in a patent case appealed from the Patent Trial and Appeal Board. The opinion addresses issues related to estoppel as a result of inter partes review. The court also issued two nonprecedential opinions in a patent and employment case, and a nonprecedential order denying a petition for en banc rehearing in a patent case. Notably, with respect to the order, Chief Judge Moore wrote a concurring opinion joined by Judges Newman, O’Malley, Taranto, and Chen, while Judge Prost wrote a dissenting opinion joined by Judges Dyk and Reyna. Finally, the court issued three nonprecedential orders denying and dismissing petitions for writs of mandamus and two Rule 36 judgments. Here are the introductions to the opinions and orders.
Intuitive Surgical, Inc. v. Ethicon LLC (Precedential)
Intuitive Surgical, Inc. (“Intuitive”) appeals from a final written decision of the Patent Trial and Appeal Board (“Board”) upholding the patentability of claims 24–26 of U.S. Patent No. 8,479,969. See Intuitive Surgical, Inc. v. Ethicon LLC, No. IPR2018-01248, 2020 WL 594140 (P.T.A.B. Feb. 6, 2020).
The threshold question is whether Intuitive is authorized by statute to pursue this appeal. That question turns on whether the Board erred in finding Intuitive estopped from maintaining this inter partes review (“IPR”) proceeding and terminating Intuitive as a party under 35 U.S.C. § 315(e)(1). Id. at *4. We hold that the Board did not err and, thus, dismiss Intuitive’s appeal. Accordingly, we do not reach the merits of the Board’s final written decision upholding the patentability of claims 24–26 of the ’969 patent.
Intuitive Surgical, Inc. v. Ethicon LLC (Nonprecedential)
Intuitive Surgical, Inc. (“Intuitive”) appeals from two final written decisions of the Patent Trial and Appeal Board (“Board”) upholding the patentability of claims 24– 26 of U.S. Patent No. 8,479,969.
At issue in this case is whether the Board erred in upholding the patentability of claim 24 of the ’969 patent over the combination of the Giordano and Wallace prior art references, and in upholding the patentability of claims 24–26 over the combination of the Timm and Anderson prior art references. We hold that the Board did not err and affirm.
Haq v. Office of Personnel Management (Nonprecedential)
Waheeda Haq petitions for review of a final decision of the Merit Systems Protection Board (“board”) affirming a reconsideration decision by the Office of Personnel Management (“OPM”) denying her claim for a deferred retirement annuity. See Haq v. OPM, No. DC-0842-20-0798-I-1, 2020 WL 6269186 (M.S.P.B. Oct. 23, 2020). For the reasons discussed below, we affirm.
GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc. (Precedential Order)
Teva Pharmaceuticals USA, Inc. filed a petition for rehearing en banc. A response to the petition was invited by the court and filed by GlaxoSmithKline LLC and SmithKline Beecham (Cork) Limited. The court also accepted amicus briefs filed by Apotex, Inc.; the Association for Accessible Medicines; Mylan Pharmaceuticals Inc.; Henry A. Waxman; and 14 Professors of Law. The petition was first referred to the panel that heard the appeal, which denied panel rehearing. Thereafter, the petition was referred to the circuit judges who are in regular active service. The court conducted a poll on request, and the poll failed.
Upon consideration thereof,
IT IS ORDERED THAT:
(1) The petition for panel rehearing is denied.
(2) The petition for rehearing en banc is denied.
MOORE, Chief Judge, with whom NEWMAN, O’MALLEY, TARANTO, CHEN, and STOLL, Circuit Judges, join, concurring in the denial of the petition for rehearing en banc.
The dissents advance, as bases for en banc review, legal positions that Teva has not asserted or developed. Teva never objected to the admission of the partial label as evidence, and in this court, it never challenged the jury’s finding on the separately instructed requirement that it knew that the uses it was encouraging would infringe. Besides challenging causation (not raised by the dissents), Teva challenged, as to the partial label period, the jury’s verdict that Teva actively encouraged certain patent-covered uses, including one (for post-MI LVD) it retained as an indication on its partial label. But Teva did not argue to the panel, and has not argued on rehearing, that GSK’s representations to the FDA constituted a bar to admission of the partial label or to satisfaction of the inducement liability standard during the partial label period. But that is the legal position advanced in the dissents, whether under a theory that those communications preclude meeting the encouragement element or under a preemption theory. Prost Dis. 2–4; accord Dyk Dis. 2–3; Reyna Dis. 2.
* * *
We should not grant Teva’s en banc petition to consider altering our settled inducement law standards based on fairness concerns that are central to the equitable estoppel defense not yet addressed. Let us allow the district court to address these fairness concerns by adjudicating that defense on remand. If the result is unsatisfying, we will surely have a chance to review it. I concur in the denial of rehearing en banc.
PROST, Circuit Judge, with whom DYK and REYNA, Circuit Judges, join, dissenting from the denial of the petition for rehearing en banc.
The court’s decision not to rehear this case en banc is disappointing. The issues in this case, at the intersection of patent law and pharmaceutical regulation, are unquestionably important—affecting millions of Americans. The panel majority’s treatment of these issues has raised enough alarm to warrant the full court’s attention. As the circuit court vested with exclusive jurisdiction to review such issues, it was our responsibility to do so here. I respectfully dissent from what I view as the court’s abdication of that responsibility.
In re B.E. Technology, L.L.C. (Nonprecedential Order)
B.E. Technology, L.L.C. (“B.E.”) petitions this court for a writ of mandamus challenging decisions of the Patent Trial and Appeal Board instituting inter partes review proceedings. Twitter, Inc. and Google LLC oppose.
* * *
IT IS ORDERED THAT:
(1) The petition is denied.
(2) Costs to Google and Twitter.
In re Smith (Nonprecedential Order)
Franklin C. Smith petitions for a writ of mandamus to compel the Clerk of the United States District Court for the District of Columbia to docket Mr. Smith’s lawsuit against United States Attorney General Merrick Garland and judges of the District Court for the District of Columbia relating to their handling of a criminal case.
The All Writs Act provides that the federal courts “may issue all writs necessary or appropriate in aid of their respective jurisdictions and agreeable to the usages and principles of law.” 28 U.S.C. § 1651(a). As that statute makes clear, the Act is not itself a grant of jurisdiction. See Clinton v. Goldsmith, 526 U.S. 529, 534–35 (1999). Any appeal from Mr. Smith’s proposed case would fall outside this court’s appellate jurisdiction. Our review of district court decisions is limited to cases on review from the United States Patent and Trademark Office, see 28 U.S.C. § 1295(a)(4)(C); civil actions arising under the patent laws, see § 1295(a)(1); and cases where the district court’s jurisdiction was based in part or in whole on the Little Tucker Act, 28 U.S.C. § 1346(a)(2), see § 1295(a)(2). Because Mr. Smith’s case would not fall within that limited subject matter, we also do not have jurisdiction to grant his request for mandamus relief.
IT IS ORDERED THAT:
The petition is dismissed.
In re Sunstone Information Defense, Inc. (Nonprecedential Order)
The United States District Court for the Eastern District of Virginia transferred SunStone Information Defense, Inc.’s patent infringement action to the United States District Court for the Northern District of California. SunStone now petitions this court for a writ of mandamus directing the California court to return the action to Virginia and to set aside the transfer order. For the following reasons, we deny the petition.