Here is an update on recent en banc activity at the Federal Circuit. Recently the Federal Circuit granted en banc review in one veterans case, and last week the en banc court heard oral argument in another veterans case. As for petitions for en banc review in patent cases, the court invited a response to a petition raising a question related to claim construction. The court also received three new responses to petitions raising questions related to the Appointments Clause, claim construction, and the written description requirement. Finally, the court denied a petition raising questions related to the inducement doctrine’s interaction with the Hatch-Waxman Amendments. Here are the details.
En Banc Cases
As we have highlighted, the Federal Circuit recently granted en banc review in Rudisill v. McDonough, a veterans case. The en banc court will consider the question of a veteran’s statutory entitlement to education benefits under the Montgomery GI Bill and the Post-9/11 GI Bill, and in particular what the correct entitlement period is when considering both bills and multiple qualifying periods of service.
Last week the en banc court heard an oral argument in another veterans case, Taylor v. McDonough, addressing whether equitable estoppel may be used against the government with respect to establishing the effective date of an award of benefits. For more information, see our argument recap, which we will post later today. You can also listen to the entire oral argument here.
En Banc Petitions
Invitation to Respond
The Federal Circuit invited a response to the petition in Astrazeneca AB v. Mylan Pharmaceuticals Inc., which, as discussed below, raises a question relating to claim construction.
In Corephotonics, Ltd. v. Apple Inc., Apple filed its response to Corephotonic’s petition for rehearing en banc. In its petition, Corephotonics argued “the review of the Board’s decision in the [inter partes review] here . . . was not the constitutionally required Director Review mandated by United States v. Arthrex.” Corephotonics further argued that the case should be “remanded for a properly appointed Director to conduct the Direct Review.” In response, Apple argues that “the Supreme Court held that an inferior officer may perform the responsibilities . . . without violating the Appointments Clause because the inferior office does so only temporarily and, in doing so, remains an inferior officer.” According to Apple, “nothing in Arthrex changed that holding.”
In AstraZeneca AB v. Mylan Pharmaceuticals Inc., Mylan Pharmaceuticals filed its response to AstraZeneca’s petition for rehearing en banc. In its petition, AstraZeneca argued that by “ignoring the ordinary, significant digit meaning of a claim term as written, the majority has extirpated, root to branch, the settled understanding in this Court’s precedent, and scientific convention, that significant figures define the scope of numbers in claim terms.” AstraZeneca further argued that the panel’s approach “muddies the boundaries of hundreds of thousands of patent claims that recite numbers.” In response, Mylan Pharmaceutical argues that “no such rule exists” and “precedent has instead consistently and sensibly rooted claim construction in the intrinsic record, not extrinsic mathematical concepts.”
In Indivior UK Limited v. Dr. Reddy’s Laboratories S.A., Dr. Reddy’s Laboratories filed its response to Indivior UK’s petition for rehearing en banc. In its petition, Indivior UK argued that “the issue of written description support for claimed ranges is distinct from the issue of whether a broad genus disclosure supports a species claim.” Furthermore, it argued that the “claimed ranges are supported by the application’s disclosure of a broader range.” In response, Dr. Reddy’s Laboratories argues “Indivior ignores this Court’s more recent precedents” and the reality that “panel’s decision on the written description issue in this case was correct and consistent with precedent.”
The Federal Circuit denied the petition for hearing en banc in GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., which raised a question related to the inducement doctrine’s interaction with the Hatch-Waxman Amendments.