Here is an update on recent en banc activity at the Federal Circuit. The court ordered a stay in the proceedings in a veteran’s case. As for patent cases, the court received a new petition raising questions related to claim construction and the written description requirement. The court also invited a response to the same petition. Finally, the court granted panel rehearing but denied rehearing en banc in response to a petition raising questions related to an alleged conflict of interest and summary affirmances. Here are the details.
En Banc Case
Order Staying Proceedings
En Banc Petitions
In Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc., HEC Pharm Co. asked the en banc court to review the following questions:
- “The ‘405 patent claims 0.5 mg of fingolimod administered daily ‘absent an immediately preceding loading dose,’ yet the concept of loading dose is nowhere in the specification or the priority filing and the claim language was added years after the earliest claimed priority date. Does silence in the specification satisfy the written description requirement under 35 U.S.C. §112 for a negative claim limitation?”
- “Is this Court bound to findings of fact concerning what a patent specification discloses or fails to disclose where those district court findings are based solely on expert testimony that are contradicted by the intrinsic evidence and plain language of the specification?”
Invitation to Respond
The Federal Circuit invited a response to the petition in Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc., which, as discussed above, raises questions relating to the written description requirement and claim construction.
The Federal Circuit granted panel rehearing but denied rehearing en banc in Western Plastics, Inc. v. DuBose Strapping, Inc., a case that raised questions related to an alleged conflict of interest and summary affirmances.
In the newly-issued panel opinion, which replaces the court’s prior summary affirmance, the court included the following text in a first footnote (notably of a very short opinion–but not a summary affirmance–again affirming the district court):
Circuit Judge Newman and Circuit Judge Stoll are recused, taking no position in this decision. Chief Judge Moore and Circuit Judge Chen replaced Circuit Judge Newman and Circuit Judge Stoll on the panel following the court’s initial December 17, 2021 judgment. DuBose raised a potential conflict of interest in its petition for rehearing. That potential conflict was identified to the court more than a month after argument and, in fact, after a judgment was entered against DuBose. Counsel had all of the necessary facts at the time of argument and should have brought the potential conflict to the court’s attention at that time. Delays under these circumstances are the “most egregious.” Pendergraft v. Network of Neighbors, Inc., 745 F. App’x 517, 520 (5th Cir. 2018). As other circuit courts have described, a litigant “should not be permitted to sandbag” the court while “hoping for a satisfactory resolution, but retaining a ground of attack on the judge’s ruling.” El Fenix de Puerto Rico v. The M/Y Johanny, 36 F.3d 136, 141 n.6 (1st Cir. 1994) (quoting James W. Moore & JoD.Lucas, Moore’s Federal Practice ¶ 63.07 (2d ed. 1993)); see also, e.g., Burke v. Regalado, 935 F.3d 960, 1053 (10th Cir. 2019) (“Most circuits require that [a motion for recusal] be brought ‘at the earliest moment after knowledge of the facts demonstrating the basis for such disqualification.’ . . . This requirement guards against a party’s withholding ‘a recusal application as a fallback position in the event of adverse rulings on pending matters.’”) (first quoting Travelers Ins. Co. v. Liljeberg Enters., Inc., 38 F.3d 1404, 1410 (5th Cir. 1994); and then In re IBM Corp., 45 F.3d 641, 643 (2d Cir. 1995)). We expect parties and counsel who appear before this court to have the utmost candor including in issues of potential conflict.