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 assignments of patents and standing and a new response to a petition raising questions related to claim construction and the written description requirement. The court also requested a reply from a petitioner in support of its combined petition, which raised questions related to the Appointments Clause. Finally, the court denied two petition raising questions related to the standard of review for a grant or denial of a preliminary injunction and claim construction. Here are the details.
En Banc Petitions
New Petition
In Filler v. United States, Filler asked the en banc court to review the following questions:
- Whether “[t]he Assignment of Claims Act 31 USC §3727 (hereinafter ‘ACA’) should not be applied against patent claims where the assignment at issue is among closely related parties who continue, after said assignment, to possess a shared claim.”
- “Who should be considered the original claimant for the purposes of the Assignment of Claims Act (31 USC §3727),” “when a patent assignment divides a right to sue and a right to exclude?”
- Whether the panel’s ruling “caus[es] an unwarranted circuit split because it withholds subject matter jurisdiction when at least one party has both the injury and standing.”
New Response
In Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc., Novartis Pharmaceuticals filed its response to HEC Pharm’s petition for rehearing en banc. In its petition, HEC Pharm argued that “the majority jettisoned foundational jurisprudence [by] holding the absence of disclosure is evidence of a negative claim limitation.” HEC pharm explained that the majority allowed “expert testimony to replace the plain language of the specification,” which “is [a] fundamental legal error.” In response, Norvartis Pharmaceuticals argues that “the panel decision is not based on silence, but on the district court’s finding . . . that a person of skill would read this specification as not silent.” Novartis further argues that “the panel properly applied [the clear-error] standard here in refusing to substitute its own judgement for the district court’s fact findings.”
New Reply Requested
The Federal Circuit requested a reply in support of a combined petition in Corephotonics, Ltd. v. Apple Inc., a case that raised questions related to the Appointments Clause.
New Denials
The Federal Circuit denied the petitions in the following cases:
- Low Temp Industries, Inc. v. Duke Manufacturing Co. (standard of review for a preliminary injunction)
- AstraZeneca AB v. Mylan Pharmaceuticals Inc. (claim construction)