Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received three new petitions raising questions related to choice of law, forum selection clauses, and injunctive relief; the on-sale bar; and the standard for granting a motion to seal court records. The court also invited a response to a petition raising a question related to claim construction. Finally, the court received a motion to expedite issuance of a mandate and ordered a response to the motion in the previously-mentioned case raising questions related to choice of law, forum selection clauses, and injunctive relief. Here are the details.
En Banc Petitions
In Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc., Sarepta Therapeutics asked the en banc court to review the following questions:
- “Does the Erie doctrine require this Court to apply state substantive law when deciding an issue of contract interpretation under state law, including a state contract law principle that there can be no waiver of a statutory right unless that waiver is clearly and affirmatively expressed in the agreement?”
- “When a district court denies a preliminary injunction motion based on the movant’s failure to establish the first two ‘gateway’ factors, and this Court reverses those determinations on appeal, is the appropriate remedy to vacate and remand for further proceedings to allow the district court to reevaluate and balance the four preliminary injunction factors before entering any injunction?”
In Junker v. Medical Components, Inc., Junker asked the en banc court to review the following questions:
- “May a Panel decision disregard Federal Circuit law applicable to summary judgment standards of review, and also rely on post-critical date evidence to assess whether a pre-critical date letter constitutes an offer for sale and disregard industry practice in applying contract law as generally understood under Federal Circuit law?”
- “May a quotation letter create an on-sale bar if it is not capable of forming a binding contract by simple acceptance that does not meet the terms of a specific and defined offer?
- “May a quotation constitute an offer ‘for sale’ by a company/individual who violated a non-disclosure agreement and infringed the patent having no right to sell and with no involvement by the patentee in the alleged sale activity?”
In Uniloc USA, Inc. v. Apple Inc., Electronic Frontier Foundation asked the en banc court to review the following questions:
- “Does the presumption of public access attach to dispositive motions and attached exhibits when they contain information about patent licenses?”
- “May district courts deny motions to seal that fail to comply with procedural requirements of their local rules?”
New Invitation to Respond
The Federal Circuit invited a response to the petition in Polygroup Limited MCO v. Willis Electric Co., which raised a question relating to claim construction.
New Motion to Expedite Issuance of Mandate and Order Requesting a Response
In Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc., a new case mentioned above, the respondent, Nippon Shinyaku, filed a Motion to Expedite Issuance of Mandate. In it, Nippon Shinyaku argues that issuance of the mandate would allow for “swift entry of an injunction in the district court” and “swift termination of the [inter partes reviews at issue in the case].” Additionally, Nippon argues, an “[e]xpited issuance of the mandate would prevent Sarepta from . . . using its motion for rehearing to ‘run out the clock,’ thus nullifying this Court’s decision.” Moreover, says Nippon Shinyaku, “this relief would not prejudice Sarepta” since it “could seek to refile IPRs within the statutory period.” The Federal Circuit subsequently requested a response to this motion.