Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received four new petitions raising questions related to the scope of usable prior art in inter partes review proceedings, motivation to combine prior art references, and the presumption of nexus in a non-obviousness analysis. The court received a response to a petition raising questions related to claim construction and a response to a motion to expedite issuance of the mandate in a case raising questions related to choice of law, forum selection clauses, and injunctive relief. The court also invited a response to the petition already mentioned that raised a question related to motivation to combine prior art references. Finally, the court denied three petitions raising questions related to claim construction and the written description requirement. Here are the details.
En Banc Petitions
In Qualcomm Inc. v. Apple Inc., Apple asked the en banc court to review the following question:
- “Whether applicant admitted prior art found within the specification of a challenged patent may serve as the basis for an inter partes review proceeding under 35 U.S.C. § 311(b), which provides that a petitioner may request inter partes review ‘on the basis of prior art consisting of patents or printed publications?’”
In Adapt Pharma Operations Ltd. v. Teva Pharmaceuticals USA, Inc., Adapt Pharma Operations asked the en banc court to review the following question:
- “May a challenger in an obviousness case show the requisite ‘motivat[ion] to combine the teachings of the prior art references,’ Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quotation marks omitted), by relying exclusively on the generalized motivation to improve upon the prior art and prior art references disclosing innumerable options, in the absence of any articulated reason to select and combine the particular claim elements to arrive at the invention.”
In Zaxcom, Inc. v. Lectrosonics, Inc., Zaxcom asked the en banc court to review the following questions
- “Does the presumption of nexus apply to industry praise where the praised product is an embodiment of the claim and the claim is for the whole system (not a small component), regardless of the presence of any unclaimed or prior art features in the product, leaving it for a challenger’s rebuttal to address unclaimed or prior art features?”
Zaxcom also filed an identical petition in a separate case. This petition can be found here.
In Polygroup Limited MCO v. Willis Electric Co., Polygroup Limited filed its response to Willis Electric’s petition for rehearing en banc. In its petition, Willis Electric argued that the majority “impermissibly relied on the specification to broaden the plain claim language” and “reversed, rather than remanded,” which deprived Willis Electric of its “opportunity to litigate in full its alternative arguments for affirmance.” In response, Polygroup Limited argues that the majority “properly read the plain claim language, in light of the specification” and that Willis Electric’s argument is “procedurally improper as Willis never contended before that the Board’s remand decision relied on secondary references.”
New Invitation for Response
The Federal Circuit invited a response to the petition in Adapt Pharma Operations Ltd. v. Teva Pharmaceuticals USA, Inc., which, as discussed above, raises a question relating to motivation to combine prior art references.
New Opposition to Motion to Expedite Issuance of Mandate
In Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc., Sarepta Therapeutics filed its Opposition to Nippon Shinyaku’s Motion to Expedite Issuance of Mandate. In its motion, Nippon Shinyaku argued 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].” In response, Sarepta Therapeutics argues that “issuing the mandate would irreparably harm Sarepta because granting Nippon Shinyaku’s request would deprive this Court of jurisdiction over the appeal, immediately ending any further consideration of the petition.” Sarepta also argues that “the alleged ‘continued irreparable harm’ that Nippon Shinyaku complains of . . . is obviated by the initial stay of the IPR proceedings” and “the parties can jointly request an extension of the stay.”
The Federal Circuit has denied the petitions in the following cases:
- Evolusion Concepts, Inc. v. Hoc Events, Inc. (claim construction)
- Indivior UK Limited v. Dr. Reddy’s Laboratories S.A. (written description requirement)
- Biogen International GmbH v. Mylan Pharmaceuticals Inc. (written description requirement)