En Banc Activity / Petitions

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 the process and standard for determining indefiniteness. The court also received an amicus brief in support of a petition raising questions related to the standard for granting a motion to seal court records. Finally, the court received a reply in support of a motion to expedite issuance of the mandate in a case raising questions related to choice of law, forum selection clauses, and injunctive relief. Here are the details.

En Banc Petitions

New Petition

In Nature Simulation Systems Inc. v. Autodesk, Inc., Autodesk asked the en banc court to review the following questions

  1. “Whether courts should decide the ultimate legal question of indefiniteness without deferring to patent examiners, especially when the examiner offers no statement, reasoning, or analysis on indefiniteness.”
  2. “Whether indefiniteness is independent of lack of enablement, adequate written description, and best mode.”

New Amicus Brief

The court received a new amicus brief in Uniloc USA, Inc. v. Apple Inc., filed by a group of intellectual property and first amendment law professors. In its brief, they argue the “majority’s opinion dangerously undermines the public’s fundamental right of access to judicial records” by “improperly flipp[ing] the presumption of public access” and “disregarding the firmly established public interest in accountability and transparency.”

New Reply in Support of Motion to Expedite Issuance of Mandate

In Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc., Nippon Shinyaku filed its reply in support of its 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 argued 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 argued that “the alleged ‘continued irreparable harm’ that Nippon Shinyaku complains of . . . is obviated by the initial stay of the IPR proceedings” and that “the parties can jointly request an extension of the stay.” Now, in its reply, Nippon Shinyaku argues that “[t]he possibility that the PTAB might extend the stay does not avert the harm to Nippon” and that “Sarepta is incorrect in that issuance of the mandate would prevent this Court from considering its petition for rehearing.”