Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received a response to a petition raising a question related to the motivation to combine prior art references in an obviousness analysis. The court also invited a response to a petition that raising questions related to the standard for granting a motion to seal court records. The court received an amicus brief in support of a petition raising a question related to the presumption of nexus in an obviousness analysis. Finally, the court received a reply in support of a petition raising questions related to the Appointments Clause. Here are the details.
En Banc Petitions
New Response
In Adapt Pharma Operations Ltd. v. Teva Pharmaceuticals USA, Inc., Teva filed its response to Adapt’s petition for rehearing en banc. In its petition, Adapt argued that the “the divided panel in this case announced a ‘new standard of obviousness'” by holding “no . . . reason [to combine] was needed given the generalized recognition of the deficiencies of existing treatments and ‘the prior art references themselves.'” In response, Teva now argues that the petition seeks review of an “application of well-established law to a well-reasoned and fact-specific decision.” Teva contends Adapt’s petition is “simply a request for the en banc court to revisit the factual findings of the district court” because the “the district court credited the testimony of Teva’s witnesses over Adapt’s.”
New Invitation for Response
The Federal Circuit invited a response to the petition in Uniloc USA, Inc. v. Apple Inc., which raised questions relating to the standard for granting a motion to seal court records.
New Amicus Brief
The court received a new amicus brief in Zaxcom, Inc. v. Lectrosonics, Inc., filed by former Chief Judge of the Federal Circuit, Paul R. Michel. In his brief, Michel argues the “Court’s decision here . . . create[s] unintentional confusion and conflict in this Court’s obviousness jurisprudence.” He explains that, in his view, the “new ‘requirements’ of the presumption-of-nexus analysis conflict with this Court’s precedent” and “unnecessarily complicate what should be a simple application of the rebuttable presumption for allocating the initial burden of producing evidence.”
New Reply in Support of Petition
In Corephotonics, Ltd. v. Apple Inc., Corephotonics, Ltd. filed its reply in support of its petition for rehearing en banc, which raised a question related to the Appointments Clause and Administrative Patent Judges. In its response, Apple argued that “the Supreme Court held that an inferior officer may perform the responsibilities . . . without violating the Appointments Clause because the inferior office does so only temporarily and, in doing so, remains an inferior officer.” The acting director of the U.S. Patent and Trademark Office, Commissioner Hirshfeld also filed an intervenors response where the USPTO argued that “the Supreme Court has long recognized that the Appointments Clause allows an inferior officer like Commissioner Hirshfeld to perform the duties of a vacant principal on a temporary basis.” Hirschfeld maintains “Corephotonic’s argument is ultimately at odds with Arthrex itself.”
Now, in its reply to both responses, Corephotonics argues that there is “no reasonable way to reconcile Apple’s and the PTO’s positions with the Supreme Court’s clear constitutional mandate.” Corephotonics explains how the framework of these arguments “requires the Director-Review function to be freely and fully delegable to any inferior officer,” which means that Administrative Patent Judges “could issue final decisions binding the Executive Branch to IPR proceedings,” exactly “what the Supreme Court[] declared to be unconstitutional in Arthrex.”