Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received four new responses to petitions raising questions related to choice of law, forum selection clauses, and injunctive relief; the process and standard for determining indefiniteness; and the standard for granting a motion to seal court records. The court also denied two petitions raising questions related to the on sale bar and claim construction. Here are the details.
En Banc Petitions
In Nippon Shinyaku Co. v. Sarepta Therapeutics, Inc., Nippon Shinyaku filed its response to Sarepta Therapeutics’ petition for rehearing en banc. In its petition, Sarepta Therapeutics argued “the panel devised its own ‘general principle’ of contract law that ‘parties are entitled to bargain away
their rights to file [inter partes review] petitions.'” According to Sarepta Therapeutics, this approach conflicts both with “settled Delaware contract law requiring that any such waiver of statutory rights be clearly and affirmatively expressed in the agreement” and with the Erie Doctrine, which “prohibits federal courts from devising federal common law based on ‘general’ principles.” In response, Nippon Shinyaku argues that “the panel correctly applied Delaware law” by holding that “the plain language of the . . . forum selection clause unambiguously covered IPRs.”
In Nature Simulation Systems Inc. v. Autodesk, Inc., Nature Simulation Systems filed its response to Autodesk’s petition for rehearing en banc. In its petition, Autodesk argued that “the majority departed from precedent and adopted a new, heightened standard of deference to patent examiners on the legal question of definiteness.” In response, Nature Simulation Systems argues “the panel decision is a routine application of” controlling precedent based “on the full intrinsic record.”
In Uniloc USA, Inc. v. Apple Inc., Apple filed its response to the Electronic Frontier Foundation’s petition for rehearing en banc. In its petition, the Electronic Frontier Foundation argued “the majority created a patent-specific exemption from the general presumption of public access—an error that conflicts with binding precedents of the Supreme Court, this Court, and the Ninth Circuit.” In response, Apple argues that “[n]othing about this narrow decision warrants rehearing or en banc consideration” According to Apple, “the panel majority directed the district court to balance the public’s right of access against the interests of third parties in keeping . . . licensing information under seal,” which “is fully consistent with Ninth Circuit law and this court’s precedent.”
In the same case, Uniloc USA, Inc. v. Apple Inc., Uniloc also filed its response to the Electronic Frontier Foundation’s petition for rehearing en banc. Uniloc similarly argues that “the panel came to the correct conclusion in these appeals; there is no cause to revisit its decision.” Uniloc also emphasizes that “EFF is asking the Federal Circuit for an en banc determination of Ninth Circuit law.”
The Federal Circuit has denied the petitions in the following cases: