En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit. In a pending en banc case raising questions related to whether on-the-job exposure to the recent novel coronavirus entitled federal correctional officers to additional pay pursuant to various federal statutes, the appellant filed his en banc reply brief. As for petitions in patent cases, the court received a new petition raising a question related to anticipation and two responses to a petition raising questions related to patent eligibility. The court also denied three petitions raising questions related the standard for an award of attorneys’ fees, inter partes review estoppel, and assignor estoppel. Here are the details.

En Banc Cases

Reply Brief

In Adams v. United States, Adams filed his reply brief in response to the response brief filed by the United States. In its brief, the United States argued that “[p]laintiffs did not engage in the type of extraordinary duties for which hazard pay was intended” and, as a result, the court “should affirm the dismissal of the complaint.”

Now, in his reply brief, Adams argues that the “Correctional Officers risked their own lives and went above and beyond to help protect the country during an unprecedented time.” According to Adams, if “these acts do not qualify for hazard pay, then HDP [hazardous duty pay] and EDP [environmental differential pay] statutes are essentially worthless.” In support, Adams makes several arguments directly rebutting the government’s arguments from its response brief.

Adams argues that, even though the government “alleges that COVID-19 is not an unusual hazard,” “COVID-19 is undeniably an usual hazard faced by the Correctional Officers.” Adams contends “the Government’s claim that exposure to communicable diseases is part of the Correctional Officer’s job was made up by the Government without any proof and is inconsistent with the Government’s own position description for the job.” Furthermore, says Adams, “under the relevant statutes and regulations, no new duties are required for HDP eligibility — instead, what is required is performing regular duties under new and unusually hazardous circumstances or conditions,” which, he says, the “Correctional Officers easily meet.”

Adams also refutes the government’s assertion that “the hazard at issue is ‘exposure to communicable disease[s].'” Adams explains that, under “the Government’s proposed definition, any new, novel, highly communicable and dangerous virus that creates a global pandemic would not be considered ‘unusual’ because it would merely fall under the rubric of a ‘communicable disease.'” Adams claims “this could not have been the intent of Congress” because “even a disease like the Ebola virus would not be considered unusual under these circumstances.” Instead, Adams argues, “any new variant of any communicable disease that is deemed sufficiently unusual and dangerous such that it can cause serious disease or death should merit HDP or EDP if it is not taken into account in the position description.”

Adams rejects the government’s argument that “unusual” should be understood to “exclude situations in which the hazard is present everywhere, including prisons.” Adams also argues that the “accident” faced by the Correctional Officers is “the exposure or potential exposure to COVD-19, while performing their job duties, without adequate safety protections.” Adams explains that this “definition is narrow and only a small set of employees would encounter such ‘accidents’ under the definition.”

Adams further argues his “proffered limitations concerning the ‘work with or in close proximity to’ language are narrow and workable.” By comparison, Adams argues, the “Government’s ‘Scientist’ Test is a blatantly incorrect, nonsensical interpretation of the regulation.” Adams elaborates that the government’s test “completely swallows any eligibility for HDP–no one can come up with an example of an eligible employee because such an example does not exist.” Thus, Adams says, the government’s “proposed limitation . . . should be rejected.”

Finally, Adams argues that “humans are the vessels by which COVD-19 spread throughout the globe,” making humans “the ‘primary containers of organisms pathogenic for man.'” Adams rejects the government’s argument that “the EDP regulations specifically describe what a ‘container’ means.” Adams instead argues that “the list in the EDP regulations is a non-exhaustive list.” Moreover, Adams argues, “the EDP regulations in fact do support the contention that human beings are primary containers” because one “of the examples of a primary container is ‘biopsy and autopsy material'” meaning “the human body can be a ‘primary container.'”

Adams concludes by contending “the Government lists three elements that an employee must show to be entitled to hazardous duty pay for working with or in close proximity to COVID-19” and the “Correctional Officers have sufficiently met all three of these requirements.” Thus, according to Adams, the complaint “contains sufficient details to plausibly allege a claim for HDP and EDP.”

En Banc Petitions

New Petition

In Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp., Mylan Pharmaceuticals asked the en banc court to review the following question:

  • Whether the “panel in this case [correctly] concluded that a prior-art reference could not anticipate or disclose an invention formed from two elements contained in defined lists that the art invited the skilled artisan to combine because the art contained ‘no direction to select’ either element from their respective lists.”

New Responses

In CareDx, Inc. v. Natera, Inc., Natera filed its response to CareDx’s petition for rehearing en banc. In the same case, Eurofins Viracor also filed its response to CareDx’s petition for rehearing en banc.

In its petition, CareDx argued that “a patent clam[ing] an improved method for measuring a known phenomenon” is “directed to an improvement . . . and is not directed to the natural phenomenon itself,” satisfying step one of the patent eligibility framework. Furthermore, CareDx explained that the panel erred at the second step of the patent eligibility framework by holding that “an improved measurement method is ineligible for patent protection when it uses a combination of tools, each of which already exists.” According to CareDx, this is a “uniquely demanding eligibility test that has no basis in the statutory text, precedent, or logic.”

In response, Natera now argues that “CareDX improperly treats pre-emption as a requirement for (rather than evidence of) ineligibility and asks this Court to exclude any consideration of conventionality from step one” of the patent eligibility analysis. Regardless, at step two, Natera argues, “the panel correctly held that the asserted claims add nothing inventive to the natural phenomena.”

Also in response, Eurofins Viracor now argues that CareDx “applied concededly conventional laboratory techniques to observe a known natural phenomenon,” which “[t]his court has repeatedly held . . . is not eligible for patent protection.” At step two, Eurofins argues, “CareDx has notably not cited any caselaw in support of its novel approach.” Eurofins Victor concludes that “the panel’s decision is entirely consistent with Supreme Court precedent, with this Court’s precedent, and with fundamental principles of patent eligibility.”

New Denials

Since our last update, the Federal Circuit has denied the petitions in the following cases: