En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received two responses to petitions raising questions related to anticipation and the standard for establishing venue. Here are the details.

En Banc Petitions

New Responses

In Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp., Merck Sharp & Dohme filed its response to Mylan Pharmaceutical’s petition for rehearing en banc. In its petition, Mylan Pharmaceuticals argued that the panel erred by “conclud[ing] 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.” Mylan elaborated that the “panel decision creates an intracircuit split, erases the distinction between list and genera disclosures, and blues the lines between anticipation and obviousness.”

In response, Merck Sharp & Dohme argues that the panel decision “reflects [a] straight-forward application of law to case-specific facts.” Merck Sharp & Dohme explains that Mylan “did not prove its case under the normal anticipation standard” because the prior art did not “expressly ‘disclose all elements of the claim . . . “arranged as in the claim.”‘” Merck rebuts Mylan’s argument that the “panel’s decision conflicts” with precedent by distinguishing other cases on the facts.

In In re Monolithic Power Systems, Inc., Bel Power Solutions filed its response to Monolithic Power’s petition for rehearing en banc. In its petition, Monolithic Power Systems argued that instead of focusing on whether a defendant has created a “regular and established place of business,” the panel “embraced a flawed inquiry into ‘the nature of the work that employees perform in their homes.'” Citing Judge Lourie’s dissent from the panel’s decision, Monolithic Power Systems further argues that “allowing the appealed ruling to stand ‘threatens to bring confusion to the law’ on venue and ‘erodes the clear statutory requirement of a regular and established place of business.'”

In response, Bel Power Solutions argues that “the panel made no new law when it denied MPS’s petition for a writ of mandamus.” It contends the panel’s decision “was grounded in well-settled authority governing patent venue.” It argues that “MPS’s petition amounts to nothing more than a disagreement over the district court’s assessment of the facts and the panel’s deference to those findings,” thus not warranting en banc review.