En Banc Activity / Petitions
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Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include a new response to a petition raising questions concerning inducement of infringement and skinny-labeling along with the denial of five petitions raising questions related to issue preclusion and public disclosures under 35 U.S.C. § 102. Here are the details.

New Response

Since our last update there is one new response to a petition.

In Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc., Hikma Pharmaceuticals raised the following questions:

  1. “Can a patentee state a claim that a defendant ‘actively induces infringement’ of a patented method under 35 U.S.C. § 271(b) without identifying any alleged statement by the defendant that even mentions, let alone encourages, practicing the claimed method?”
  2. “Where it is undisputed that a generic drugmaker has ‘carved out’ a patented method of use from its labeling under 21 U.S.C. § 355(j)(2)(A)(viii), does the generic drugmaker induce infringement of the patented method by (a) referring to its product as a ‘generic version’ of a branded drug approved for the patented method; and (b) quoting sales figures for the branded product—without mentioning the patented method?”

Now, in its response to the petition, Amarin contends “[t]he panel decision reasonably concluded that Amarin’s inducement claim was at least plausible, and Hikma’s disagreement with that conclusion does not warrant en banc review, especially given Hikma’s attempt to gloss over the very focus of the decision.” Furthermore, it argues, unlike “nearly every . . . skinny label case” the Federal Circuit “has considered, this appeal is from a dismissal on the pleadings and lacks the type of deep factual evidence present in those other cases.” Finally, it contends the “panel decision was consistent with all nine opinions Hikma cites.” According to Amarin, the panel opinion does not “suggest the sky is going to fall on the generic pharmaceutical industry, which should be capable of drafting accurate press releases and correctly identifying therapeutic categories on its websites.” In its brief, Amarin notably also responds to the three amicus briefs highlighted here last week.

Denials

Since our last update, the Federal Circuit has also denied petitions for en banc rehearing in the following cases: