En Banc Activity / Featured
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Here is an update on recent en banc activity at the Federal Circuit. Since our last update, one new en banc petition has been filed, raising a question regarding the appropriateness of Rule 36 summary affirmances; amicus briefs were filed in two patent cases raising questions related to standing and obviousness-type double patenting; and the court denied a petition in a pro se case. Here are the details.

Petition Cases

New Petition

Since our last update, one new petition for en banc rehearing has been filed.

In New York University v. ResMed, Inc., New York University asked the court to consider the following question:

  • “Does a Rule 36 summary affirmance comport with precedent, the [Administrative Procedure Act], and Constitutional due process and property protections when the [Patent Trial and Appeal Board] ignored, and never provided any reasoned basis for rejecting, critical factual arguments from a patentee on a key § 103 element of an [inter partes review] petitioner’s case?”

New Amicus Briefs

Since our last update, two new amicus briefs have been filed.

In Dolby Laboratories Licensing Corp. v. Unified Patents, LLC, Alliance of U.S. Startups & Inventors for Jobs filed an amicus brief in support of the petition for rehearing en banc filed by Dolby Laboratories. The petition presented the following questions:

  1. “Does the AIA create informational rights?”
  2. “Does a patent owner faced with a petition for inter partes review have a right to know the identities of all real parties in interest to the petition?”
  3. “Does informational standing require a right that does not only arise in the context of IPR proceedings?”
  4. “Does informational standing require a special statutory cause of action?”
  5. “Does 35 U.S.C. § 314(d) bar judicial review of the Board’s refusal to enforce a patent owner’s informational right under § 312(a)(2) as part of the Board’s final written decision?”
  6. “Does establishing an injury in fact from the violation of a patent owner’s right to information under § 312(a)(2) require evidence that the patent owner ‘will be barred from asserting estoppel’ against the disputed real parties in interest in a future proceeding, or is it sufficient to show that the patent owner would be hindered in attempting to establish estoppel in such a future proceeding, as Dolby demonstrated?”

In support of the petition, USIJ argues the panel “erred when it held that Dolby has not suffered an injury-in-fact.” According to USIJ, “the injury sustained by Dolby in being deprived of [real parties-in-interest] information is more than sufficient to justify standing in this case.” USIJ contends that, if the panel’s decision is allowed to stand, it “will create a precedent from this Court that injures all patent owners––including USIJ’s members––who might be attacked by anonymous challengers using stand-ins, such as [Unified Patents].” USIJ argues “Congress foresaw the burdens that PTAB proceedings could impose on patent owners and the potential for abuse” and therefore “affirmed the commitment to allow challengers only ‘one bite at the apple.’” USIJ suggests “Congress did not intend, nor does any sense of fairness allow, for deep-pocketed infringers to hire bounty hunters to challenge valuable patents without repercussions.”

In Acadia Pharmaceuticals, Inc. v. Aurobindo Pharma Ltd., Inari Agriculture, Inc. filed an amicus brief in support of the petition filed by MSN Laboratories. The petition asked the court to consider “[w]hether a first-filed, first-issued, later-expiring patent can be invalidated by a later-filed, later-issued, earlier-expiring patent for obviousness-type double patenting.”

In support of the petition, Inari Agriculture argues that, “[b]y exempting certain parent applications from ODP,” the court’s precedent “for the first time permits duplicative patents with non-duplicative rights.”

Denial

Since our last update, the Federal Circuit denied a petition for en banc rehearing in Golden v. Google, LLC, a pro se case.