En Banc Activity / Featured / Petitions
on

Here is an update on recent en banc activity at the Federal Circuit in patent cases. Since our last update, one new petition for en banc rehearing has been filed, raising a question related to venue for patent infringement claims; the Federal Circuit also invited a response to this petition; and another response was filed in another patent case raising questions related to prior art and the Administrative Procedure Act. Here are the details.

En Banc Petitions

New Petitions

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

In In re Comcast Cable Communications, LLC, Comcast Cable Communications asked the court to review the following question:

  • “Whether a defendant’s alleged performance of a single step of a claimed multi-step method in a judicial district is sufficient to establish that ‘the defendant has committed acts of infringement’ in the district for purposes of venue under 28 U.S.C. § 1400(b).”

Invitation for Response

Since our last update, the Federal Circuit invited a response to the petition in the case just mentioned, In re Comcast Cable Communications, LLC.

New Response

Since our last update, one new response to a petition has been filed.

In Merck Serono S.A. v. Hopewell Pharma Ventures, Inc., Hopewell Pharma Ventures filed its response to the petition. The petition filed by Merck Serono asked the court to consider the following questions:

  1. “Whether a disclosure of an invention may be treated as a disclosure ‘by others’ or ‘by another’ under 35 U.S.C. § 102(a), (e) and thus as prior art to a patent filed within one year of the disclosure when nobody ‘other’ than the patent’s co-inventors contributed to the disclosure.”
  2. “Whether the Administrative Procedure Act (‘APA’) entitles a party to notice and a fair opportunity to respond to an agency’s decision to deviate from its longstanding administrative interpretation of law.”

In its response, Hopewell argues the claim “that the panel applied a bright-line rule inconsistent with this Court’s precedent and sound policy” is not correct. According to Hopewell, the “panel simply applied the well-settled principle that 35 U.S.C. § 102(e)’s ‘by another’ means that an application issued to the same inventive entity cannot qualify as § 102(e) prior art.'” Hopewell suggests that what Merck’s argument “really boils down to is that the en banc Court should overrule the law to track ambiguous statements in the MPEP and to effectuate what Merck believes should be the statute’s policy goals.” In particular, Hopewell says, “Merck asks the Court to create a new rule: disclosure by a subset of inventors within the one-year grace period can never be prior art to a patent by the full set of inventors.” Hopewell contends that approach in itself would be a bright-line rule. Moreover, it says, it would be “unnecessary, as Congress already addressed the collaboration policy that Merck raises.” Hopewell states that, “[e]ven if Merck’s arguments had some force . . . en banc review still would not be warranted for this issue.” Specifically, it says, “this case is a poor vehicle . . . because the Board made alternative findings that doom Merck’s appeal even under Merck’s new rule.” Hopewell concludes by addressing Merck’s “backup APA argument,” stating that it is also unpersuasive.