En Banc Activity
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Here is an update on recent en banc activity at the Federal Circuit in patent cases. Since our last update, two new responses were filed in response to a petition raising a question related to correction of inventorship; a citation of supplemental authority was filed in a case related to the Hatch-Waxman Act; and the court denied one petition in another case raising questions related to correction of inventorship. Here are the details.

Responses

Since our last update, two new responses to a petition were filed in Implicict, LLC v. Sonos, Inc. In its petition, Implict asked the court to consider the following question:

  • Whether “the panel decision is contrary to at least the following statute and precedents of this court: Egenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367 (Fed. Cir. 2020); Stark v. Advanced Magnetics, Inc., 119 F.3d 1551 (Fed. Cir. 1997); Stark v. Advanced Magnetics, Inc., 29 F.3d 1570 (Fed. Cir. 1994); 35 U.S.C. § 256.”

Now, in its response, Sonos argues “[i]t is a longstanding common-law rule that a party to a pending proceeding must diligently press its rights to the tribunal or risk forfeiting those rights.” Sonos highlights, however, that “Implicit’s patent was not invalidated for failure to correct inventorship, but rather for failure to antedate prior art.” Sonos contends “[t]hat failure to antedate was based on the arguments Implicit chose to raise before the Board and the Board’s discretionary decision finding that other types of antedating arguments were forfeited.”

Also in response as intervenor, USPTO Director Squires argues “[t]his Court ordinarily only grants a petition for rehearing en banc if: 1) the ‘panel decision is contrary to the . . . decision(s) of the Supreme Court of the United States or the precedent(s) of this court,’ and/or 2) the ‘appeal requires an answer to one or more precedent-setting questions of exceptional importance.’” Squires contends “[t]his stringent criteria for granting en banc review is not met here.”

Citation of Supplemental Authority

Since our last update, one citation of supplemental authority was filed in Corcept Therapeutics, Inc. v. Teva Pharmaceuticals USA, Inc. In its petition, Corcept asked the court to consider the following question:

  • Whether “[t]he panel erroneously relied on Genentech, Inc. v. Sandoz Inc., 55 F.4th 1368 (Fed. Cir. 2022), when Genentech conflicts with prior Federal Circuit precedent and is therefore not controlling.”

In the citation, Corcept argues that, in Hikma Pharmaceuticals USA Inc. v. Amarin Pharma, Inc., “the Supreme Court confirmed Corcept’s understanding of the Hatch-Waxman Amendments.” In particular, Corcept contends “Hikma . . . confirms that” the Federal Circuit “should overrule Genentech and provides a strong basis” for the Federal Circuit “to reconsider its broader jurisdictional-only approach to Section 271(e)(2).”

Denials

Since our last update, the Federal Circuit denied one petition for en banc rehearing: