Here is an update on recent en banc activity at the Federal Circuit. Since our last update, one petition for initial en banc hearing was granted in a case decided by the Merit Systems Protection Board raising questions related to the President’s Article II removal power. Three new petitions for en banc rehearing have been filed raising questions related to burden of proving unpatentability in inter partes review proceedings, obviousness, enablement, and written description. One new response brief was filed in a case raising questions related to the domestic industry requirement. Finally, one petition was denied in a case raising a question related to Federal Rule of Evidence 702. Here are the details.

En Banc Cases

Since our last update, the Federal Circuit granted a petition for initial en banc hearing in Jackler v. Department of Justice. The court will review a decision of the Merit Systems Protection Board. In the petition, Jackler asks the court to answer the following question:

• “Whether the Civil Service Reform Act’s procedural and substantive protections for federal workers conflict with the President’s Article II removal power.”

In the opening brief, Jackler argues that, “[i]n this appeal, the government asked—and the Merit Systems Protection Board . . . agreed—to invalidate the Civil Service Reform Act.” Jackler explains how “the government has argued that the nation’s civil service laws conflict with the President’s Article II powers.” Jackler says “[t]hat is wrong.” According to Jackler, the “government’s position defies a century and a half of Supreme Court precedent.” Jackler argues the Federal Circuit “should reverse the MSPB’s egregiously incorrect decision and decline the government’s invitation to remake constitutional law.”

Here are the amicus briefs filed to date in this case:

• Brief of Amici Curiae Labor Organizations Representing Federal Employees in Support of Petioners’ Motion for Initial Consideration En Banc
• Corrected Brief Amicus Curiae of Justice Connection in Support of Petition for Initial Hearing En Banc
• Corrected Amicus Curiae Brief by WhistleBlower Aid in Support of Petitioners’ Motion for Initial Hearing En Banc
• Amicus Curiae Brief for EEO Leaders In Support of Petitioners and In Support of Reversal
• Brief of Constitutional Accountability Center as Amicus Curiae in Support of Petitioners
• Brief of Amici Curiae Union of Concerned Scientists, Center for Open Science, and Enviornmental Protection Network in Support of Petitioners and Reversal
• Brief of Professor Nicholas R. Bednar and Professor Amy J. Wildermuth as Amici Curiae in Support of Petitioners and Reversal
• Brief of the National Treasury Employees Union as Amicus Curiae in Support of the Petitioners Urging Reversal
• Brief of Amici Curiae Senators Chris Van Hollen, Angela Alsobrooks, Tim Kaine, Andy Kim, Gary Peters, Mark Warner in Support of Petition for Initial Hearing En Banc
• Brief of Amicus Curiae the Merit Systems Protection Board Professional Association in Support of Petition for initial Hearing En Banc
• (Corrected) Brief of Lawyers Defending American Democracy as Amicus Curiae in Support of Petitioners’ Petition for Reversal of the Decision of the Merit Systems Protection Board
• Brief of Amici Curiae Labor Organizations in Support of Petitioners and Reversal
• Corrected Brief Amicus Curiae of Social Justice Collaberative in Support of Petitioners Seeking Reversal

En Banc Petitions

New Petitions

Since our last update, three petitions for en banc hearing have been made.

In Spero v. Mercedes-Benz USA, LLC, Spero asked the en banc court to review the following questions:

1. “Under 35 U.S.C. § 316(e), the petitioner bears the burden of proving unpatentability by a preponderance of the evidence. Does the Board violate this statute by failing to address the sufficiency of petitioner’s evidence before finding a claim obvious?”
2. “Whether a patent owner’s argument, or lack thereof, can shift the burden of proving obviousness from the petitioner to the patent owner?”
3. “Whether the Board violated the Administrative Procedure Act (‘APA’) by reaching contradictory findings in parallel proceedings regarding whether the same evidence established an obviousness theory for the same claims?”

In Spero v. Mercedes-Benz USA, LLC, Spero asked the en banc court to review the following question:

• “Whether the Board’s Final Written Decision violates 35 U.S.C. § 316(e) and well settled precedent by departing from the record evidence and formulating its own obviousness theory and affirmative factual findings to cure petitioner’s missing claim limitation?”

In Teva Pharmaceuticals International GmbH v. Eli Lilly and Co., Eli Lilly asked the en banc court to review the following questions:

1. “Whether adding functional method-of-use limitations to otherwise nonenabled genus claims renders the claims enabled, as the panel held.”
2. “Whether a specification’s disclosure of species outside the scope of a claimed genus constitutes a disclosure of representative species that can provide written-description support for an otherwise unsupported genus claim.”

Responses

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

In its petition in Apple Inc. v. International Trade Commission, Apple asked the court to consider the following questions:

1. “Whether, for purposes of 19 U.S.C. §1337(a)(3)(B), research and development investments made in a concededly non-patent-practicing device can be considered in determining whether a complainant has established a ‘significant employment of labor or capital’ ‘with respect to’ patent-practicing devices.”
2. “Whether, for purposes of 19 U.S.C. §1337(a)(2), a complainant can establish that an ‘industry in the United States [] relating to the articles protected by [a] patent . . . exists’ when it fails to identify any device that actually practices the patent or make a showing that the physical devices produced are ‘representative’ of the article.”

Now, in its response, the International Trade Commission argues “Apple’s petition . . . fails to show any of the narrow circumstances that would justify panel rehearing or rehearing en banc.” The Commission further argues the panel’s “affirmance simply recognizes that research, development, and engineering builds on the labor, time, and energy spent developing the early prototypes, not just the final patented articles.”

Denials

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

• Barry v. DePuy Synthes Companies (Federal Rule of Evidence 702)