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 two new petitions, four new responses, seven amicus briefs, letter briefs regarding supplemental authority, and denials of five petitions.

New Petitions

New en banc petitions were filed in two cases:

In 23andMe, Inc. v. Ancestry.com DNA, LLC, 23andMe asks the en banc court to review the following questions:

  1. “Whether this Court has now carved out a categorical exception to claims incorporating natural correlations, even where the claims recite novel techniques, in contravention of Supreme Court and this Court’s precedent.”
  2. “Whether courts may now circumvent Alice step two analysis at the motion to dismiss stage despite undisputed factual allegations on the novelty of the claims.”

In Bedgear, LLC v. Fredman Bros. Furniture Co., Bedgear asserts that “[e]n banc review is necessary to secure and maintain uniformity in the Court’s decisions in all pending cases that raise the same important constitutional question whether the appointment of [Administrative Patent Judges] violated the Constitution and, if it did, what the proper remedy for that constitutional harm should be.” Bedgear argues that, despite contending in its opening brief that the appointment of APJs violated the Constitution, its case was summarily affirmed prior to the Federal Circuit’s adoption of Bedgear’s reasoning in Arthrex, Inc. v. Smith & Nephew.

New Responses

Four new responses were filed:

Two responses were filed in Ajinomoto Co. v. International Trade Commission opposing the intervenor’s petition for rehearing en banc on the matter of the tangentiality exception to prosecution history estoppel. Ajinomoto argues that “[t]he majority in this case followed the well-established test for determining the tangentiality exception to prosecution history estoppel.” The International Trade Commission also opposes rehearing, on the basis that the test urged by the petitioners “is precisely the test applied by the Majority; Petitioners merely disagree as to the result.”

In BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., in response to a petition raising arguments based on the Federal Circuit’s remand of the case to the Patent Trial and Appeal Board, Aquestive Therapeutics argues that the Board “followed the panel’s remand instructions by properly implementing [SAS Institute, Inc. v. Iancu], and there is no appellate jurisdiction to review a non-institution decision.” It further contends that the petitioner’s “invocation of ‘due process’ also fails, and none of its arguments can establish that this is a case of such exceptional importance that requires review by the full Court.”

In Nalpropion Pharmaceuticals v. Actavis Laboratories FL, Inc., Nalpropion Pharmaceuticals asserts that the court should deny Actavis’s petition for rehearing on the issue of the written description requirement. According to Nalpropion, the written description requirement “involves a fact intensive analysis,” “[h]ere the majority ruled that the District Court did not clearly err in its detailed written description fact findings,” and “Actavis’s attempts to make it seem like the majority’s decision went beyond that conclusion and implemented new standards are misplaced.”

Additionally, the Federal Circuit invited responses to two petitions:

The court invited a response to the petition filed in Intellectual Ventures I LLC v. Capital One Financial Corp., which presents the question of “[w]hether the Court can sidestep the district court’s erroneous holding that the Noerr-Pennington doctrine immunizes patent acquisitions from antitrust scrutiny by creating novel exceptions to settled Fourth Circuit collateral-estoppel law that the Fourth Circuit has never adopted.”

The court also invited a response to the petition filed in Chrimar Systems, Inc. v. ALE USA Inc., which presents the question of “whether an infringer under a final damages judgment can avoid preclusion, and thus seek vacatur of that judgment, based on a later USPTO unpatentability outcome.”

New Amicus Briefs

Seven new amicus briefs were filed in three cases:

In Chrimar Systems, Inc. v. ALE USA Inc., five amicus briefs were filed in support of granting the petition for en banc review, which as mentioned above asks “whether an infringer under a final damages judgment can avoid preclusion, and thus seek vacatur of that judgment, based on a later USPTO unpatentability outcome.” The amicus briefs were filed by the following entities:

The Association for Accessible Medicines filed an amicus brief in Nalpropion Pharmaceuticals v. Actavis Laboratories FL, Inc., in which the Association “urges the Court to grant rehearing to restore written description to its role of ensuring ‘that the inventor actually invented the invention claimed.’”

A new amicus brief was filed in The Chamberlain Group, Inc. v. Techtronic Industries Co. by patent attorney Jeremy C. Doerre. He urges the court grant rehearing en banc “to clarify who bears the burden to establish whether a claim contains an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application,” and “to clarify how to establish that a claim does not contain an inventive concept sufficient to transformed the claimed abstract idea into a patent-eligible application.”

New Letter Briefs Regarding Supplemental Authority

In BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., besides the response brief mentioned above that was filed by Aquestive Therapeutics, the other news is that BioDelivery Sciences notified the court about the alleged relevance of the court’s decision in Arthrex, Inc. v. Smith & Nephew, Inc. In its letter brief, BioDelivery seeks to persuade the court that “Arthrex confirms that the Order granting the motion to dismiss BioDelivery’s appeal should be vacated” and that “BioDelivery should have the opportunity to argue the merits of its appeal of unconstitutionally derived decisions by APJs.” Aquestive Therapeutics, in turn, responded to BioDelivery’s letter brief, arguing that “[d]espite BDSI’s attempt to shoehorn Arthrex into this appeal, that decision has no relevance here.”

Denials

The Federal Circuit denied the petitions for rehearing en banc in the following cases:

Grants

The Federal Circuit did not grant any en banc petitions.