En Banc Activity
on

Here is an update on recent en banc activity at the Federal Circuit. The court scheduled oral argument in a en banc veterans case. We will post an argument preview prior to the oral argument. Highlights in pending en banc petitions in patent cases include a new petition raising questions related to enablement and claim construction; a petition and an invitation for response in a case raising a question related to injunctive relief; a response to a petition raising a question related to venue in the context of Hatch-Waxman; and denials of four petitions raising questions related to intervention in inter partes review, claim construction, and due process. Here are the details.

En Banc Case

The court scheduled telephonic oral argument in Arellano v. Wilkie, a veterans case, on February 4, 2021. Be on the lookout for our argument preview.

En Banc Petitions

New Petitions and Invitation for Response

New petitions were filed in two cases.

In Avenue Innovations, Inc. v. E. Mishan & Sons Inc., Avenue Innovations asked the en banc court to review the following two questions:

  1. “Whether this Court and a district court may ignore the Supreme Court’s instructions for determining if the patent claim as a whole, not particular claim terms, read in light of the specification and the prosecution history, fail to inform with reasonable certainty those skilled in the art about the scope of the invention.”
  2. “Whether a district court exceeds its proper role in claim construction by overruling the parties’ agreed-upon construction and not considering competent and unrebutted expert testimony about how one of ordinary skill would understand the agreed-upon construction.”

In SiOnyx LLC v. Hamamatsu Photonics K.K., Hamamatsu Photonics K.K. (HPK) asked the en banc court to review the following question:

  • Whether “[t]he Panel overlooked or misapprehended that the language from the District Court’s injunction prohibiting ‘products practicing the disputed patents’ is indistinguishable from language previously vacated or modified by this Court in well-settled precedent, and that Cross-Appellants conceded to the controlling nature of such precedent by arguing a distinction this Court has previously rejected.”

The court also invited SiOnyx to respond to HPK’s petition.

New Response

In Valeant Pharmaceuticals North America LLC v. Mylan Pharmaceuticals, Inc., Mylan Pharmaceuticals filed its response to Valeant Pharmaceuticals North America’s petition for en banc review. In the petition, Valeant challenged the panel’s conclusion that “infringement occurs for venue purposes only in districts where actions related to the submission of an Abbreviated New Drug Application (‘ANDA’) occur, not in all locations where future distribution of the generic products specified in the ANDA is contemplated.” According to Valeant, this contradicted the language of § 271(e)(2) and precedent that holds “that the act of infringement adjudicated in ANDA cases is not limited to the submission of the ANDA.”

Now, in response, Mylan Pharmaceuticals argues that “TC Heartland LLC v. Kraft Foods . . . [and] black-letter rules of statutory interpretation compel the [panel’s decision], which serves venue law’s purpose—safeguarding defendants’ convenience.” Mylan also notes that because the venue statute “requires a past act of infringement,” Valeant cannot bring suit in a venue where it alleges only “future acts” will occur.

Denials

The Federal Circuit denied petitions in the following four cases: