En Banc Activity / Petitions
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Here is an update on recent en banc activity at the Federal Circuit in patent cases. This week’s only update is that there is a new response to a petition raising questions related to the written description requirement and obvious-type double patenting. Here are the details.

New Response

Since our last update, Allergan USA, Inc. filed its response to the petition filed by MSN Laboratories in Allergan USA, Inc. v. MSN Laboratories Private Ltd. The petition raises the following questions:

  1. “Does a general disclosure that a pharmaceutical compound may be combined with any of five inactive ingredients sufficiently describe ‘picture claims’ to specific formulations that are ‘narrow’ and recite ‘specific amounts’ of ‘specific ingredients’ []?”
  2. “Where this Court purportedly finds error in a trial court’s written description analysis, may this Court re-weigh the evidence and decide the ultimate question of whether the specification describes the claims under its own de novo review of the specification, or must the Court remand for factfinding under a proper analysis?”
  3. “Are the claims of ‘a first-filed, first-issued’ patent in a patent family immune from obviousness-type double patenting over later-filed, later-issued patent claims in the same family [], even if the first-filed, first-issued claims are patentably indistinct from, and expire later than, the later-filed, later-issued claims?”

Now, Allergan contends the panel should “reject the rehearing petition.” Allergan suggests there is no legal conflict related to the panel’s reversal on the subject of the written description requirement. Allergan further contends the petition does not warrant rehearing because the district court’s “factual findings were clearly erroneous.” Additionally, Allergan argues, MSN Laboratories fails to justify rehearing related to the panel’s holding on obviousness-type double patenting. Allergan claims the “panel correctly held that, in a family sharing the same priority date, later continuation patents cannot serve as [obvious-type double patenting] reference patents to the first-filed, first-issued patent.”