En Banc Activity / Featured / Petitions
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Here is an update on recent en banc activity at the Federal Circuit. An opening brief was filed in a pending en banc case concerning standing to allege a violation of a statute or regulation in connection with the procurement of a government contract. Three new amicus briefs have also been filed in the other pending en banc case regarding a district court’s responsibility to scrutinize a patentee’s reliance on supposedly comparable licenses. Additionally, a new petition was filed in a Hatch-Waxman case raising a question regarding listing of patents in the Orange Book. Finally, the court denied an en banc petition raising a question concerning the lifting of an administrative injunction. Here are the highlights.

En Banc Cases

Opening Brief

Since our last update, an opening brief has been filed in one of the two pending en banc cases, Percipient.AI, Inc. v. United States, a case addressing standing to allege a violation of a statute or regulation in connection with the procurement of a government contract.

Percipient.AI articulated and answered the following question: “Who can be ‘an interested party objecting to . . . any alleged violation of statute or regulation in connection with a procurement or a proposed procurement’ under 28 U.S.C. § 1491(b)(1)?” In answering this question, Percipient.AI argued “it would violate the plain text of § 1491(b)(1) to require a person bringing a claim solely under the third prong of § 1491(b)(1) to show that they were an actual or potential bidder on a solicitation or for a contract.” Percipient.AI reasons the text of § 1491(b)(1) allows a plaintiff to bring a claim without challenging a solicitation or contract award. Precipient.AI argues the court should adopt the following test: whether “the plaintiff has a sufficient interest in challenging the alleged violation of law that is challenged under § 1491(b)(1) . . . [w]here that violation blocked the plaintiff from providing its goods or services to meet the needs of an agency.” Alternatively, Percipient.AI also argued, “any party who could demonstrate standing under the APA qualified as an interested party under § 1491(b)(1).”

New Amicus Briefs

Since our last update, three new amicus briefs have been filed in the only other pending en banc case, EcoFactor, Inc. v. Google LLC, which is a patent case. The court granted rehearing to consider a district court’s responsibility to scrutinize a patentee’s reliance on supposedly comparable licenses. The court requested new briefs from the parties related to “the district court’s adherence to Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), in its allowance of testimony from EcoFactor’s damages expert assigning a per-unit royalty rate to the three licenses in evidence in this case.”

All three of the new amicus briefs support EcoFactor, the patentee.

In its amicus brief, the Alliance of U.S. Startups & Inventors for Jobs argues three points. First, USIJ argues Rule 702 and Daubert‘s “gatekeeping function . . . must necessarily take into account the inherently imprecise nature of a ‘reasonable royalty.'” Further, USIJ contends, “[w]hile Daubert does require a district court to make a preliminary determination that an expert opinion as to damages satisfies Rule 702, Daubert does not permit a district court (or an appellate court in review) thereafter to reject an opinion it simply may disagree with.” Second, USIJ “urge[s] the Court to view this en banc appeal for what it actually is.” More specifically, “USIJ believes that Google and the other digital technology giants that chimed in . . . are pursuing this case to . . . exploit the enormous disparity in size by making litigation for startups and small companies so expensive and risky as to discourage such companies from even attempting to enforce their patents.” Finally, USIJ urges the “Court to bear in mind the critical importance to startups and their entrepreneurs and investors that damage awards be adequate to compensate” patent owners.

In its amicus brief, the New Civil Liberties Alliance argues three points. First, NCLA argues the federal statute authorizing en banc sittings requires all judges in “regular active service” to sit in the court. Next, NCLA contends Judge Newman is in “regular active service” because she has not retired, and so she must sit during any en banc proceedings. Finally, NCLA points out that this case should not be heard by an en banc panel “comprised of ‘more than three but less than all’ judges.”

In its amicus brief, Professor Michael Risch and interested practitioners argue that EcoFactor’s damages expert did not use “some novel, experimental science.” Instead, they claim, “the challenged methodology—assigning a royalty rate to a license—is a generally accepted exercise for licensing professionals, economists, and intellectual property valuation experts.” This brief also rejects both the “panel dissent’s criticisms of the patentee’s ‘self-serving’ damages facts and Google’s arguments that Mr. Kennedy’s reliance on the licenses and Mr. Habib led to ‘implausible’ conclusions.” According to this brief, these positions “are not only at odds with the hypothetical negotiation framework itself,” but “highlight[] the perils of appellate factfinding.”

Petitions

New Petition

Since our last update, there has been one new petition for rehearing en banc. In Teva Branded Pharmaceutical Products R&D, Inc. v. Amneal Pharmaceuticals of New York, LLC, Teva raised the following question:

  • “This case presents a question that is fundamental to the Hatch-Waxman framework: what patents must be listed in the Orange Book?”

Denial

Since our last update, the court denied the petition in Novartis Pharmaceuticals Corp. v. Torrent Pharma Inc., in which Novartis raised the following issue:

  • “[Whether] the panel’s January 10, 2025 order denying Novartis’s Rule 8 motion for an injunction pending appeal as moot and lifting the administrative injunction entered on August 14, 2024, misapprehended or is contrary to the following precedent of this court.”