Here is an update on recent en banc activity at the Federal Circuit in patent cases. Petitioners filed three new petitions, one presenting a question regarding waiver of alternative grounds for affirmance, one presenting a question regarding the burden of proving non-enablement in an inter partes review proceeding, and one presenting a question regarding injunctive relief pending a mandate. Additionally, the Federal Circuit issued an invitation for a response to a petition raising a question regarding the listing of patents in the Orange Book. Finally, a response was filed to the petition raising a question regarding injunctive relief pending a mandate. Here are the details.
New Petitions
Since our last update, there have been three new petitions filed.
In Honeywell International Inc. v. 3G Licensing, S.A., 3G Licensing raises the following question:
- “Does an appellee’s listing of less than all claims challenged in an IPR on the inside cover of its response brief affirmatively waive alternative grounds for affirmance found by the PTAB for other, non-listed claims when: (i) the appellant did not include any of the non-listed claims on the inside cover of its opening brief; (ii) the appellant did not challenge any of the alternative grounds for affirmance for the non-listed claims in its opening brief (and thus already forfeited them); and (iii) Fed. Cir. R. 32(a)(3) instructs parties to list ‘exemplary claims illustrative of the issue(s),’ not of all claims?”
In Mark H. Sandstrom v. Microsoft Corporation, Sandstrom, pro se, raises the following issue:
- “[W]hether the patent owner should carry the burden of proving non-enablement in an IPR.”
In Novartis Pharmaceuticals Corp. v. Torrent Pharma Inc., MSN filed an emergency motion for reconsideration and petition for en banc rehearing. MSN raises the following issue:
- “[Whether] the panel’s January 21, 2025 order . . . granting Novartis’s motion for reconsideration and ordering that MSN be enjoined from commercial marketing and sale of their generic version of Entresto® until issuance of the mandate in these appeals misapprehended or is contrary to the . . . decision[s] of the Supreme Court of the United States or the precedent(s) of this court.”
Invitation for Response
Since our last update, the Federal Circuit invited a response from the appellees, Amneal Pharmaceuticals, to the petition for rehearing en banc in Teva Branded Pharmaceutical Products R&D, Inc. v. Amneal Pharmaceuticals of New York, LLC. In its petition, Teva raises 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?
New Response
In Novartis Pharmaceuticals Corp. v. Torrent Pharma Inc., Novartis filed a response to MSN’s en banc petition discussed above. In its response, Novartis argues the “Court’s reversal entitles Novartis to a mandatory remedy in this Hatch-Waxman suit [because] Congress mandated post-patent-expiration relief in the Hatch-Waxman context to protect an important incentive for studying the benefits of drugs in children.” Novartis contends that MSN’s petition “just reargues whether an injunction pending appeal is warranted in the fact-specific circumstances here. Nothing about those made-and-answered arguments warrants further review.” Therefore, Novartis calls for the court to deny further review.