The Federal Circuit today denied two en banc rehearing petitions:
- Amgen Inc. v. Amneal Pharmaceuticals LLC. This decision focused on merely-tangential exception to the the prosecution-history-estoppel limitation on the doctrine-of-equivalents. The question for the petition is whether the district court must first identify the “rationale underlying [a narrowing] amendment” before deciding that the amendment is not merely tangential to the equivalent in question.
- Mira Advanced Technology v. Microsoft Corporation. Whether the PTAB’s construction of the term “contact list” was “arbitrary and capricious.”
I have no idea if historically that number is accurate, but recently the chance seems to be significantly worse. Based on recent en banc grants and recent cert. grants, it seems like the chance of getting a cert. petition granted is generally higher than the chance of getting en banc rehearing, and that chance is much, much worse than 1/50.
I believe in 2016 there were 3 en banc grants, in 2017 there were 3 grants (but one was later dissolved), and in 2018 there was only 1 grant. I do not believe there was a single grant in 2019.
I do note that right now the number of petitions and denials is probably up because everyone who loses on eligibility (on either side) tends to file a petition for en banc rehearing.
Speaking of which, while I’m here it’s worth noting that the petition for rehearing in American Axle & Manufacturing v. Neapco Holdings LLC, no. 18-1763 has been pending since December.
This was supposed to be a reply to Paul.
Thank you.
Any predictions on American Axle? Here are what I think the possibilities are, in order of most to least likely.
1. Rehearing denied, with lengthy and possibly numerous concurring and dissenting opinions. It’s possible that the panel may modify its opinion slightly while reaching the same result, and that Judge Moore and others will say not good enough. More likely, the opinion stays as is, and there are lots of separate opinions, maybe like Ariosa/Sequenom. This would explain why it’s gone 4+ months.
2. Rehearing granted, and a majority of the full court is going to decide this without extra briefing, as they did in Apple v. Samsung, where a majority of the court thought Judge Moore was right and Judge Dyk was wrong. That one was pending for almost 6 months from en banc opposition to decision date. link to scholar.google.com That was a weird procedure, but with the pandemic, maybe that procedure’s more attractive than the normal way.
3. Rehearing en banc granted, and they’ll take extra briefing and schedule a new argument they way they normally do.
4. Rehearing denied without comment.
5. Rehearing granted and 101 / eligibility rejection reversed . . . because Congress got off their hands and abrogated Mayo / Alice and all decisions based thereon.
I wish I had an intelligent prediction, but I honestly have no idea.
I think your ordered scenarios sound pretty good from an odds-making perspective. I agree that denial with numerous opinions ala Athena v. Mayo seems like it would have the highest odds on a big board just based on the recent history of eligibility cases. It would not surprise me to see a modified panel opinion, likely still reaching the same conclusion of ineligibility, and a new dissent from Moore. I also think there is a non-zero chance of panel rehearing with a new opinion vacating and remanding, although this is probably less likely than rehearing en banc being granted (but more likely than denial without comment).
Apple v. Samsung does seem like a great analog though.
When you look at the questions presented:
1) Whether courts can find patent claims ineligible without identifying
any precise ineligible concept the claims are allegedly directed to.
The first question doesn’t really seem like it would require additional briefing for the Court to address. It seems clear that an “approach to section 101” that “avoids determining whether the asserted claims are directed to an [ineligible concept], or even identifying what the underlying [ineligible concept] is … is contrary to the Supreme Court’s direction in Alice.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1307 (Fed. Cir. 2016) (Reyna, J., dissenting) (citing Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014)). Thus, while the Federal Circuit has wide latitude in how it writes opinions, a district court likely must identify a specific ineligible concept at step one of the Alice/Mayo inquiry in order to enable meaningful appellate review. It would be great for the Court to vacate and remand, but I’m not sure that additional briefing on this issue would be necessary.
2) Whether, on summary judgment, the Federal Circuit can disregard
facts establishing several inventive concepts, and find, for the first
time on appeal and based on prior art and arguments never raised,
that the inventive concepts taught by the patent were instead well
understood, routine, and conventional.
The second question would require obliquely revisiting an issue the Court already chose to avoid reviewing en banc more directly in Berkheimer. The real issue that needs to be addressed at some point is how to evaluate whether a claim contains an inventive concept. The current jurisprudence is… muddled. It does patentees and patent applicants little good to have dicta suggesting that unconventional limitations are sufficient if that dicta is rarely followed. It would be much more beneficial to have a stricter test that is consistently applied. Ultimately, as much as I hate to even suggest moving eligibility jurisprudence in this direction, at some point the Fed. Cir. or the Supreme Ct. will have to address whether “unconventional” is enough to establish an inventive concept.
3) Whether Section 101 can be interpreted to swallow the enablement
requirement of Section 112, and whether it is appropriate to require
the claims of a patent to meet enablement requirements under
Section 101.
The third question would require addressing the extent to which Morse is an eligibility decision, which would be exceedingly interesting, but some might feel that this would need to be done by the Supreme Ct.
There are more en banc denials with multiple opinions and that is good. While no doubt disappointing for the petitioning party, for the rest of the bar, the issue(s) are still open to litigation AND there is some insight on the perspective of the judges who explain their votes with an opinion.
I’m on a bar association amicus committee. What was interesting in Arthrex was the comment that en banc consideration would not have changed the result and would have just delayed supreme court review. It’s practically an assertion that the judges had already made up their minds and were not going to change their minds because of en banc briefing from the parties or amicus.
Has anyone calculated the odds of getting en banc review of a panel decision in the Fed. Cir.? 1 in 50, or worse?
1 in 100 maybe.
Here’s a chart from about 12 years ago, when the CAFC posted such statistics.
link to web.archive.org
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