from the United States Patent and Trademark Office, Patent
Trial and Appeal Board, in No. IPR2013-00117.
J. PARKER, Alston & Bird LLP, New York, NY, for appellant.
Also represented by DEEPRO MUKERJEE, YI WEN WU; JITENDRA
MALIK, Durham, NC; KIRK T. BRADLEY, Charlotte, NC.
CWIK, Amin Talati & Upadhye, LLC, Chicago, IL, for appellees.
Also represented by JONATHAN JACOB KRIT.
PROST, Chief Judge, NEWMAN, LOURIE, DYK, MOORE, O'MALLEY,
REYNA, WALLACH, TARANTO, CHEN, HUGHES, and STOLL, Circuit
Judges. O'MALLEY, Circuit Judge, with whom WALLACH and
STOLL, Circuit Judges, join, concur in the denial of the
petition for rehearing en banc. NEWMAN, Circuit Judge,
dissents from the denial of the petition for rehearing en
PETITION FOR REHEARING EN BANC
Merck & Cie filed a petition for rehearing en banc. A
response to the petition was invited by the court and filed
by the appellees Gnosis S.p.A., Gnosis Bioresearch S.A., and
Gnosis U.S.A., Inc.
petition was referred to the panel that heard the appeal, and
thereafter the petition and response were referred to the
circuit judges who are in regular active service. A poll was
requested, taken, and failed.
petition for rehearing en banc is denied.
mandate of the court will issue on May 3, 2016.
Circuit Judge, with whom WALLACH and STOLL, Circuit Judges,
join, concurring in the denial of the petition for rehearing
panel majority considered whether the Patent Trial and Appeal
Board's conclusion that the contested claims of the
patent-in-suit are invalid as obvious was supported by
substantial evidence. Merck & Cie v. Gnosis S.P.A.,
808 F.3d 829, 833 (Fed. Cir. 2015). Merck now urges this
court to sit en banc to decide whether application of a more
searching standard of review--clear error--is required for
appeals from inter partes review proceedings ("
IPR" ) under the America Invents Act (" AIA"
). While I understand Merck's concerns, and those of the
dissent, I do not believe we can alter our standard of review
for Board decisions, even via en banc consideration.
that application of the substantial evidence standard of
review is seemingly inconsistent with the purpose and content
of the AIA. This court is bound by binding Supreme Court
precedent-- Dickinson v. Zurko, 527 U.S. 150, 119
S.Ct. 1816, 144 L.Ed.2d 143 (1999)--and this court's
own-- In re Gartside, 203 F.3d 1305 (Fed. Cir.
2000)--to apply the substantial evidence standard of review
to factual findings by the Board, however. Because Congress
failed to expressly change the standard of review employed by
this court in reviewing Board decisions when it created IPR
proceedings via the AIA, we are not free to do so now. I,
thus, concur in the denial of en banc rehearing in this case
because there is nothing that could come of our en banc
consideration of the question posed. I write separately,
however, because I agree with the dissent to the extent it
argues that a substantial evidence standard of review makes
little sense in the context of an appeal from an IPR
proceeding. But the question is one for Congress.
Dickinson v. Zurko, this court had a " settled
practice of reviewing factual findings of the board's
patentability determinations for clear error." In re
Zurko, 142 F.3d 1447, 1458 (Fed. Cir. 1998) (en banc).
In Dickinson, the Supreme Court disagreed, "
conclud[ing] that [5 U.S.C. § 706 of the APA] does apply
[to Board findings], and the Federal Circuit must use the
framework set forth in that section." Zurko,
527 U.S. at 152.
In re Gartside, we followed Zurko,
concluding " that we must apply one of the standards set
forth in the [APA]." 203 F.3d at 1311. Section 706 lays
out two such ...