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Merck & Cie v. Gnosis S.P.A.

United States Court of Appeals, Federal Circuit

April 26, 2016

MERCK & CIE, Appellant
v.
GNOSIS S.P.A., GNOSIS BIORESEARCH S.A., GNOSIS U.S.A., INC., Appellees

          Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board, in No. IPR2013-00117.

         THOMAS 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.

         JOSEPH CWIK, Amin Talati & Upadhye, LLC, Chicago, IL, for appellees. Also represented by JONATHAN JACOB KRIT.

         Before 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 banc.

Page 433

         ON PETITION FOR REHEARING EN BANC

         ORDER

         Per Curiam.

         Appellant 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.

         The 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.

         Upon consideration thereof,

         It Is Ordered That:

         The petition for rehearing en banc is denied.

         The mandate of the court will issue on May 3, 2016.

          CONCUR

         O'Malley, Circuit Judge, with whom WALLACH and STOLL, Circuit Judges, join, concurring in the denial of the petition for rehearing en banc.

         The 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.

         I agree 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.

         Discussion

         Before 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 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 ...


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