En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases, including recent petitions related to patent eligibility and the constitutionality of inter partes review, a response to a petition on the issue of standing to challenge Patent Trial and Appeal Board decisions confirming patentability, and an amicus brief in support of another petition.

New Petitions

New en banc petitions were filed in two patent cases:

In INO Therapeutics LLC v. Praxair Distribution Inc., INO Therapeutics LLC, Mallinckrodt Hospital Products Inc., and Mallinckrodt Hospital Products IP Ltd. asked the en banc court to review the following question:

“Is a method of medical treatment in which a drug is selectively administered to some patients in a known dose but withheld from other patients, based on the results of recited diagnostic steps, patent eligible subject matter?”

In Celgene Corporation v. Peter, Celgene Corporation asked the en banc court to review the following question:

“Whether retroactive application of inter partes review (‘IPR’), to patent claims issued before the America Invents Act (‘AIA’), constitutes an unconstitutional taking?”

New Responses

One new response brief was filed last week, in General Electric Company v. United Technologies Corp. According to United Technologies, “GE seeks rehearing on a single issue: whether [the Federal Circuit’s] application of the competitor standing doctrine in this case is consistent with binding Supreme Court precedent and decisions by other circuits.” United Technologies goes on to argue that, “[a]pplying the well-established requirements for standing, the panel majority correctly determined GE lacked standing because it failed to establish a concrete, immediate injury in fact.” “The PTAB’s final written decision confirming the patentability of UTC’s claims,” explains United Technologies, “did not alter the competitive landscape or, through the ‘ordinary operation of economic forces,’ inflict concrete, immediate harm on GE.”

Amicus Briefs

An amicus brief was filed by the Association for Accessible Medicines in Eli Lilly and Company v. Hospira, Inc. and Eli Lilly and Company v. Dr. Reddy’s Laboratories. In its amicus brief, the Association for Accessible Medicines “urges this Court to grant the petition for rehearing en banc, and to then adopt a clear standard for applying the tangential exception [to the doctrine of equivalents]—a standard that ensures that the exception remains ‘very narrow’ and cannot be used to rewrite the public record.”


The Federal Circuit did not grant any en banc petitions last week.


The Federal Circuit did not deny any en banc petitions last week.