En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include four new petitions, a response to a petition, three requests from the Federal Circuit for responses, and an amicus brief filed in support of a petition.

New Petitions

New en banc petitions were filed in four patent cases:

In Arthrex, Inc. v. Smith & Nephew, Inc., Arthrex asked the en banc court to review the following questions:

1. “Whether inter partes review, as retroactively applied to the ‘541 Patent, is constitutional.”

2. “Whether inter partes review comports with the due process requirements of the Constitution.”

In Board of Regents of the University of Texas System v. Boston Scientific Corporation, the Board of Regents of the University of Texas System asked the en banc court to review the following questions:

1. “Whether the patent venue statute, 28 U.S.C. § 1400(b), dictates venue in state party patent infringement cases.”

2. “Whether state sovereignty includes the right to not litigate in a nonresident defendant’s home state (and hence the right to choose any forum with the requisite subject matter and personal jurisdiction).”

3. “Whether a federal transferee court can acquire jurisdiction over a state without its consent or waiver of any objection to such court’s jurisdiction.”

In Intellectual Ventures I LLC v. Capital One Financial Corp., Capital One Financial asked the en banc court to review the following question:

“Whether the Court can sidestep the district court’s erroneous holding that the Noerr-Pennington doctrine immunizes patent acquisitions from antitrust scrutiny by creating novel exceptions to settled Fourth Circuit collateral-estoppel law that the Fourth Circuit has never adopted.”

In Campbell Soup Company v. Gamon Plus, Inc., Gamon Plus asked the en banc court to review the following questions:

1. “In a design-patent obviousness analysis, is it proper to modify a reference using a utility-patent functional theory to make the reference qualify as a primary reference?”

2. “Is it proper to vacate a fact determination of the PTAB without a determination of whether substantial evidence supported that finding?”

3. “Is it proper to vacate and remand a PTAB determination of nonobviousness of a design patent based on a ruling that a reference should have been a primary reference where the PTAB also held the patent nonobvious based on the independent factual determination that, even using the reference as a primary reference, secondary considerations of copying and substantial commercial success establish nonobviousness over that reference?”

New Responses

One new response brief was filed last week. In Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc., Roche Molecular Systems argues that “Enzo obtained patents covering commercially valuable technology that it did not invent—patents with specifications that fail to describe that technology, and technology to which Enzo made no contribution.” Roche Molecular Systems also contends that “Enzo’s petition presents run-of-the-mill issues about applying settled legal principles to facts analogous to cases this Court has seen before, none of which warrants en banc review.”

Additionally, the Federal Circuit invited responses in the following three patent cases: Ajinomoto Co. v. International Trade CommissionEli Lilly and Company v. Dr. Reddy’s Laboratories, and Eli Lilly and Company v. Hospira, Inc.

New Amicus Briefs

One new amicus brief was filed. Professor Gregory Dolin, M.D. filed his brief in Celgene Corporation v. Peter. In it, he urges the en banc court to review the question of “whether the application of the Inter Partes Review (IPR) created by the 2011 America Invents Act (AIA) to patents that issued prior to the passage of the Act is an uncompensated and therefore unconstitutional taking. Because this question affects thousands of patents and because its resolution calls into question constitutionality of a federal statute—both matters of national importance—the issue deserves en banc review.”


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


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