En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include two new petitions, three requests from the Federal Circuit for responses to petitions, and one denial of a petition.

New Petitions

New en banc petitions were filed in two patent cases:

In ARSUS, LLC v. John H. Firmage, Inc., ARSUS LLC asked the en banc court to review the following questions:

1. “Should controlling Federal Circuit cases (Phillips, Johnson Worldwide, Renishaw supra, (and cases cited in those cases) that govern claim interpretation, be enforced, so that the Panel decision here will comply with these cases, to prevent a court from improperly adding words to asserted claims–contrary to these controlling cases–and then granting summary judgment of noninfringement, because (as happened here) the improperly added words were held to prevent the asserted claims from reading on the infringer’s apparatus.”

2. “Should this Circuit enforce its own controlling cases governing summary judgment, including Uniloc, Frolow, and Pfaff, supra (plus the cases those decisions cite), to reverse the Panel decision, so that: (1) Uniloc and Frolow, supra, are followed, so that admissions by the movant preclude granting summary judgment; (2) Brilliant, supra, is followed, so that a detailed, uncontroverted, expert declaration opposing summary judgment, establishing infringement, precludes granting summary judgment; and (3) Pfaff, supra, is followed, so that resolving disputed issues of fact is done at trial, not on MSJ.”

3. “Should controlling SCOTUS cases governing summary judgment (the trilogy, and their progeny, supra) be enforced in the Federal Circuit, to achieve compliance with these controlling SCOTUS decisions, so that, on MSJ, evidence must be viewed in the light most favorable to non-movant, and weighing evidence requires a trial.”

In Nalpropion Pharmaceuticals v. Actavis Laboratories FL, Inc., Actavis Laboratories, FL, Inc. asked the en banc court to review the following question:

“To comply with the written-description requirement, must the specification describe ‘the invention, with all its claimed limitations,’ not just ‘that which makes it obvious,’ as this Court has long held? . . . Or for some claim limitations, can the specification merely disclose a ‘substantially equivalent’ method step, as the panel majority concluded here?”

New Responses

The Federal Circuit invited responses to the petitions for rehearing en banc in the following three patent cases:


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


The Federal Circuit denied the petition for rehearing en banc in General Electric Company v. United Technologies Corp.