En Banc Activity / Petitions

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

New Petitions

New en banc petitions were filed in three patent cases:

In Chrimar Systems, Inc. v. ALE USA Inc., Chrimar Systems, Inc. asked the en banc court to review the following question:

“[W]hether an infringer under a final damages judgment can avoid preclusion, and thus seek vacatur of that judgment, based on a later USPTO unpatentability outcome.”

In The Chamberlain Group, Inc. v. Techtronic Industries Co., The Chamberlain Group, Inc. asked the en banc court to review the following questions:

1. “Where the district court did not reach Alice step two, or address how the jury’s verdict of novelty and non-obviousness affects the factual aspects of step two, may this Court resolve step two in the first instance, treating step two as a purely legal issue in violation of Berkheimer/Aatrix and disregarding the jury verdict and related district court fact-finding, or must it remand?”

2. “Under Alice step two, is it improper for this Court to conflate Alice steps one and two, disregarding the concrete and structural combination of elements cited by the patent owner (i.e., the ‘additional features’) – which here were the basis for the jury verdict of novelty and non-obviousness and the district court’s related findings – and focus its step-two inquiry on the abstract idea itself, concluding as a tautology that there can be no inventive concept because the inventive concept cannot lie in the abstract idea?”

In SIPCO, LLC v. Emerson Electric Co., Emerson Electric Co. asked the en banc court to review the following question:

Whether “[t]he panel erred by reviewing (and remanding) the threshold §42.301(b) institution obviousness determination, rather than reviewing the Board’s merits § 103 obviousness determination,” given “Congress’s statutory directive in the AIA, 35 U.S.C. § 324(e), that, when a preliminary institution determination involves a question that is subsumed by the ultimate merits, the appellate court should review the merits question, not the threshold one.”

New Responses

Two new response briefs were filed last week:

Eli Lilly and Company filed an identical response in both Eli Lilly and Company v. Hospira, Inc. and Eli Lilly and Company v. Dr. Reddy’s Laboratories. In its response, Eli Lilly and Company argues that “petitioners fundamentally misconstrue both the basis for the panel’s decision and the tangentiality inquiry” that forms an exception to the prosecution history estoppel doctrine. Therefore, “[i]n the absence of a clear conflict in this Court’s precedent, petitioners have at best an argument about how the established standard for tangentiality was applied to the facts of this case. But even if the panel erred—and it did not—that fact-bound disagreement would not merit the en banc Court’s attention.”

In Bridge and Post, Inc. v. Verizon Communications, Inc., Verizon Communications, Inc. argues that “Bridge and Post’s en banc petition accuses this Court’s jurisprudence of creating ‘a mess’ of Section 101 by ignoring Supreme Court precedent. . . . But Bridge and Post identifies no actual conflict between the nonprecedential decision here and Supreme Court precedent, no workable solution to that nonexistent conflict, and no way in which Bridge and Post’s flawed reading of Supreme Court precedent would affect the outcome of this case.” As such, “[t]he Court’s application of settled law to the facts of this case warrants no further review.”

Additionally, the Federal Circuit invited responses to the petitions filed in the following two patent cases:

  • Celgene Corporation v. Peter (“Whether retroactive application of inter partes review (‘IPR’), to patent claims issued before the America Invents Act (‘AIA’), constitutes an unconstitutional taking?”)
  • Nalpropion Pharmaceuticals v. Actavis Laboratories FL, Inc. (“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?”)


The Federal Circuit did not grant any en banc petitions.


The Federal Circuit did not deny any en banc petitions.