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 new responses to petitions, one request from the Federal Circuit for a response, and one denial of a petition. As a reminder, pending and recently-decided petitions and related documents may be found on our En Banc Petitions page.

New Petitions

New en banc petitions were filed in two patent cases:

In Thunder Power v. Byton North America Corp., Thunder Power asked the en banc court to review the following questions:

  1. “Whether the Court’s application of Federal Circuit Rule 36 exceeds the scope of permissible use of a summary affirmance such that it violates constitutional guarantees of due process.”
  2. “Whether plausible and specific factual allegations that aspects of the claims are inventive are sufficient to defeat a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6).”
  3. “Whether the combination of physical components to accomplish a technological improvement to a machine is dispositive as to patent eligibility under 35 U.S.C. § 101.”

In Enzo Life Sciences, Inc. v. Becton, Dickinson and Company, Enzo Life Sciences, Inc. asked the en banc court to review the following question:

“Whether subjecting patents that issued before the enactment of the Leahy-Smith America Invents Act (‘AIA’) to inter partes review (‘IPR’) violates the Due Process Clause of the Fifth Amendment.”

New Responses

Three new response briefs were filed last week:

In INO Therapeutics LLC v. Praxair Distribution Inc., Praxair Distribution Inc. argues that, “[i]n a nonprecedential opinion limited to the unusual facts of the case before it, the panel majority correctly applied the Mayo/Alice framework and this Court’s precedent to affirm the district court’s judgment that the asserted claims are ineligible under Section 101. En banc review would neither resolve a disagreement among the Court’s decisions nor answer any exceptionally important question.”

In Kingston Technology Company v. SPEX Technologies, Inc., SPEX Technologies, Inc. argues that “Kingston’s appeal challenges the Director’s decision to not institute inter partes review. Section 314( d) makes such decisions final and nonappealable. Neither Wi-Fi One nor any other case has ever permitted judicial review of such decisions. Kingston’s combined petition for panel rehearing and rehearing en bane should be dismissed.”

In Genzyme Corp. v. Zydus Pharmaceuticals (USA) Inc., Genzyme Corp. argues that “[t]he district court’s detailed factual findings and conclusion of nonobviousness are well supported by the record. This Court typically does not grant rehearing to consider whether four federal judges misunderstood the facts. Here, moreover, seven federal judges have concluded that Claim 19 of the ’590 Patent is not obvious. Zydus’s Petition should be denied.”

Additionally, the Federal Circuit invited a response from the appellants to the petition filed in The Chamberlain Group, Inc. v. Techtronic Industries Co. Ltd., a case which presents two questions related to the law of patent eligibility.

New Letter Briefs Regarding Supplemental Authority

In Arthrex, Inc. v. Smith & Nephew, Inc., the petitioner Arthrex notified the court about the alleged relevance of the court’s decision in the parallel case involving the same litigants, in which the court concluded that the Secretary of Commerce’s appointment of Administrative Patent Judges to the Patent Trial and Appeal Board violates the Appointments Clause of the U.S. Constitution. In its letter brief here, Arthrex attempts to raise the same Appointments Clause challenge in the present appeal because “[t]he final written decision here was issued by APJs that ‘were not constitutionally appointed at the time the decision was rendered‘ just as in Arthrex.” Arthrex “requests that this Court vacate and remand the present appeal for a new hearing before a new panel of APJs consistent with Arthrex.”

The United States responded to Arthrex’s letter brief. The government argues that the “[a]ppellant waived the issue by failing to raise it in its appellate brief . . . and its omission of the issue from its rehearing petition compounds that waiver.”

Smith & Nephew and ArthroCare filed a similar response to the supplemental authority cited by Arthrex. They argue that “Arthrex unquestionably did not raise such a challenge in its opening brief” and thus consequently the court must treat that argument as forfeited in this appeal. Furthermore, they argue that “Arthrex cannot credibly contend that the Arthrex decision represents the type of significant change in the law that may justify excusing Arthrex’s forfeiture” because “Arthrex cannot argue that it would have been futile to advance its Appointments Clause challenge—it was advancing that very challenge in its co-pending . . . appeal.”

Note that on Friday the court issued an order related to a similar notification of supplemental authority.


The Federal Circuit denied the petition for rehearing en banc in Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc., which presented a question about the proper application of the enablement requirement.


The Federal Circuit did not grant any en banc petitions.