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, two requests for responses, and five denials of petitions.

New Petitions

New en banc petitions were filed in three cases.

In American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, the petition filed by American Axle & Manufacturing asks the en banc court to review the following questions:

  1. “Whether courts can find patent claims ineligible without identifying any precise ineligible concept the claims are allegedly directed to.”
  2. “Whether, on summary judgment, the Federal Circuit can disregard facts establishing several inventive concepts, and find, for the first time on appeal and based on prior art and arguments never raised, that the inventive concepts taught by the patent were instead well understood, routine, and conventional.”
  3. “Whether Section 101 can be interpreted to swallow the enablement requirement of Section 112, and whether it is appropriate to require the claims of a patent to meet enablement requirements under Section 101.”

In B.E. Technology, L.L.C. v. Facebook, Inc., B.E. Technology presents the following questions:

  1. “How does the established legal standard for the determination of prevailing party status apply in a case dismissed as a result of intervening mootness?”
  2. “When, if ever, can a litigant be deemed the ‘prevailing party’ in a case dismissed as moot?”
  3. “Whether the dismissal for mootness resulting from the intervening administrative cancellation of asserted claims alters the legal relationship of the parties.”
  4. “Whether the panel’s conclusion that Facebook ‘prevailed’ can be squared with the Supreme Court teaching on the nature and effect of intervening mootness.”
  5. “Whether patent cases present an occasion for departing from the requirement that to ‘prevail’ for purposes of Rule 54(d) and fee shifting statutes, a litigant must prevail in the proceeding in which it seeks prevailing party status.”

In Customedia Technologies, LLC v. DISH Network Corp., Customedia (whose motion to vacate and remand in view of Arthrex was denied just prior to its oral argument) identifies the question for the en banc court to consider as “whether waiver precludes a party from raising an argument in a supplemental brief that arises from a significant change in law during the pendency of an appeal.”

New Responses

Two new responses to petitions were filed.

In Celgene Corp. v. Peter, the government responded to Celgene’s petition, which raised the question of whether retroactive application of inter partes review to patent claims issued before the America Invents Act constitutes an unconstitutional taking. The government argues that “[t]he panel decision is correct and does not warrant rehearing en banc.” According to the government, this is so because the “contention [that under the Supreme Court’s precedents applying reconsideration provisions added to the Patent Act after a patent has issued violates the Takings Clause] is wrong.” Moreover, it argues, “Celgene’s recasting of the issue in terms of regulatory takings . . .  fares no better, because ‘pre-AIA patent owners, including Celgene, have known for almost forty years that their patents were issued subject to substantively similar forms of PTO reexamination.’”

In Intellectual Ventures I LLC v. Capital One Financial Corp., Capital One presented a petition arguing that the case “raises important questions about the Intellectual Ventures Appellees’ . . . unprecedented scheme to obtain ‘market power’ by acquiring and concealing thousands of patents.” In particular, Capital One argued that “[t]he district court incorrectly concluded that this patent-acquisition conduct was insulated from antitrust scrutiny by Noerr-Pennington.” But, said Capital One, the Federal Circuit “sidestepped the antitrust issues entirely” by “holding that Capital One is collaterally estopped from litigating them based on a prior lawsuit in Virginia.” That holding was incorrect, says Capital One, because “the district court dismissed similar (but distinct) antitrust claims on several independent grounds” and “[c]ontrolling Fourth Circuit law holds that when a decision rests on multiple independent grounds, none of those grounds is preclusive in a later case.”

Intellectual Ventures has now responded to the petition. In its response, Intellectual Ventures argues that “Capital One seeks to avoid the fate that would befall any other litigant by complaining that the Court’s opinion does not specifically account for all of the bases on which it failed in Virginia.” Furthermore, it contends that Capital One’s argument about the Fourth Circuit law is incorrect, because “[n]o court has taken such an extreme position, and the Fourth Circuit has never suggested that it would.” Intellectual Ventures also argues that “[a]ffirmance is required independent of the issue preclusion bar because the history of these cases makes clear that Capital One’s claims are not proper antitrust claims.”

In addition to these responses being filed, the Federal Circuit invited responses to be filed in two other cases:


The Federal Circuit denied petitions in five cases: