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 (on whether Arthrex should be applied to cases pending on appeal at the time it was decided, and whether the PTAB must consider arguments not made or adopted by examiners), an amicus brief, and three denials of petitions. Here are the details.

New Petitions

New petitions were filed in Boston Scientific Neuromodulation Corp. v. Nevro Corp. asking the en banc court to consider:

  1. Whether Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) is a change in intervening law that, when raised, must be applied to cases pending on appeal at the time of the decision.
  2. Whether this Court must enforce the Appointments Clause once a defect is raised, even where the parties fail to raise the issue in their opening briefs.

In addition, a new petition was filed in Airbus S.A.S. v. Firepass Corp. seeking en banc review of the following questions:

  1. When an Examiner rejects a claim on the basis of obviousness, must that rejection contain within its four corners all of the elements of a prima facie case of obviousness, or may necessary elements of that prima facie case be omitted, to be supplied by the Court on appeal? Put another way, can an Examiner’s rejection which lacks all of the elements of a prima facie case of unpatentability be sustained?
  2. Is Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013), which requires the PTAB to consider arguments not made or adopted by the Examiner, decided correctly?

New Responses

While no new responses were filed, the Federal Circuit did request a response to the petition in HZNP Finance Ltd. v. Actavis Labs. UT, Inc., which presents questions related to the definiteness requirement.

New Amicus Briefs

An amicus brief was filed in Celgene Corp. v. Peter, a case addressing “[w]hether retroactive application of inter partes review (‘IPR’), to patent claims issued before the America Invents Act (‘AIA’), constitutes an unconstitutional taking.” The brief, filed by Unified Patents Inc. and CableLabs, contends that the “[a]rguments that patent claim cancellation in post-grant proceedings . . . differ from previous forms of review and represent unconstitutional takings rest on at least two flawed premises: first, that patents—once issued—are inherently personal property; and second, that postgrant proceedings represent a unique, unprecedented threat to Federally granted patents.” As discussed below, the Federal Circuit subsequently denied the underlying petition.


The Federal Circuit denied the petitions in the following cases: