En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include one new petition related to obviousness, one response to a petition related to design patents, two requests for responses to petitions related to Arthrex and transfer, two amicus briefs in support of petitions related to the written description and enablement requirements, and the denial of one petition related to Arthrex and obviousness. Here are the details.

New Petitions

One new petition was filed.

In Persion Pharmaceuticals LLC v. Alvogen Malta Operations Ltd., Persion Pharmaceuticals presented the following three questions:

  1. “Whether it is proper to rely on the description of the invention in a patent-in-suit when combining references under 35 U.S.C. § 103?”
  2. “Whether the panel erred by failing to follow Supreme Court and Federal Circuit precedent holding that inconsistent findings constitute clear error?”
  3. “Whether the panel erred by failing to follow this Court’s precedential authority holding that inherency cannot render obvious claims that recite unknown and unpredictable properties?”

New Responses and Requests for Responses

In Columbia Sportswear v. Seirus Innovative Accessories, Seirus argues in its response that the Court should deny the petition for rehearing and rehearing en banc because “the panel faithfully followed precedent requiring that a fact-finder consider all ornamental elements of an accused design, including in this case a repeating ornamental logo pattern.” Seirus further contends that rehearing en banc is unwarranted because, “[c]ontrary to Columbia and amici’s assertion, nothing about the panel’s approach is novel or wide-reaching, nor does the law require courts to erase an ornamental element of a design because it contains a logo.”

In addition to this brief responding to a pending petition, the Federal Circuit invited responses to the petitions filed in the following two cases:

  • Customedia Technologies, LLC v. DISH Network Corporation (presenting two questions related to Arthrex: (1) “whether a litigant can waive a constitutional defense based on an intervening change of law that implicates important issues of public concern”; and (2) “whether a litigant can waive a constitutional defense based on an intervening change of law that implicates important issues of public concern”)
  • In re Apple Inc. (“whether a plaintiff can defeat a transfer motion by doing nothing more than alleging that there may be likely witnesses in, or other connections to, the plaintiff’s chosen forum”)

New Amicus Briefs

Two amicus briefs were filed in Idenix Pharmaceuticals LLC v. Gilead Sciences Inc.

REGENXBIO Inc. and Professor Hugh C. Hansen filed an amicus brief supporting the petition for rehearing en banc. REGENXBIO and Professor Hansen argue that “[t]he panel’s decision may be interpreted to have heightened the written description and enablement requirements in ways that are unwarranted by science, precedent, or policy, and that threaten some of the most needed inventions.” As a result, they argue the “en banc Court should intervene before the panel’s reasoning frustrates patent protection across the innovative landscape.” REGENXBIO and Professor Hansen go on to explain that the panel’s decision will impose a “disproportionate burden” on start-ups and small companies as they will be forced to “divert scant resources to multiplicative experiments to support a genus-scope claim.”

Amgen Inc. likewise filed an amicus brief supporting rehearing en banc. According to Amgen, there is “industry-wide concern” that the Federal Circuit’s decision “will have a crippling effect on the pace and breadth of scientific advancement in medicine in the United States.” Furthermore, Amgen argues that Section 112 should be “applied in a flexible, context-specific manner, for both written description and enablement,” but contends the panel’s opinion requires a “rigid legal inquiry.”


The Federal Circuit denied the petition in Sanofi-Aventis Deutschland v. Mylan Pharmaceuticals Inc., which raised the question of whether Arthrex applies to all pending Patent Trial and Appeal Board appeals and another question relating to the appropriateness of panel’s obviousness analysis.