En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include four new petitions related to administrative law, enablement, collateral estoppel, and the doctrine of equivalents; two responses to petitions related to patent eligibility and transfer; one new amicus brief in support of a petition concerning non-obviousness; and the denial of three petitions related to non-obviousness, enablement, written description, and statutory experimental use. Here are the details.

New Petitions

New petitions were filed in four cases.

In In re ThermoLife International LLC, ThermoLife asked the en banc court to review the following three questions:

  1. “Whether the Court may substitute its own factual conclusions for the PTO’s to affirm a revocation of a patentee’s patent rights.”
  2. “Whether the Court may affirm agency action based on new grounds raised for the first time by agency counsel on appeal.”
  3. “Whether the Court may use a patentee’s inventive disclosure to enable the prior art.”

In Hospira, Inc. v. Fresenius Kabi USA, LLC, Hospira asked the en banc court to review the following question:

  • “Whether a party seeking to show that a property is inherent in a combination of prior art disclosures must affirmatively prove that the property is necessarily present in that combination, regardless of how that combination is prepared.”

In Personal Audio, LLC v. CBS Corporation, Personal Audio asked the en banc court to review the following three questions:

  1. “Must the collateral estoppel effect of an IPR be raised and litigated in the appeal of the IPR, rather than in the court in which estoppel is sought?”
  2. “Should an IPR that violated the Appointments Clause of the Constitution be given collateral estoppel effect over a prior jury verdict?”
  3. “Does using the outcome of an IPR to overturn a prior jury verdict of infringement and validity violate the Reexamination Clause of the Seventh Amendment?”

In Amgen Inc. v. Amneal Pharmaceuticals LLC, Amgen asked the en banc court to review the following two questions:

  1. “Whether, in order to identify the scope of territory surrendered through a prosecution amendment, the Court must identify and address the predicate ‘rationale underlying the amendment’ before it can decide whether the rationale ‘bears no more than a tangential relation to the equivalent in question.’”
  2. “Whether the mere fact that an equivalent appeared in the cited prior art—without more—automatically means that an amendment made during prosecution precludes the equivalent in question.”

New Responses

Responses to petitions were filed in two cases.

In DiStefano Patent Trust III v. LinkedIn Corp., LinkedIn contends that DiStefano’s allegation concerning the eligibility of its claimed invention “contradicts the patent and DiStefano’s admissions,” and as a result “[t]he district court was not required to accept this conclusory allegation as true.” LinkedIn further argues that DiStefano’s remaining arguments related to eligibility law should be rejected because they are either “new,” “irrelevant,” and/or “incorrect.”

In In re Apple Inc., Fintiv argues that “Apple attempts to twist the Panel’s decision into one that ‘threatens’ the availability of [transfer].” Fintiv futher contends, “contrary to Apple’s assertions, there are significant ties between Apple and the [Western District of Texas].” Moreover, it says, the argument that “the Panel improperly faulted Apple for requesting alternative relief . . . is equally without merit.”

New Requests for Responses

The Federal Circuit invited responses to the petitions filed in the following three cases:

New Amicus Brief

One new amicus brief was filed.

In FOX Factory, Inc. v. SRAM, LLC, retired Federal Circuit Chief Judge Paul Michel argues that the panel’s opinion regarding the non-obviousness standard “is starkly incorrect under this Court’s precedent” and therefore that “SRAM’s en-banc petition should be granted.” Michel states that, “given the panel’s errors in imposing a new nexus-presumption standard, not to mention the considerable deference owed to the fact-finder on nexus and objective-factors questions, this Court should stand by its established precedent on the nexus-presumption and defer to the Board’s proper fact-findings.”


The Federal Circuit denied the petitions for en banc rehearing in the following three cases: