En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include new petitions filed in four cases raising questions relating to patent eligibility, the Appointments Clause, claim construction, and non-obviousness; one new response to a pending petition raising questions related to enablement, written description, and the 7th Amendment; and the denial of ten petitions raising issues including the Appointments Clause, claim construction, and implied licenses. Here are the details.

New Petitions

New petitions were filed in four cases.

In Consumer 2.0, Inc. v. Tenant Turner, Inc., Consumer 2.0 asked the en banc court to review the following question:

  • “Can a court determine at the pleading stage that a claimed method or claim element is unconventional yet not unknown enough to be patent-eligible under 35 U.S.C. § 101 by engaging in a quasi-Section 103 analysis of obviousness, and, if so, how much more is required beyond unconventionality, is the determination factual or legal, and how does that determination relate to the Section 103 protections against hindsight bias?”

In IYM Technologies LLC v. RPX Corporation, IYM Technologies asked the en banc court to review the following two questions:

  1. “Whether this Court’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), holding that the appointment of Administrative Patent Judges (‘APJs’) to the Patent Trial and Appeal Board (‘PTAB’ or ‘Board’) violated the Appointments Clause, U.S. Const., art. II, § 2, cl. 2, was a significant change in the law governing this appeal.”
  2. “Whether, in view of this Court’s decision in Arthrex, the Director’s delegation of institution authority to APJs acting as principal officers violates 35 U.S.C. § 314 and due process of law.”

In Mira Advanced Technology v. Microsoft Corporation, Mira corrected its petition and asked the en banc court to review the following question:

  • Whether “the Board’s approach used to construct ‘contact list’, and thus its construction, are arbitrary and capricious, and both should therefore be set aside.”

In Collabo Innovations, Inc. v. Sony Corporation, Collabo asked the en banc court to review the following two questions:

  1. “Whether the Panel acted contrary to the standard for substantial evidence when it “upheld the Board’s decision that dependent claims 3 and 12 of U.S. Patent No 7,023,034 were obvious with nothing more [than ‘conclusory assertions and unspecific expert testimony’]–not even a scintilla of evidence.”
  2. Whether, “[s]ince the Board had fair notice of the issue, and actually addressed the construction of ‘reflecting walls’ in its decision, the panel should have reviewed it on appeal.”

New Responses

In Idenix Pharmaceuticals LLC v. Gilead Sciences Inc., Gilead filed a response in opposition to the petition, which raised questions related to the enablement and written description requirements of § 112, as well as the 7th Amendment guarantee of a right to a jury trial. In its response, Gilead argues that “[t]he panel majority and dissent agreed on the bottom-line result in this case,” and the “multiple independent grounds for reversing the judgment make this case an exceedingly poor candidate for en banc review.” Gilead further contends that “the panel correctly applied this Court’s settled § 112 precedent to the largely undisputed facts of this case” and that “Idenix disregards this Court’s longstanding § 112 cases” and “outright ignores most of the panel’s actual decision.”


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