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 three cases raising questions related to standing, obviousness, and eligibility; a new invitation for a response in a case raising questions related to obviousness; two new amicus briefs in cases raising questions related to claim construction, joinder, and deference to Precedential Opinion Panels; and the denial of seven petitions raising questions related to claim construction, eligibility, novelty, non-obviousness, and the Appointments Clause. Here are the details.

New Petitions

New petitions were filed in three cases.

In Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp., Argentum asked the en banc court to review the following question:

  • “Whether a partner in a collaboration or joint development venture has Article III standing to appeal an adverse decision where the other partner has Article III standing.”

In ESIP Series 2, LLC v. Puzhen Life USA, LLC, ESIP Series 2 asked the en banc court to review the following question in the context of obviousness:

  • “Whether a Notice of Allowability in a child application of a patent in an Inter Partes Review proceeding, facing the same prior art relied upon in the Inter Partes Review, is objective evidence that must be properly considered by the Board.”

In Ericsson Inc. v. TCL Communications Technology, Ericsson asked the en banc court to review the following question:

  • “Whether, in determining whether a claim is directed to patent-eligible subject matter under 35 U.S.C. §101, the claim must be ‘considered in light of the specification,’ as held in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), or whether the court’s analysis is confined to considering what is ‘recited in the claims’ themselves, as the panel majority held here.”

New Invitation for Response

The Federal Circuit invited a response to a petition in one case:

New Amicus Briefs

A new amicus brief was filed in Biogen International GmbH v. Banner Life Sciences LLC in support of rehearing the case en banc and reversing the decision. In the brief, Pharmaceutical Research and Manufacturers of America argues that “the panel’s decision conflicts with Pfizer Inc. v. Dr. Reddy’s Labs., Ltd., . . . improperly shifts the Hatch-Waxman Act’s balance by permitting generics to circumvent restored patent rights,” and “will hamper innovation by obscuring the extent of restored patent rights for biopharmaceutical companies.”

A new amicus brief was also filed in Facebook, Inc. v. Windy City Innovations, LLC. This brief was submitted pursuant to a court order requesting the government’s views regarding the application of Thryv, Inc. v. Click-to-Call Technologies, LP, to the present case.


The Federal Circuit denied petitions in the following seven cases: