En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit. Highlights include new petitions filed in two cases raising questions related to obviousness; responses to petitions in two cases raising questions related to inequitable conduct, obviousness, and assignor estoppel; an invitation for a response to a petition raising questions related to standing; and the denial of four petitions raising questions related to claim construction and the Appointments Clause. Here are the details.

New Petitions

New petitions were filed in two cases.

In Uber Technologies, Inc. v. X One, Inc., X One asked the en banc court to review the following two questions:

  1. “[W]hen 35 U.S.C. § 103 dictates that obviousness assess whether ‘the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious,’ whether it was appropriate for the panel to ‘reverse the Board’s determination as to the obviousness of the limitation “software . . . to transmit the map with plotted locations to the first individual”’ (emphasis added).”
  2. “[I]n considering a design choice, whether it was appropriate for the panel to make a finding of fact that there were ‘only two possible methods’ when Uber’s expert stated ‘there are several design choices’ and Uber’s counsel stated ‘so there’s several ways,’ and which was contradicted by the Board’s finding that Uber’s design choice argument ‘represents impermissible hindsight’ and ‘represent[s] a proposed wholesale modification to’ the prior art.”

In Valeant Pharmaceuticals Intl. v. Mylan Pharmaceuticals Inc., Valeant Pharmaceuticals asked the en banc court to review the following question:

  • “Whether this Court’s historically narrow principle of prima facie obviousness in overlapping range cases should be extended to apply in cases where the prior art differs from the claimed invention in several fundamental and material ways beyond the range in question.”

New Responses

Responses to petitions were filed in the following two cases:

New Invitation for Response

The Federal Circuit invited a response to a petition in the following case:


The Federal Circuit denied petitions in the following four cases: