En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit. Highlights include the filing of the opening brief in National Organization of Veterans Advocates, Inc. v. Secretary of Veterans Affairs, in which the Federal Circuit granted a petition for initial hearing en banc to address two questions related to jurisdiction and veterans law. As for petitions in patent cases, highlights include a new petition raising questions related to restriction requirements and patent term adjustments; a new response to a petition raising questions related to obviousness; a new invitation for a response to a petition raising questions related to injunctive relief; and the denial of three petitions raising questions related to claim construction, prevailing party status, and forum selection clauses. Here are the details.

Opening Brief

As we previously noted, in National Organization of Veterans Advocates, Inc. v. Secretary of Veterans Affairs the Federal Circuit granted a petition for initial hearing en banc to consider two questions related to veterans law:

  1. “Whether this Court has jurisdiction under 38 U.S.C. § 502 to review a generally applicable interpretive rule that the Department of Veterans Affairs (VA) promulgates through its Adjudication Procedures Manual.”
  2. “Whether Federal Circuit Rule 47.12(a) impermissibly supersedes the six-year limitations period in 28 U.S.C. § 2401(a), which applies to actions brought under 38 U.S.C. § 502.”

NOVA has now filed its opening brief. According to NOVA, the case presents questions that “address the circumstances in which veterans can invoke this Court’s statutory jurisdiction to enforce their rights and hold VA accountable when the agency loses its way.”

First, it argues that “this Court has jurisdiction to review generally applicable interpretive rules set forth in the M21-1 Manual.” According to NOVA, “[u]nder the clear meaning of 38 U.S.C. § 502 and its cross-references to 5 U.S.C. 15 §§ 552(a)(1) and 553, this Court has jurisdiction to review the challenged M21-1 Manual provisions.”

Second, it argues that the 60-day deadline for filing Section 502 actions “impermissibly overrides the six-year statute of limitations in Section 2401(a), which this Court has held applies to Section 502 actions.” Similar to its jurisdictional argument, which focuses on alleged clarity in the governing statute, NOVA contends that “under the clear meaning of 28 U.S.C. § 2401(a), NOVA’s challenges are timely.”

New Petition

A new petition was filed in one case.

In Idorsia Pharmaceuticals, Ltd. v. Iancu, Idorsia asked the en banc court to review the following two questions:

  1. “Whether an incomplete restriction requirement, which omits and excludes large portions of the claimed invention from further examination without any legitimate statutory basis, provides adequate notice enabling an applicant to fully respond on the merits, as required by 35 U.S.C. § 132.”
  2. “Whether it is consistent with Section 154(b) and this Court’s decision in Pfizer v. Lee, that a patentee should be denied patent term adjustment for a delay in commencing prosecution entirely caused by two facially incomplete notifications by the PTO to which no substantive response was possible.”

New Response

A new response was filed in one case.

In Spigen Korea Co. v. Ultraproof, Inc., Spigen filed its response to the petition, which presented two questions related to obviousness in design patent law. In its response, Spigen argues that a “basically the same test” for identifying primary references “is consistent with 35 U.S.C. § 103” and “in accord with this Court’s and the Supreme Court’s precedents.” It further argues that Ultraproof’s suggested “outer bounds test” is “somewhat unclear” and “violates basic tenants of obviousness law and long-standing precedent.”

New Invitation for Response

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


The Federal Circuit denied petitions in the following three cases: