En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit. Highlights include modified opinions issued in two patent cases raising questions related to eligibility; new petitions filed in two cases raising questions related to obviousness; a new invitation to respond to a petition raising questions related to venue; and the denial of petitions in cases raising questions related to jurisdiction over an appeal from the Patent Trial and Appeal Board, restriction requirements, and patent term adjustments. Here are the details.

New Opinions

In the following two cases, the Federal Circuit granted panel rehearing to the extent that the panels issued modified opinions and then the full court denied the petitions for rehearing en banc.

In American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, a panel majority originally affirmed a district court’s ruling that all claims in a patent were ineligible. In its modified opinion, the panel majority still affirmed a holding that two independent claims and their dependent claims were ineligible, but it vacated a holding that another claim and its dependent claims were ineligible. The court then denied the petition for en banc rehearing by a vote of 6 to 6. The order denying en banc rehearing included two concurring opinions and three dissenting opinions. For more information, see our opinion summary. Also see Paul Michel’s guest post commenting on the case.

In Illumina, Inc. v. Ariosa Diagnostics, Inc., another panel majority originally reversed a district court’s holding that claims were not directed to patent-eligible subject matter. In its modified opinion, the panel majority reached the same conclusion. Its modified opinion, however, incorporated additional facts and reasoning. For more information see our opinion summary.

New Petitions

New petitions were filed in two cases.

In Immunex Corp. v. Sandoz Inc., Sandoz asked the en banc court to review the following question:

  • Whether “[a] party that obtains an exclusive license conveying ‘all substantial rights’ to a patent” may “nonetheless avoid becoming an effective owner under the all-substantial-rights test, and thereby evade double-patenting scrutiny, merely by leaving the nominal owner with a theoretical secondary right to sue, which the licensee can prevent from ever ripening by issuing a royalty-free sublicense[.]”

In LiquidPower Specialty Products v. Baker Hughes, LiquidPower presented the following question to the en banc court:

  • “Whether objective evidence of nonobviousness may be considered when deciding key obviousness questions such as whether a skilled artisan would have motivation to combine prior art references with a reasonable expectation of success, whether that combination is based on hindsight, and whether the results would be predictable.”

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 two cases: