En Banc Activity

Here is an update on recent en banc activity at the Federal Circuit. This week the en banc court will hear arguments in a veterans case. Late last week a supplemental reply brief was filed in that case. As for new petitions for en banc consideration, two were filed in patent cases raising various questions related to the doctrine of equivalents, prosecution history estoppel, vitiation, reasonable royalties, and obviousness. With respect previously-filed petitions, a new response was filed asking the court to reject a petition questioning whether whether a party who is not a patentee may sue for patent infringement. In addition, the court denied four petitions in patent cases raising questions related to mandamus jurisdiction over real-party-in-interest determinations, double patenting, transfer of venue, and claim construction. Here are the details.

En Banc Case

In National Organization of Veterans Advocates, Inc. v. Secretary of Veterans Affairs, NOVA filed a supplemental reply brief addressing the issue of Article III standing. Oral argument is scheduled for tomorrow, October 8, at 10:00 am eastern time. For more information, see our argument preview.

En Banc Petitions

New Petitions

New petitions were filed in two cases.

In Bio-Rad Laboratories, Inc. v. 10x Genomics Inc., 10x Genomics asked the en banc court to review the following three questions:

  1. “Whether a patentee can overcome prosecution history estoppel under the tangentiality exception merely because the inventors ceded more claim scope than necessary[.]”
  2. “Whether a claim term written in binary form is vitiated by an equivalent that is the opposite of that term[.]”
  3. “Whether the requirement to apportion reasonable royalty damages in every case applies in comparable license cases.”

In Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA, Amarin Pharma asked the en banc court to review the following question:

  • “Whether a court is permitted to use the ‘prima facie’ framework to make a determination of obviousness before considering the objective indicia of non-obviousness, and then only look at those objective indicia to determine whether they are sufficient to ‘rebut’ the obviousness determination already made[.]”

New Response

In Gensetix, Inc. v. Baylor College of Medicine, Gensetix filed its response to Baylor College of Medicine’s (“BCM”) petition for en banc review. BCM asked the court to consider whether “a party who is not a patentee” may “have remedy by civil action for infringement.” In response, Gensetix argues that because BCM never raised the question of non-patentee remedies in civil actions in front of the panel, it inappropriately raises it for the first time in front of the en banc court. Additionally, Gensetix alleges that, contrary to BCM’s argument, the majority’s holding is consistent Supreme Court precedent.


The Federal Circuit denied petitions in the following four cases: