En Banc Activity

Here is an update on recent en banc activity at the Federal Circuit. We have activity to report in both of the court’s two pending en banc veterans cases: a unanimous opinion in one and the filing of the appellant’s reply brief in the other. In patent cases with petitions for en banc rehearing, six new petitions have been filed raising questions related to patent eligibility, claim construction, due process, inducement of infringement in the context of Hatch-Waxman, and venue in the context of Hatch-Waxman. The court has also issued invitations for responses to petitions in two cases raising questions related to patent eligibility and intervention. And the court has denied three petitions raising questions related to obviousness, infringement and claim construction. Here are the details.

En Banc Cases


In the first pending en banc veterans case, National Organization of Veterans Advocates, Inc. v. Secretary of Veterans Affairs, the en banc court issued a unanimous opinion. In it, the court concluded that it had “jurisdiction over NOVA’s challenge to the Knee Joint Stability Rule under 38 U.S.C. § 502” and “jurisdiction to review the Knee Replacement Rule.” On the merits, the court held “that Federal Circuit Rule 47.12(a), now republished at Rule 15(f), is invalid as inconsistent with 28 U.S.C. § 2401(a).” The court ultimately referred the case “to a panel for disposition on the merits.”

New Reply

In the other pending en banc veterans case, Arellano v. Wilkie, the veteran filed his reply brief. In it, he argued that “VA has failed to show why Irwin’s rebuttable presumption in favor of equitable tolling should not apply to the one-year filing deadline set forth in 38 U.S.C. § 5110(b)(1), which requires military veterans—freshly discharged from service, unrepresented by counsel, and potentially suffering from physical and/or psychological injuries—to file any ripe disability claims they may have within one year of discharge or forever lose their rights to recover disability benefits for this period.”

En Banc Petitions

New Petitions

We have six new petitions in patent cases to report, although three come in cases involving the same parties.

In EcoServices, LLC v. Certified Aviation Services, LLC, Certified Aviation Services asked the en banc court to consider “[w]hether the bare idea of automating a known, manual process using a generic machine is a patent-eligible invention.”

In three cases involving the same parties, Ultratec, Inc. v. CaptionCall, LLC I, Ultratec, Inc. v. CaptionCall, LLC II, and Ultratec, Inc. v. CaptionCall, LLC III, Ultratec asked the en banc court to review two questions:

  1. Whether the PTAB “applied the wrong claim construction standard.”
  2. Whether “the PTAB impermissibly acted as an advocate, exceeded its authority under the Administrative Procedure Act, and violated due process.”

In GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., Teva Pharmaceuticals USA asked the en banc court to consider questions at the intersection of the law of induced infringement and Hatch-Waxman:

  • “The questions concern whether induced infringement can be used to nullify a provision of the Hatch-Waxman Amendments. Congress specified in Hatch-Waxman that when a drug is no longer patented and is FDA-approved for unpatented uses, a patent on one method of using the drug cannot be allowed to block the sale and use of the drug for the other, unpatented purposes. See 21 U.S.C. § 355(j)(2)(A)(viii). The statutory mechanism is a ‘carve-out’: a generic manufacturer can adopt a ‘skinny label,’ deleting the patented indication and labeling the product only for unpatented indications, and avoid claims that the label induces infringement. The questions are: Can the generic manufacturer nonetheless be held liable for induced infringement based on evidence that would be available in every carve-out case—the skinny label itself and product materials that describe the generic drug product as the AB-rated generic equivalent of the brand product, but do not even mention the patented method? And even if the generic manufacturer were found to have encouraged infringement, can it be held liable for infringement that it did not cause—e.g., if the direct infringer undisputedly did not see the communication that supposedly encouraged infringement?”

In Valeant Pharmaceuticals North America LLC v. Mylan Pharmaceuticals, Inc., Valeant Pharmaceuticals North America asked the en banc court to take the case to answer the following question at the intersection of venue and Hatch-Waxman:

  • “Whether a generic drug manufacturer ‘has committed acts of infringement’ under 28 U.S.C. § 1400(b) in a judicial district by submitting an Abbreviated New Drug Application (‘ANDA’) seeking approval to market an infringing generic drug throughout the United States, including in that judicial district.”

Invitation for Responses to Petitions

The court recently issued invitations to respond to petitions in the following patent cases:


Finally, the court denied petitions for en banc rehearing in the following patent cases: