En Banc Activity

Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include new petitions in two cases raising questions related to the presumption of validity, motions for attorneys fees, and the propriety of Rule 36 judgments in cases appealed from the U.S. Patent and Trademark Office; a new response to a petition raising a question related to patent eligibility; a new amicus brief in a case raising questions related to venue and Hatch-Waxman; and the denial of a petition in a pro se case. Here are the details.

New Petitions

In WPEM LLC v. SOTI Inc., WPEM asked the en banc court to review the following two questions:

  1. “When a plaintiff is not aware of any reason to question the validity of an issued United States Patent, is that plaintiff allowed to rely on the statutory presumption of validity when filing a patent infringement lawsuit?”
  2. “While invalidating the claims of a validly issued United States Patent requires clear and convincing evidence, is a District Court allowed to base a finding of exceptionality under [35 U.S.C.] § 285 for an inadequate pre-suit investigation of patent validity using the lesser standard that the patent is likely invalid when the plaintiff is not aware of any reason to question validity?”

In Waterblasting, LLC v. Iancu, Waterblasting asked the en banc court to review the following question:

  • “Whether the Act of 1984, Pub. L. 98-620, title IV, § 414(a), Nov. 8, 1984, 98 Stat. 3335, 3362, amending the language in 35 U.S.C. § 144 to provide that this Court shall issue ‘its mandate and opinion’ instead of ‘a certificate of its proceedings and decision,’ requires this Court to issue an opinion, precluding Rule 36 affirmances without opinion, when reviewing appeals from the United States Patent and Trademark Office.”

New Response

In EcoServices, LLC v. Certified Aviation Services, LLC, EcoServices filed its response to CAS’s petition for en banc review. In the petition, CAS argues the decision undermines post-Alice jurisprudence. For support, CAS cites to Judge Dyk’s dissent alleging the decision diverged from the court’s precedent. CAS also maintains that the opinion’s non-precedential designation “will not contain the damage.”

In response, EcoServices argues that “[t]he panel did not hold ‘inapplicable’ any aspect of this Court’s eligibility doctrine . . . . Rather, it just applied established law to answer the ‘directed to’ question.” Additionally, EcoServices alleges that the claims-in-suit are “not directed to an abstract idea at all.” Lastly, EcoServices states that this case “would be a poor vehicle to reconsider Section 101 en banc even if this case did present any of the contested doctrinal issues over which the court has sometimes disagreed.”

New Amicus Brief

Pharmaceutical Research and Manufacturers of America (PhRMA) filed an amicus brief in Valeant Pharmaceuticals North America LLC v. Mylan Pharmaceuticals, Inc. The petition in this case asks the court to consider whether a generic drug manufacturer has committed acts of infringement in a judicial district by submitting an Abbreviated New Drug Application seeking approval to market an infringing generic drug throughout the United States, including in that judicial district. In its amicus brief, PhRMA argues that “[t]he fragmented litigation required by the panel decision reduces judicial efficiency and significantly increases the costs of Hatch-Waxman cases.” PhRMA supports en banc rehearing so the court can consider a question “that was addressed only implicitly by the panel: Whether 28 U.S.C. § 1400(b) governs § 271(e)(2) actions.”


The Federal Circuit denied a petition in the following case: