En Banc Activity

Here is an update on recent en banc activity at the Federal Circuit. The en banc court will hear oral argument tomorrow in a veterans case. As for patent cases, highlights include new petitions questions related to inter partes review, enablement, and eligible subject matter; a new response to a petition raising questions related to the intersection of inducement of infringement and Hatch-Waxman; and the denial of three petitions raising questions related to eligible subject matter, enablement, the intersection of venue and Hatch-Waxman, and the presumption of validity. Here are the details.

En Banc Case

Tomorrow the court en banc court will hear oral argument in Arellano v. Tran (formerly Arellano v. Wilkie). You can find an overview of the case in our Court Week post and more details in our argument preview.

En Banc Petitions

New Petitions

New petitions were filed in two cases.

In Apple Inc. v. Optis Cellular Technology, LLC, Apple asked the en banc court to review the following question:

  • “Whether the Court has jurisdiction to review a decision of the U.S. Patent and Trademark Office denying a petition for inter partes review where the appeal argues that the decision was based on an agency rule that exceeds the Office’s statutory authority, is arbitrary and capricious, and was adopted without observance of required procedures.”

Notably, Apple previously asked the en banc court to review the same question in Apple Inc. v. Maxell, Ltd.

In Simio, LLC v. FlexSim Software Products, Inc., Simio asked the en banc court to review the following questions:

  1. “Whether, in the field of computer simulation technology and pursuant to instruction provided by Arctic Cat and Graham, as well as Affinity Labs and Genetics, it is necessary to review the claimed limitation as a whole in light of both the specification and prosecution history of a patent to determine if providing a previously unavailable technique for altering the behavior of a simulated object in a manner that enables changes to a simulated instance of that object to be made in a span of simulated time satisfies the Alice test[.]”
  2. “[W]hether an unconventional solution to a technological problem in a computer environment that is not addressable by programming constitutes a patent eligible improvement to computer functionality under the Alice test and the precedential decisions applying this test, rather than only a benefit to user experience.”

New Response

In GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., GlaxoSmithKline (“GSK”) filed its response to Teva Pharmaceuticals’ (“Teva”) petition for en banc review. In the petition, Teva argued that it was wrongly found liable for inducement of infringement even though it “followed the special pathway Congress created so generic drugs can enter the market while steering clear of method-of-use patents: it adopted a ‘skinny label’—one that included only the two unpatented indications and ‘carved out’ GSK’s patented method.” Teva stated that, “[i]f that can be inducement, as the majority held, every skinny-labeled generic is at risk, and the carve-out statute is a dead letter.”

In response, GSK now argues that “[t]his case does not implicate the fate of section viii carve-outs,” saying that the decision was a “typical review of a properly instructed jury’s verdict.” The majority’s decision, GSK argues, “found substantial evidence supported the jury’s factual finding that Teva’s actions, as a whole, induced physicians to prescribe its generic to treat heart failure according to GSK’s patented methods.”


The Federal Circuit denied petitions for en banc review in the following three cases: