En Banc Activity / Petitions
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Here is an update on recent en banc activity at the Federal Circuit in patent cases. It was a busy week at the Federal Circuit. The court received two new petitions in cases addressing issues of enablement, eligibility, and personal jurisdiction. Additionally, the court invited responses in three cases addressing termination of inter partes review proceedings, evaluation of expert opinions on summary judgment, and competitor standing. The court also received a response to a petition raising a question related to enablement. Lastly, the court issued two new denials, one in a case concerning 35 U.S.C. § 112(f) and another in a pro se case. Here are the details.

En Banc Cases

No new activity to report.

En Banc Petitions

New Petitions

New petitions for rehearing en banc were filed in two cases.

In WhitServe LLC v. Dropbox, Inc., WhitServe asked the en banc court to review the following questions:

  1. “[W]hether . . . the enablement requirement of Section 112 is separate and distinct from the subject matter eligibility requirements of Section 101.”
  2. “[W]hether . . . the Court can take judicial notice of disputed, material facts, especially at the pleading stage, including facts indicating a technological improvement, establishing several inventive concepts, to find that the invention is invalid under Section 101.”

In Trimble Inc. v. PerDiemCo LLC, PerDiemCo asked the en banc court to review the following questions:

  1. “Whether [Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (Fed. Cir. 1998)]’s ‘approach that fosters settlement’ must be considered in assessing the fourth fairness factor-‘the interstate judicial system’s interest in obtaining the most efficient resolution of controversies’-when determining if ‘assertion of personal jurisdiction would comport with “fair play and substantial justice”‘”;
  2. “Whether Red Wing embodies patent specific procedural rules, and, accordingly, whether it has been overruled or constrained by SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct. 954, 964 (2017) or other Supreme Court precedent;” and
  3. “Whether, under Red Wing, reasonableness of personal jurisdiction over a declaratory judgment defendant may be maintained based merely on the quantity of settlement negotiation communication as opposed to their ‘quality and nature.'”

Request for Responses

The court invited responses to petitions in the following three cases:

New Responses

In Amgen Inc. v. Sanofi, Aventisub LLC, Sanofi, Aventisub filed its response to Amgen’s petition for en banc review. In its petition, Amgen argued that the panel’s decision “does not merely ‘raise[] the bar for enablement’ for genus claims . . . [but] threatens to invalidate the entire category of such claims.” In response, Sanofi argues that “[t]he panel’s unanimous decision in this case broke no new ground.” Sanofi also contends that the decision “merely applied [the Federal Circuit’s] precedent to the undisputed facts and held that Amgen’s broad functional claims are not enabled-just as the district court held after applying the same precedent to the same undisputed facts.”

New Denials

The Federal Circuit denied petitions in the following two cases: