En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received three new petitions this week raising issues concerning the scope of appellate review, patent eligibility, and the extent of estoppel with respect to claim constructions. Additionally, the court invited responses in two cases addressing the court’s jurisdiction and the case addressing the extent of estoppel in claim constructions. Lastly, the court denied petitions in three cases raising questions related to patent eligibility, inventorship, and the evaluation of expert opinions. Here are the details.

En Banc Petitions

New Petitions

In Becton, Dickinson and Co. v. Baxter Corp. Englewood, Baxter Corp. Englewood asked the en banc court to review the following question:

  • Whether “the panel decision is contrary to the following decisions: Apple Inc. v. Samsung Electronics Co., Ltd., 839 F.3d 1034, 1039 (Fed. Cir. 2016) (en banc); Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1374-75 (2018); and Cuozzo Speed Tech., LLC v. Lee, 136 S. Ct. 2140, 2144 (2016)).”

In Yu v. Apple Inc., Yu asked the en banc court to review the following questions:

  1. “Whether the specific requirements recited in the language of a claim can be disregarded in determining the ‘focus’ of the claim under step one of the Alice/Mayo test for patent-eligibility.”
  2. “Whether a claimed combination of non-abstract (e.g., structural) limitations that has not been shown to exist in the prior art can be found to be ‘generic’ and ‘conventional.'”
  3. “Whether a court can make adverse findings of fact against the non-moving party at the pleadings stage that are inconsistent with the patent specification, the file history, and/or plausible allegations in the complaint.”
  4. “Whether a claim that presents no danger of preempting an ‘abstract idea,’ either generally or in a particular field of use or technological environment, can be found ineligible for patent protection under 35 U.S.C. § 101.”

In Bio-Rad Laboratories, Inc. v. International Trade Commission, Intervenor 10X Genomics Inc. asked the en banc court to review the following questions:

  1. “Where the doctrine of assignor estoppel is applied to preclude a defendant from raising invalidity defenses, whether the Court should address the ‘extent of the estoppel’ in claim construction.”
  2. Whether “[t]he panel erred in affirming that claim construction without vacating and remanding to the Commission to make those factual determinations.”

New Invitations to Respond

The Federal Circuit invited responses to petitions in the following cases:

New Denials

The Federal Circuit denied petitions in the following cases: