En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received a new petition raising questions related to the critical date of prior art. The court also received a response to a petition raising questions related to the written description requirement. Finally, the court denied a petition in a case raising questions related to obviousness-based inherency of claim limitations. Here are the details.

En Banc Petitions

New Petition

In Innovation Sciences, LLC v. Amazon.com, Inc., Innovation Sciences asked the en banc court to review the following questions:

  1. “Whether it is proper to treat a system built in 2019 for purposes of the litigation that included certain prior art components (i.e., the 2019 HAL System) as an anticipatory reference in the absence of proof that 2019 system actually existed prior to the 2006 critical date.”
  2. “Whether the suggestion that a prior art system could have existed before the critical date can meet the clear and convincing evidence standard required to prove invalidity.”

New Response

In Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc., HEC Pharm filed its response to Novartis Pharmaceuticals’ petition for rehearing en banc. In its petition, Novartis Pharmaceuticals argued that “the retirement of one judge after the panel decision should not have reversed the outcome.” Concerning the substantive issue of patent law’s written description requirement, Novartis argued that the “new majority’s inflexible ‘heightened standard’ conflicts with a substantial body of precedent,” and in particular Novartis argues that implicit disclosure is “firmly grounded in longstanding precedent and explicitly adopted by the MPEP.” In response, HEC Pharm now argues that “[a]ssigning a new judge to a panel when an original panel member is unavailable due to resignation is . . . codified” in the court’s rules. Regarding the written description requirement, HEC Pharm argues that the “[d]ecision creates no new rule or standard, and is fully consistent with precedent.”

New Denial

The Federal Circuit denied the petition for rehearing en banc in Cornell Research Foundation, Inc. v. Vidal, a case that raised questions related to obviousness-based inherency of claim limitations.