En Banc Activity

Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include a new petition presenting questions related to obviousness, a response brief addressing standards governing reissue, and denials of two petitions presenting questions related to definiteness and claim construction. Here are the details.

New Petition

Since our last update, a new petition was filed in Vanda Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc. In it, Vanda Pharmaceuticals asked the en banc court to review the following questions:

  1. “Whether method-of-treatment patents directed to the effect of food on a particular drug are per se obvious because of FDA Guidance acknowledging that food may affect the bioavailability of drugs and should be studied.”
  2. “Whether the disclosure of the existence of an ongoing clinical trial is evidence of a reasonable expectation of success as to the result of the trial.”
  3. “Whether a drug-drug interaction patent is obvious when a POSA could not ‘rule out’ the interaction because another compound in the same general category has shown such an interaction.”

New Response

Google filed its response to Cioffi’s petition for rehearing en banc in Cioffi v. Google LLC. In its petition, Cioffi presented the following questions for review:

  1. “What is the proper construction of [35 U.S.C.] Section 251’s requirement that, upon certain conditions being met, the Patent Office shall ‘reissue the patent for the invention disclosed in the original patent?’”
  2. “Does Section 251 permit reissue claims that (1) are narrowed—not broadened—and (2) meet Section 112’s written-description requirement?”

Cioffi argued the standard the panel used for determining the patentability of reissue claims, “requiring . . . word-for-word disclosure[,] conflicts with the statute (which only requires the invention be ‘disclosed’).” It contended the standard also “conflicts with this Court’s original-patent precedent (which only requires that a skilled artisan would ‘identify the subject matter of the new claims as invented and disclosed by the patentees’).” It also asserted the panel “effectively foreclose[d] the reissue process for genus-species claims and invalidate[d] countless patents—despite those patents meeting each condition of patentability.”

In response, Google now argues the “Plaintiffs’ request to exempt ‘narrower’ reissue claims from the original-patent requirement . . . conflicts with the doctrine’s long history and has no basis in the statute.” It also maintains “controlling law . . . forecloses Plaintiffs’ effort to equate the original patent requirement of § 251 with the substantively and statutorily distinct written description standard of [35 U.S.C.] § 112.” It also asserts “Plaintiffs’ misplaced policy appeals and citation-free arguments imputing nonexistent disclosures into the original specification also miss the mark.”


Since our last update, the Federal Circuit has denied the petitions in the following two cases: