En Banc Activity

Here is an update on recent en banc activity at the Federal Circuit. Highlights include two new petitions for rehearing in patent cases presenting questions related to secondary considerations of non-obviousness and inconsistency between Board and district court claim constructions, along with a denial of a petition in another patent case presenting a question related to eligibility. Here are the details.

New Petitions

Since our last update, the court received two new petitions for rehearing.

In a patent case, Team Worldwide Corporation v. Intex Recreation Corp., Team Worldwide Corporation asks the Federal Circuit to review the following question:

  • “How much evidence is needed for a company with a patented, hugely successful product to be credited with secondary considerations of non-obviousness and maintain the validity of its patent claims?”

In another patent case, Schwendimann v. Neenah, Inc., Schwendimann asks the court to consider the following questions:

  • “Where the Panel is presented with inconsistent claim constructions from the Board and the District Court, is it permissible for the Panel to issue a Rule 36 affirmance without indicating which claim constructions were held correct, thereby making it impossible for Patent Owner and the public to know how the claims were construed, and making it impossible for Patent Owner to seek review of the claim constructions?”
  •  “Assuming, arguendo (and with no way of knowing), that the Panel found that the District Court’s constructions of the claim terms were correct (and either rejected the Board’s claim constructions or somehow reconciled the two sets of claim constructions), was it erroneous for the Panel to invalidate claims as anticipated where there was no express or inherent disclosure that the prior art reference contained each of the claim limitations in the invalidated patent claims?”


Since our last update, the Federal Circuit also denied a petition for rehearing in Sun Pharmaceutical Industries, Inc. v. Incyte Corporation, a case concerning patent eligibility.