En Banc Activity

Here is an update on recent en banc activity at the Federal Circuit. Highlights include two new denials of petitions for rehearing en banc in patent cases. These petitions raised questions related to claim construction, the scope of inter partes review proceedings, and the evidentiary basis to prove the existence of prior art.  Here are the details.


Since our last update, the Federal Circuit denied rehearing en banc in Apple Inc. v. Masimo Corporation. In this case, Apple asked the court to review the following question:

  • “Whether a patent limitation should be given its plain and ordinary meaning, when (a) the alternative, narrower construction adopted by the lower tribunal renders claim language superfluous and (b) the specification mentions the term only once—in the context of a preferred embodiment—and instructs that the embodiments are examples that ‘are not to limit the scope of the claims.”

The Federal Circuit also denied rehearing in United Therapeutics Corporation v. Liquidia Technologies, Inc. In this case, United Therapeutics asked the court to review the following question:

  1. Whether “the Panel decision announced an unprecedented an unsupported legal standard for adjudicating the scope of [inter partes reviews].”
  2. Whether “the Panel’s holding that IPR petitioners need not provide any ‘evidence of actual existence’ of references asserted to be [35 U.S.C.] § 102(b) prior art conflicts with precedent.”