En Banc Activity / Featured / Petitions
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Here is an update on recent en banc activity at the Federal Circuit in patent cases. Since our last update, the Federal Circuit has invited a response to a petition raising a question related to claim construction and preambles; one new response has been filed to a petition that raises a question related to the presumption of validity and the written description requirement; and three petitions for en banc rehearing have been denied in cases raising questions related to ineligibility, claim construction, and prosecution history estoppel. Here are the details.

En Banc Petitions

Invitation for Response

Since our last update, the Federal Circuit invited a response from Sharda USA to the petition in FMC Corp. v. Sharda USA, LLC. In its petition, FMS raised the following question:

  • “Do ordinary claim-construction principles control whether a preamble is limiting, or are preambles subject to special, categorical rules applicable to no other part of the claim?”

New Response

In Mondis Technology Ltd. v. LG Electronics Inc., Mondis Technology filed a petition asking the court to consider the following question:

  • “Does the presumption of validity set out in 35 U.S.C. § 282 apply to all written description cases or does the burden shift to the patentee when there is no in haec verba support for the claims?”

Now, in its response, LG Electronics argues that, “[c]ontrary to Mondis’s assertion, [the Federal Circuit] did not adopt a new burden-shifting regime for written description challenges.” Additionally, LG Electronics contends, the Federal Circuit “did not contradict” its precedent “and did not vitiate 35 U.S.C. §282’s presumption of validity.”  

Denials

Since our last update, the Federal Circuit has denied three petitions for en banc rehearing in the following cases: