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, two new petitions for en banc rehearing have been filed raising questions related to damages and the Administrative Procedure Act. One new response was filed in a case raising a question related to appellate procedure. One new amicus brief was filed in a case raising questions related to enablement and written description. Finally, one petition was denied in a case raising a question related to inventorship. Here are the details.

New Petitions

Since our last update, new petitions were filed in two cases.

In Constellation Design, LLC v. LG Electronics Inc., LG Electronics asked the court to consider the following question:

  • Whether “the panel decision is contrary to the following decision(s) of the Supreme Court of the United States or the precedent(s) of this court: Garretson v. Clark, 111 U.S. 120 (1884); LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51 (Fed. Cir. 2012); Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201 (Fed. Cir. 2014); VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308 (Fed. Cir. 2014); and Omega Patents, LLC v. CalAmp Corp., 13 F.4th 1361 (Fed. Cir. 2021).”

In Manufacturing Resources International, Inc. v. Squires, Manufacturing Resources International asked the court to consider the following question:

  • “[W]hether, under the Administrative Procedure Act, the Patent Trial and Appeal Board must hold a petitioner to its burden of proof and explain its action or, instead, if the Board may adopt a petitioner’s contentions without making its own findings as it did here.”

Responses

Since our last update, one new response to a petition was filed.

In its petition in ClearPlay, Inc. v. DISH Network L.L.C., ClearPlay asked the court to consider the following question:

  • “[W]hether the Federal Circuit’s requirement of ‘particularized testimony and linking argument,’ as applied to set aside a jury’s equivalence verdict resting on panel-credited limitation-specific testimony and on Warner-Jenkinson enumerated factors, conflicts with Warner-Jenkinson and Graver Tank.”

Now, in its response, DISH Network argues a “rehearing petition may be filed after the deadline only in ‘extraordinary circumstances,’ regardless of whether a party would be prejudiced by the untimely filing.” Dish argues “ClearPlay does not come close to meeting that demanding standard.”

Amicus Briefs

Since our last update, one amicus brief was filed in Teva Pharmaceuticals International GmbH v. Eli Lilly and Co. Here are the questions presented by Eli Lilly in this case:

  1. “Whether adding functional method-of-use limitations to otherwise nonenabled genus claims renders the claims enabled, as the panel held.”
  2. “Whether a specification’s disclosure of species outside the scope of a claimed genus constitutes a disclosure of representative species that can provide written-description support for an otherwise unsupported genus claim.”

The recently-filed amicus brief supports rehearing:

Denials

Since our last update, the Federal Circuit denied one petition for en banc rehearing: