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, three new petitions were filed raising questions related to procedure and eligibility, the written description requirement, and sanctions. The court also lifted a stay on a case raising questions about the doctrine of equivalents. Finally, the court denied a petition for rehearing raising a question about claim construction. Here are the details.

En Banc Petitions

New Petitions

Since our last update, three new petitions for en banc rehearing were filed.

In In re Medical Components, Inc., Medical Components asked the en banc court to review the following question:

  • “Whether a mandamus should issue when the district court fails to follow a mandate which: (i) was issued by this Court in this proceeding; and (2), required the district court to conduct further proceedings in accordance with the precedential decision C R Bard Inc. v. AngioDynamics, Inc., 979 F.3d 1372 (Fed. Cir. 2020) (herein AngioDynamics II) (which addressed printed matter issues), and where the district court in the decision under review does not follow the law in AngioDynamics II on printed matter but instead rules based on a prior, non-precedential, non-binding decision of this Court which did not consider and specifically disavowed any decision relating to printed matter, namely, C.R. Bard, Inc. v. AngioDynamics, Inc., 748 Fed. App’x. 1009, 1011 (Fed. Cir. 2018) (non-precedential).”

In Exelixis, Inc. v. MSN Laboratories Private Ltd., MSN Laboratories Private asked the en banc court to review the following questions:

  1. “Does Ariad permit claiming an unpredictable genus (e.g., a genus of all polymorphs for a chemical compound) when it is undisputed that, as of the priority date, a POSA could not ‘visualize or recognize’ any undisclosed member (e.g., a new polymorphic form) of that unpredictable genus?”
  2. “Can a disclosure that would not have rendered undisclosed polymorphs obvious nonetheless provide written description support for a genus encompassing those forms?”

In Epic Tech, LLC v. Pen-Tech Associates, Inc., Epic Tech asked the en banc court to review the following questions:

  1. “Can it be a sanctionable act for a patentee to rely on the statutory presumption of validity?”
  2. “Whether a patentee can be forced to prove its patent is valid before bringing suit in violation of Commil.“
  3. “Whether a patentee must conduct a pre-suit validity analysis to avoid sanctions under Fed. R. Civ. P. 11, 35 U.S.C. § 285, 28 U.S.C. § 1927, or the court’s inherent authority.”

Order Lifting Stay

Since our last update, the Federal Circuit issued an order lifting the stay on Clearplay’s petition in Clearplay, Inc. v. DISH Network L.L.C. In this case, Clearplay asked the en banc court to review 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.”

Denial

Since our last update, the Federal Circuit denied AlterWan’s petition for en banc rehearing in AlterWan, Inc. v. Amazon.com, Inc., a case raising a question about claim construction.