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. Two new petitions have been filed. One raises questions concerning an appeal related to obviousness, and the other comes in a pro se case. In addition, a response has been filed to a petition raising questions concerning after-arising technologies and the written description and enablement requirements. The court also denied two petitions, one concerning what patents should be listed in the Orange Book and the other concerning the burden of proof regarding enablement in inter partes review proceedings. Here are the details.

New Petitions

Since our last update, petitioners have filed two new petitions for en banc rehearing.

In Laboratory Corporation of America Holdings v. Ravgen, Inc., LabCorp raised the following questions:

  1. “The panel failed to address critical arguments presented in Labcorp’s briefing that directly contradict its decision, warranting rehearing and reversal of the Board.”
  2. “Regardless of these errors, en banc review is necessary to resolve and harmonize this Court’s decisions on a legal issue fundamental to obviousness law: May courts circumvent the legal principle of obviousness law that, so long as ‘there is something in the prior art as a whole to suggest the desirability, and thus the obviousness,’ of the claimed invention . . . there is a motivation to combine, by instead characterizing such challenges as virtually unreviewable factual disputes?”

In, Huang v. Amazon.com, Inc., a pro se litigant filed an en banc petition.

New Response

In Novartis Pharmaceuticals Corp. v. Torrent Pharma Inc., Novartis filed a response to MSN’s en banc petition. The petition asked the following question:

  • “Whether, if patent claims are construed to cover (or embrace, include, encompass, etc.) later-arising technology—as Novartis argued below and the district court adopted—the patent must describe and enable such later-arising technology under 35 U.S.C. § 112(a) (35 U.S.C. § 112 ¶ 1 (pre-AIA)).”

Now, in its response, Novartis argues MSN’s petition should be denied for three reasons: (1) the “petition identifies no legal conflict warranting en banc review;” (2) MSN “does not attempt to show the importance beyond the particular facts here;” and (3) the petition “does not point to anything the Court’s unanimous decision misapprehended or overlooked.” Moreover, Novartis says, “MSN asks the Court to undo decades of settled law about the relationship between foundational patents and subsequent improvements.”

New Denials

Since our last update, the court denied the two following petitions for en banc rehearing: