Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include three new petitions and a request for a response.
New en banc petitions were filed in three patent cases:
In Genzyme Corp. v. Zydus Pharmaceuticals (USA) Inc., Zydus Pharmaceuticals (USA) Inc. asked the en banc court to review the following question:
“Whether a patent-challenger asserting obviousness must prove that a POSA would have had a reasonable expectation of success as to achieving unclaimed features, such as achieving alleged unexpected results that are not recited in the asserted claims.”
In Kingston Technology Company v. SPEX Technologies, Inc., Kingston Technology Company asked the en banc court to review the following questions:
1. “Whether this Court must interpret and apply the words ‘under this section’ as used in the No-Appeal bar, 35 U.S.C. § 314(d), without regard to whether appeal is taken by a patent owner or by a petitioner.”
2. “Whether this Court must evaluate the Board’s decision on the basis of what the Board did as opposed to what the Board could have done, as mandated by binding Supreme Court law.”
3. “Whether and to what extent this Court’s en banc decision in Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018), which held that decisions not made ‘under this section’ do not fall within the scope of the No-Appeal bar, overruled prior panel decisions of this Court holding that non-institution decisions not made ‘under this section’ do fall within the scope of the No-Appeal bar . . . .”
In Ajinomoto Co. v. International Trade Commission, two petitions for rehearing en banc were filed.
In its petition, CJ CheilJedang Corp. asked the en banc court to review whether “[t]he majority’s decision and the Hospira panel’s decision endorse ‘prosecution-remorse’ arguments that eviscerate the bedrock principles and purposes of PHE.”
In their petition, Ajinomoto Co., Inc. and Ajinomoto Heartland Inc. jointly asked the en banc court to review the following questions:
1. Whether “the Panel violated the fundamental principle that claims are to be construed from the perspective of an ordinary artisan in the field of invention—here, the complex field of genetic engineering.”
2. Whether “the Panel failed to understand the distinction between genetic ‘alterations’ (original claim language) and genetic ‘replacements’ (amended claim language) in the context of the invention and prosecution history.”
3. Whether “the Panel ignored the well-settled principle that claims should not be limited to a specific example.”
The Federal Circuit invited a response from the appellees to the petition for rehearing en banc in Bridge and Post, Inc. v. Verizon Communications, Inc.
The Federal Circuit did not grant any en banc petitions last week.
The Federal Circuit denied the petition for rehearing en banc in Trading Technologies Int’l v. IBG LLC.