En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include two new petitions, a response to a petition, and an amicus brief in support of a petition.

New Petitions

In Ameranth, Inc. v. Domino’s Pizza, LLC, Ameranth filed a petition asking the court to review the following questions:

  1. “Whether, on summary judgment, a panel may act as a first-time factfinder to examine disputed facts and evidence regarding inventiveness of a groundbreaking invention improperly ignored by the District Court rather than remand?”
  2. “Whether, on summary judgment, a panel may shift the burden to the patentee to prove patent eligibility of claims not addressed in a summary judgment motion of unpatentability under § 101?”
  3. “Whether § 101 can be interpreted to consume the enablement requirement of § 112, and whether it is appropriate to require the claims themselves meet enablement requirements under § 101?”
  4. “Whether, on summary judgment, when the Pre-Trial Order and record evidence the patentee limited its infringement assertion to five claims, a panel may disregard parts of the record to increase the number of claims asserted to expand jurisdiction?”

In Uniloc 2017 LLC v. Facebook, Inc., a case in which the court canceled oral argument late on a Friday given the court’s holding earlier that week in Arthrex, Facebook and WhatsApp requested en banc consideration of the questions decided by the court in Arthrex:

  1. “Whether the appointment of Administrative Patent Judges (APJs) to the Patent Trial and Appeal Board (PTAB) violates the Appointments Clause of the U.S. Constitution, U.S. Const., Art 2, § 2, cl. 2, as the panel in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) concluded;” and
  2. “If the answer to question (1) is ‘yes,’ what appropriate judicial remedy, if any, can be fashioned to ameliorate the constitutional violation?”

New Responses

In Chrimar Systems, Inc. v. ALE USA Inc., ALE USA filed its response in opposition to the petition, which asked “whether an infringer under a final damages judgment can avoid preclusion, and thus seek vacatur of that judgment, based on a later USPTO unpatentability outcome.” According to ALE, “Chrimar’s petition should be denied because it asks this Court to contravene controlling Supreme Court authority,” and anyway it “improperly rel[ies] on arguments not made to the panel below.” “At its essence,” ALE maintains, “Chrimar argues to overrule sound precedent so that Chrimar receives damages from ALE for infringement of patents that never should have issued merely because Chrimar spent money litigating the patents in a district court.”

New Amicus Briefs

The Intellectual Property Owners Association filed an amicus brief in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, a case presenting several questions related to the doctrine of patent eligibility under 35 U.S.C. § 101. IPO argues that the petition should be granted because “[t]he panel decision . . . blurred the lines between distinct requirements of the patent statute and thereby created uncertainty surrounding the metes and bounds of section 101 and its interplay with [35 U.S.C. §] 112.” Moreover, says IPO, “the decision may open the floodgates to section 101 challenges to mechanical inventions, which have not been the subject of recent eligibility decisions of this Court or the Supreme Court.”