En Banc Activity / Petitions
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Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include new petitions filed in five cases raising questions related to the Appointments Clause, marking and notice, and definiteness; one response to a petition raising questions related to collateral estoppel and inter partes review; one request by the Federal Circuit for a response to a petition raising questions related to collateral estoppel and the doctrine of equivalents; and the denial of petitions in three cases (including, notably, Arthrex). Here are the details.

New Petitions

New petitions were filed in five cases.

In three cases (Document Security Systems, Inc v. Seoul Semiconductor Co., Ltd., Sound View Innovations, LLC v. Hulu, LLC, and Sound View Innovations, LLC v. Unified Patents, LLC), the government presented the following questions:

  1. “This case presents the same three questions presented in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), in which all parties have petitioned for en banc review:”
    • A. “Whether the administrative patent judges of the Patent Trial and Appeal Board are inferior officers of the United States under the Appointments Clause, U.S. Const. art. II, § 2, cl. 2, such that Congress permissibly vested their appointments in a department head, rather than principal officers of the United States who must be nominated by the President and confirmed by the Senate.”
    • B. “Whether this Court should entertain an Appointments Clause challenge a litigant forfeited by failing to raise it before the agency.”
    • C. “How to remedy any Appointments Clause defect in the Patent Trial and Appeal Board.”
  2. “Whether the Arthrex panel’s decision to excuse a challenger’s forfeiture of an Appointments Clause challenge applies automatically to excuse forfeiture in future cases, or whether this Court’s ordinary forfeiture rules apply.”

In Sound View Innovations, LLC v. Hulu, LLC, Hulu also presented its own questions:

  1. “Whether litigants who fail to timely raise an Appointments Clause challenge before the Patent Trial and Appeal Board (Board) forfeit the argument on appeal.”
  2. “Whether the administrative patent judges (APJs) of the Board are inferior officers under the Appointments Clause, U.S. Const. art. II, § 2, cl. 2.”
  3. “Whether any Appointments Clause violation may be remedied without remand to the Board to conduct a new hearing before a new panel of APJs.”

In Arctic Cat Inc. v. Bombardier Recreational¸ Arctic Cat asked the en banc court to review the following two questions:

  1. “On ‘proof that the infringer was notified of the infringement and continued to infringe thereafter,’ patentees are entitled to damages for infringing acts ‘occurring after such notice.’ 35 U.S.C. §287(a). Can a defendant’s own willful infringement be proof of ‘notice’ and ‘proof that the infringer was notified of the infringement’?”
  2. “When a patentee or its licensee previously sold unmarked patented articles but stopped ‘making, offering for sale, or selling within the United States any patented article,’ does §287(a) limit damages for infringing acts occurring after those activities ended?”

In HIP, Inc. v. Hormel Foods Corporation¸ HIP asked the en banc court to review the following two questions:

  1. “Whether claims directed to an industrial-scale commercial process for manufacturing products (here food products) of a quality ‘resembling’ a traditional, handmade product are indefinite, and thus invalid, when the specification discloses, inter alia, qualitative criteria for assessing the scope of the claimed subject matter, but no quantitative standards or criteria exist for making the claimed comparison?”
  2. “Whether industrial-scale commercial processes for emulating a traditional, handmade product are unpatentable as indefinite under §112 (b) unless analytical tools exist to make the claimed comparison?”

New Responses

In Personal Audio, LLC v. CBS Corporation, CBS filed a response to the petition, which presented question related to the collateral estoppel effect of inter partes review, the Appointments Clause, and the ability of inter partes review to overturn prior jury verdicts of infringement and validity. In its respose, CBS argued the panel’s decision was correct and that rehearing en banc should be denied because “(1) the district court lacked jurisdiction to hear collateral attacks on a final written decision from the Patent Trial and Appeal Board, which was then affirmed by this Court; and (2) Personal Audio waived any challenges to the application of this Court’s prior opinion affirming the invalidity of Personal Audio’s asserted patent claims by failing to raise them in the district court.” Moreover, CBS contends that Personal Audio’s petition “fails to address either the panel’s reasoning or this Court’s precedent, and would therefore be a particularly unsuitable vehicle for reexamining such precedent.”

In addition to this brief responding to a pending petition, the Federal Circuit invited responses to the petition filed in Amgen Inc. v. Amneal Pharmaceuticals LLC, which presents questions relating to collateral estoppel and the doctrine of equivalents.

Denials

The Federal Circuit denied the petitions for rehearing en banc in the following three cases: