En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include new petitions filed in six cases raising questions relating to design patent claim construction, damages, claim construction, eligibility, inequitable conduct, non-obviousness, joinder, and deference to Precedential Opinion Panels; three requests for responses to petitions raising questions related to venue, eligibility, non-obviousness, and claim construction; and the denial of six petitions raising issues including the Appointments Clause, claim construction, prosecution history estoppel, and damages. Here are the details.

New Petitions

New petitions were filed in six cases. Here are the questions presented in each case.

Hafco Foundry and Machine Co. v. GMS Mine Repair and Maintenance, Inc.

“Whether granting trial courts broad discretion to do design patent claim construction in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), is consistent with the Patent Act, Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and other precedents of this Court.”

Alfred E. Mann Foundation v. Cochlear Corporation

1. “Whether the ‘book of wisdom’ permits a party seeking damages for patent infringement to rely on an unforeseeable stock price six years after the hypothetical negotiation date to grossly inflate the royalty rate, and to ignore an actual stock valuation that existed at the time of the hypothetical negotiation, which would have resulted in a much lower royalty rate.”

2. “Whether apportionment can be achieved through a license agreement where a damages expert relies solely on out-of-court, conclusory conversations with employees who apparently said, without personal knowledge or any investigation, that the asserted patents provided all the value of the license agreement, and where the expert declined to consider that the agreement covered other patents, patent applications, and institutional ‘know-how’ that the plaintiffs’ own witnesses admitted were commercially valuable.”

Voip-Pal.com, Inc. v. Twitter, Inc.

1. “Is it erroneous for a court to resolve a claim construction dispute in the context of a Rule 12 eligibility challenge without claim construction?”

2. “Is it erroneous to place the burden on the non-moving party to propose terms for construction in opposing a Rule 12 motion to dismiss under 35 U.S.C. §101?”

3. “Is it erroneous to refute a non-moving party’s plausible factual allegations that the claims recite an inventive concept based merely on a facial review of the asserted claims at the pleadings stage?”

GS CleanTech Corp. v. Adkins Energy LLC

1. “When a district court’s summary judgment of invalidity conclusively establishes the ‘materiality’ prong of inequitable conduct, may this Court refuse to review the summary judgment de novo, and only review the inequitable conduct finding for ‘abuse of discretion?’”

2. “May this Court find that an appellant ‘waived’ reliance on controlling, dispositive authority because it cited that authority ‘only once’ below?”

3. “May this Court review factual findings of ‘materiality’ and ‘intent’ for abuse of discretion, in violation of Star Scientific?”

4. “May this Court affirm, in a single footnote, a summary judgment of obviousness, despite the presence of genuine factual disputes, and even though the district court’s decision lacked the required ‘cogent reasoning?’”

Illumina, Inc. v. Ariosa Diagnostics, Inc.

“Whether methods of separating one naturally occurring material from another using well-known laboratory techniques are patent eligible under step one of the Mayo/Alice analysis, without regard to step two, where (1) Supreme Court precedent establishes that isolated naturally occurring material is not itself patent eligible, and (2) this Court has consistently invalidated diagnostic claims reciting similar steps.”

Facebook, Inc. v. Windy City Innovations, LLC

1. “Whether the panel lacked jurisdiction under 35 U.S.C. § 314(d) to determine whether the U.S. Patent and Trademark Office (‘PTO’) properly instituted and ordered joinder of an inter partes review (“IPR”) proceeding.”

2. “Whether 35 U.S.C. § 315(c), which governs joinder in IPR proceedings, grants discretion to permit joinder if a petition raises new issues.”

3. “Whether 35 U.S.C. § 315(c) grants discretion to permit joinder of a petitioner who is already a party to the existing IPR proceeding.”

4. “Whether deference is owed to interpretations of IPR statutory provisions in decisions by the PTO’s Precedential Opinions Panel, which conducts formal adjudications and is convened to establish binding agency authority on major policy and procedural issues.”

New Requests for Responses

The Federal Circuit requested responses to petitions in three cases:


The Federal Circuited denied the petitions in the following six cases: