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 eligibility, claim construction, novelty, and non-obviousness; an amicus brief in a case raising a question related to eligibility; and the denial of two petitions raising questions related to eligibility, the Appointments Clause, and non-obviousness. Here are the details.

New Petitions

New petitions were filed in five cases.

Four petitions were filed in cases between the same parties. All of the cases share the same name: Customedia Technologies, LLC v. DISH Network Corporation. In the first two cases, Customedia asked the en banc court to review the following question:

  • Whether “[t]he panel decision conflicts with the Supreme Court’s decision in Alice, and this Court’s decisions in Ancora, SRI, KPN, and Uniloc.”

In the third case, Customedia presented the following four questions:

  1. “Whether the Board erred in interpreting the claims to not require a receiver configured to exclusively store advertising data and only advertising data in a reserved storage section.”
  2. “Whether the Board erred in finding Hite anticipated Claims 1-3, 6, 7, 19, 23, 24, and 27 under 35 U.S.C. § 102.”
  3. “Whether the Board erred in finding Claim 4 obvious in view of Hite under 35 U.S.C. § 103.”
  4. “Whether the Board erred in finding Claim 26 obvious in view of Hite and Baji under 35 U.S.C. § 103.”

In the fourth case, Customedia presented the following three questions:

  1. “Whether the Board erred in interpreting the claims to not require a storage section that exclusively stores advertising data.”
  2. “Whether the Board erred in finding Hite anticipated Claims 1-3, 5-8, and 23.”
  3. “Whether the Board erred in finding Claims 1-3, 5-8, and 23 obvious in view of Hite and Picco under 35 U.S.C. § 103.”

In Lone Star Silicon Innovations v. Iancu, Lone Star Silicon Innovations presented the following three questions:

  1. “[W]hether the Board may issue a final written decision in inter partes review proceedings, which invalidates duly issued patent claims based on a ground not asserted in the corresponding petition.”
  2. “[W]hether the Board did so in the instant case by invalidating claims 2 and 7 based on a different combination of teachings and prior art references than those asserted in the petition, upon recognizing that the petition’s alleged combination failed to disclose all elements of the claims.”
  3. “[W]hether this Court has jurisdiction to review and remedy the Board’s unauthorized final decision invalidating those claims based on a ground not asserted in the petition.”

New Amicus Briefs

A new amicus brief was filed in Voip-Pal.com, Inc. v. Twitter, Inc. in support of the petitioner on the issue of patent eligibility:

Denials

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