En Banc Activity

Here is an update on recent en banc activity in patent cases at the Federal Circuit. Highlights include new petitions raising questions related to inter partes review, eligible subject matter, and enablement; a new response to a petition addressing intervention; two new invitations to respond to petitions raising questions related to transfer of venue and inducement of infringement in the context of Hatch-Waxman; and the denial of a petition related to anticipation. Here are the details.

New Petitions

In Apple Inc. v. Maxell, Ltd., Apple asked the en banc court to review the following question:

  • “Whether the Court has jurisdiction to review a decision of the U.S. Patent and Trademark Office denying a petition for inter partes review where the appeal argues that the decision was based on an agency rule that exceeds the Office’s statutory authority, is arbitrary and capricious, and was adopted without observance of required procedures.”

In VoIP-Pal.com, Inc. v. Apple, Inc., VoIP-Pal asked the en banc court to review the following three questions:

  1. “Did the district court err by applying 35 U.S.C. §112 considerations in finding the asserted claims ineligible under 35 U.S.C. §101?”
  2. “Did the district court err by finding the asserted claims ineligible under the how test despite accepting as true that the alleged inventive concepts constitute unconventional improvements over the prior art?”
  3. “Did the district court err by failing to give VoIP-Pal the opportunity to amend its [First Amended Complaint] to address the §112 considerations raised by the district court’s ineligibility analysis?”

New Response

In Qualcomm Inc. v. Intel Corp., Qualcomm filed its response to Apple’s petition for en banc review.

In its petition, Apple asked the court to consider whether “a real party in interest or privy of a petitioner in an inter partes review [must] participate in the IPR as a precondition to intervening in an appeal from an IPR proceeding.” Apple argues that the “imposition of a rigid requirement that a real party in interest or privy be a party to the underlying IPR in order to protect its rights on appeal are inconsistent with the liberal policy governing intervention under the Federal Rules,” and that the decisions made by the court threaten to “significantly undermine the efficiency of inter partes review proceedings.”

In response, Qualcomm now argues that “Apple’s attempt to manufacture sweeping legal questions detached from the present circumstances cannot justify en banc review or panel rehearing.” Because “Apple’s sole challenge is to a discretionary, non-precedential order,” Qualcomm argues that “the petition presents no viable issue for the en banc [c]ourt to resolve.”

New Invitations for Responses

The Federal Circuit invited response to petitions in the following cases:


The Federal Circuit denied a petition in the following case: