Here is an update on recent en banc activity in patent cases at the Federal Circuit. It has been a quiet week. A new petition was filed in a case raising questions related to inter partes review and remedies, and a response was filed to a patent petition raising questions related to eligible subject matter and deference to the Patent Trial and Appeal Board. See the details of these cases below.
In Infineum USA L.P. v. Chevron Oronite Co., Infineum asked the en banc court to review the following two questions:
- “Whether the inter partes review statute permits the petitioner to present a required element of invalidity, and specifically a reason to select and modify the prior art, for the first time on reply.”
- “Whether the remedy or disposition ordered by the Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) panel decision was final and effective on the date of that decision prior to the mandate being issued.”
In GREE, Inc. v. Supercell Oy, Supercell Oy filed its response to GREE’s petition for en banc review. In the petition, GREE argued that the panel erred in its decision for two reasons: (1) “the decision contravene[d] prior panel decisions such as Berkheimer and Aatrix by deciding, without applying the proper standard of review or burden of proof, the factual questions under Alice step two contrary to the Board’s findings of eligibility of claims 2-4 and 9,” and (2) “the ’594 Patent identifie[d] the problem that it solves as retaining a player’s interest in a video game.”
In response, Supercell Oy argues that the panel properly decided that the ’594 Patent was directed to an abstract idea because “the patent simply claims the idea of using templates on conventional computers,” and the panel’s opinion “create[d] no conflict with precedent.”