Here is an update on recent en banc activity at the Federal Circuit. In patent cases, the court received four new petitions this week, addressing issues of claim construction, the replacement of a primary prior art reference after institution by the Patent Trial and Appeal Board, the evaluation of patent eligibility, and contractual patent ownership. The court also received a response to a petition that raised a question related to the power of the Patent Trial and Appeal Board to terminate an instituted proceeding on the eve of a merits-based final written decision. Here are the details.
En Banc Cases
No new activity to report.
En Banc Petitions
New petitions for rehearing en banc were filed in four cases.
In FG SRC, LLC v. Microsoft Corp., FC SRC asked the en banc court to review the following question:
- “Whether the panel decision affirming a construction that excludes a preferred embodiment should be allowed to stand.”
In another appeal involving the same parties, FG SRC, LLC v. Microsoft Corp., FC SRC asked the en banc court to review the following question:
- “Whether the panel decision allowing Petitioner to replace its primary asserted reference with what the Board found to be ‘a different document’ submitted in Petitioner’s Reply to Patent Owner’s Response after the institution decision, should be allowed to stand.”
In Free Stream Media Corp. v. Alphonso Inc., Free Stream Media asked the en banc court to review the following question:
- Whether “the panel decision is contrary to at least the following . . . precedents of this Court: Aatrix Software, Inc. v. Gree Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018), Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), and Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306 (Fed. Cir. 2019).”
In Bio-Rad Laboratories, Inc. v. International Trade Commission, Bio-Rad asked the en banc court to review the following question:
- Whether “the panel decision is contrary to the following decisions of the Supreme Court and precedents of this Court: Am. Tel. & Tel. Co. v. Integrated Network Corp., 972 F.2d 1321 (Fed. Cir. 1992); Vaupel Textilmaschinen KG v. Meccanica Euro Italia SPA, 944 F.2d 870 (Fed. Cir. 1991); Buckhorn Inc. v .ORBIS Corp., 547 F. App’x 967 (Fed. Cir. 2013); Vanderbilt Univ. v. ICOS Corp., 601 F.3d 1297 (Fed. Cir. 2010); In re VerHoef, 888 F.3d 1362 (Fed. Cir. 2018); Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998); United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933).”
In Sling TV, LLC v. Realtime Adaptive Streaming LLC, Realtime filed its response to Sling’s petition for en banc review. In its petition, Sling argued that the the Patent Trial and Appeal Board did not have the power to “terminate an instituted IPR proceeding on the eve of a merits-based final written decision to reassess institution when 35 U.S.C. § 314(d) [states] that a decision to institute is ‘final’.” In response, Realtime argues that there is no jurisdiction to hear Sling TV’s appeal in this case. Additionally, even ignoring the jurisdictional argument, Realtime argues that the Board has the power to “revisit or reconsider the decision to institute,” to “sua sponte reconsider the decision to institute,” and “allow a party to file a later request for reconsideration and to consider that request,” and that the Board properly exercised these powers in this case.