Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received a new petition raising issues related to patent eligibility. The court also received three new responses to petitions filed in two cases addressing (1) the Patent and Trademark Office’s ability to deny inter partes review based on pending litigation concerning related patents and (2) patent eligibility. Additionally, the court received an amicus brief in the case addressing the denial of inter partes review based on pending litigation. Lastly, the court denied two petitions for rehearing en banc in cases concerning claim construction and the replacement of a primary prior art reference after institution by the Patent Trial and Appeal Board. Here are the details.
En Banc Petitions
In Gabara v. Facebook, Inc., Gabara asked the en banc court to review the following questions:
- “Whether specific limitations recited in the claim language that describe the ‘claim advance’ over the prior art can be ignored in the court’s determination of patent eligibility.”
- “Whether a claim that presents no danger of preempting an ‘abstract idea,’ either generally or in a particular field of use or technological environment, can be found ineligible for patent protection under 35 U.S.C. § 101.”
- Whether “the panel decision is contract to the following decisions of the Supreme Court of the United States and/or precedents of this court: Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012); Alic Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016); Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019).”
In Intel Corp. v. VLSI Technology LLC, both Intervenor Andrew Hirshfeld and Appellee VLSI Technology LLC filed responses to Intel Corp.’s petition for rehearing en banc. In its petition, Intel asked the en banc court to review “[w]hether 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, or was adopted without observance of procedure required by law.” Hirshfeld argues in response that the Federal Circuit “has consistently held that [U.S. Patent and Trademark Office] decisions declining to institute inter partes review are not appealable” and that “the panel’s order leaves the parties’ rights unaffected and does not raise a question of exceptional importance.” In its response, VLSI makes a similar argument, stating that “[t]he statute provides that ‘[t]he determination by the Director whether to institute an inter partes review . . . shall be final and nonappealable.”
In Yu v. Apple Inc., Appellees Apple Inc., Samsung Electronics America, Inc., and Samsung Electronics Co., Ltd. filed their response to Yu’s petition for rehearing en banc. In his petition, Yu argued that the panel improperly determined that Yu’s patent claim was “ineligible for patent protection under 35 U.S.C. § 101.” In their response, Appellees argue that the panel decision did not raise issues of exception importance and that Yu failed to identify error in the panel’s decision.
New Amicus Brief
In Intel Corp. v. VLSI Technologies LLC, Jeremy C. Doerre, a patent attorney, filed an amicus brief in opposition to Appellant Intel Corp.’s petition for panel rehearing and rehearing en banc. In his brief, Doerre argues that Intel misinterprets 28 U.S.C. § 1295 in its petition, stating that “the petition’s desired interpretation of 28 U.S.C. § 1295 is contrary to an established [Court of Customs and Patent Appeals] interpretation presumptively adopted by Congress.”
The Federal Circuit denied petitions in the following cases: