Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received two new petitions raising questions related to the weight given to expert witness testimony during claim construction, the evidentiary basis of an invalidity finding, and the proper standard of review of agency determinations pursuant to Securities Exchange Commission v. Chenery Corp., 332 U.S. 194 (1947). The court also received a response to a petition for rehearing en banc concerning deference to the Patent Trial and Appeal Board. The court also denied a petition for rehearing en banc in a case raising questions relating to patent eligibility. Here are the details.
En Banc Petitions
In Seabed Geosolutions (US) Inc. v. Magseis FF LLC, Magseis FF LLC asked the en banc court to review the following question:
- “Whether this Court may ignore the corroborated expert testimony of both sides’ expert witnesses with respect to the particular meaning of a term of art in a particular field where the specification is silent with respect to said term.”
In Ingevity Corp. v. International Trade Commission, Ingevity Corp. asked the en banc court to review the following questions:
- Whether “the panel’s ruling that the alleged prior inventors had to appreciate the limitations of the claimed invention to establish invalidity under 35 U.S.C. § 102(g)(2) required vacatur of the ITC decision because the ALJ made no finding that they had the requisite appreciation and the trial evidence on this point was conflicting.”
- Whether “the panel decision is contrary to [Securities Exchange Commission v. Chenery Corp., 332 U.S. 194 (1947)] and this Court’s precedents applying the Chenery doctrine—including in ITC cases. See, e.g., InterDigital Commc’ns, LLC v. ITC, 690 F.3d 1318, 1329 (Fed. Cir. 2012).”
In Intex Recreation Corp. v. Team Worldwide Corp., Appellant Intex Recreation Corp. filed a response to Team Worldwide Corp.’s petition for rehearing en banc. In its petition, Team Worldwide Corp. argued that the panel improperly “afforded the [Patent Trial and Appeal Board] no deference and should have, but did not, review the PTAB decision to determine if the Board’s decision was ‘arbitrary and capricious’ or ‘unsupported by substantial evidence’ in accordance with Section 706 of the Administrative Procedure Act pursuant to the Supreme Court’s decision in Dickinson v. Zurko, 527 U.S. 150 (1999).” In its response, Intex Recreation Corp. argued that the panel decision applied settled law to specific facts using the correct legal standard.
The Federal Circuit denied the petition for rehearing en banc in Gabara v. Facebook Inc., which raised questions relating to patent eligibility.