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 assignments of patents and the non-obviousness requirement. The court also invited responses to petitions in two cases concerning the standard of review of Patent Trial and Appeal Board decisions and assignments of patents. Lastly, the court denied a petition for rehearing en banc in a case raising questions related to Appointments Clause challenges with respect to Administrative Patent Judges of the Patent Trial and Appeal Board. Here are the details.
En Banc Petitions
In Omni MedSci, Inc. v. Apple Inc., Apple Inc. asked the en banc court to review the following question:
- “Whether an assignment agreement must use ‘present tense words of execution’ and not ‘passive verbs in indefinite or future tense’ to automatically transfer title to a future invention, as the majority held, or whether it can—regardless of the form of language used—transfer title by specifying who owns the future inventions and requiring ‘no further act . . . once an invention comes into being,’ as precedent holds.”
In Cephalon, Inc. v. Slayback Pharma LLC, Apotex Inc. asked the en banc court to review the following question:
- “Whether a judgment of non-obviousness based on a purported lack of motivation to make a minor variation to the prior art and a misapplication of teach-away to overcome express teachings and suggestions in the art to do what is claimed in the absence of any unexpected results or other secondary indicia of nonobviousness violates KSR and 35 U.S.C. §103, and whether Fed. Cir. R. 36, is an appropriate vehicle for affirming such a judgment without an opinion.”
New Invitations to Respond
The Federal Circuit invited responses to petitions in the following cases:
- Chemours Co. v. Daikin Industries, Ltd. (standard of review of Patent Trial and Appeal Board decisions)
- Omni MedSci, Inc. v. Apple Inc. (assignments)
The Federal Circuit denied the petition for rehearing en banc in Think Products, Inc. v. ACCO Brands Corp., which raised questions related to Appointments Clause challenges with respect to Administrative Patent Judges of the Patent Trial and Appeal Board.