En Banc Activity / Petitions
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Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received two new petitions for rehearing en banc raising questions related to inter partes review estoppel and notice required to collect damages for infringement. The court also received three new responses to petitions that raised questions related to the Federal Circuit’s reversal of a judgment in an inter partes review proceeding based on a teaching away finding, the denial of a petition for a writ of mandamus seeking to order transfer, and the assignment of patents. The court received four amicus briefs in cases raising questions related to the Federal Circuit’s reversal of a judgment in an inter partes review proceeding based on a teaching away finding, patent eligibility, and the assignment of patents. Finally, the court denied two petitions for rehearing en banc raising questions related to the weight given to expert witness testimony during claim construction and the non-obviousness requirement. Here are the details.

En Banc Petitions

New Petitions

In In re DMF, Inc., DMF asked the en banc court to review the following question:

  • “Whether inter partes review (IPR) estoppel under 35 U.S.C. §315(e)(2) bars an IPR petitioner from using a physical product to relitigate in district court the same invalidity issue that the IPR petitioner litigated in an IPR based on a printed publication’s description of that product?”

In Lubby Holdings LLC v. Chung, Lubby Holdings asked the en banc court to review the following questions:

  1. Whether “the panel err[ed] in failing to recognize that Lubby provided Chung a qualified charge of infringement at the time they ended their collaboration on the products claimed in the ‘284 patent, which is sufficient to provide actual notice of infringement to Chung under 35 U.S.C. § 287(a), and in erroneously conflating the standard for notice of infringement under Section 287 with an unqualified charge of infringement sufficient to confer declaratory judgment jurisdiction over Lubby, contrary to Minks v. Polaris and SRI v. Advanced Technology?”
  2. Whether “the alleged infringer’s ‘burden of production’ under Arctic Cat require it to specifically allege which of the patentee’s products it believes practice the asserted patent and were sold in the United States unmarked and make a showing at trial with admissible evidence supporting the allegation?“

New Responses

In In re Apple Inc., Respondent Koss Corporation filed a response to Apple’s petition for rehearing en banc. In its petition, Apple argued the panel “incorrectly believed the district court found that Apple’s employee witnesses in the proposed transferee forum are unlikely to be called at trial,” “incorrectly believed that the district court found connections between the Western District of Texas and the events that gave rise to this suit, when the district court made no such finding,” and “overlooked the status of other co-pending lawsuits.” In its response, Koss argues that “Apple failed to demonstrate that the extraordinary relief of mandamus was warranted with regard to Judge Albright’s well-reasoned opinion that Apple’s preferred venue was not ‘clearly more convenient’ than the Western District of Texas.”

In Chemours Co. v. Daikin Industries, Ltd., Appellant Chemours Co. filed a response to Daikin Industries’ petition for rehearing en banc. In its petition, Daikin Industries argued “the majority’s reclamation of an expressly unpresented teaching-away theory violates the rules of administrative procedure and this Court’s precedents.” In response, Chemours argues that “nothing in Daikin’s petition raises an issue that merits rehearing.”

In Omni MedSci, Inc. v. Apple Inc., Omni MedSci filed a response to Apple’s petition for rehearing en banc. In its petition, Apple argued that “when future-tense language declares who owns a future invention . . . and the agreement requires no future act by the inventor to transfer title after the invention is made, title is automatically transferred by operation of law.” In its response, Omni MedSci argues that “the panel correctly appl[ied] the law” and “the outcome does not change even under Petitioner’s . . . analysis.”

New Amicus Briefs

The court received an amicus brief in In re Apple Inc. from ACT | The App Association and Computer & Communications Industry Association in support of en banc rehearing. In its brief, ACT | The App Association argues “Judge Albright continues to ignore relevant precedent and commit clear errors of analysis” against transfer that “results in an inconvenient court, where defendants face litigation unrelated to their presence in the forum.”

The court also received an amicus brief in Universal Secure Registry LLC v. Apple Inc. from former Federal Circuit Chief Judge Paul R. Michel in support of rehearing en banc. In the brief, Michel argues that the en banc court should “use the current case to revisit the overly broad application of the Mayo/Alice test and the continued overexpansion of the test,” which has “led to a conflation of the requirements of patentability and patent eligibility.”

Finally, the court received two amicus briefs in Omni MedSci, Inc. v. Apple Inc., a case related to the assignment of patents. Both amicus briefs support rehearing. Notably, one of the amicus briefs was filed by a coalition of research Universities, three nonprofit organizations, and an industry organization. They argued in their brief that “the decision is inconsistent with the interpretation of nearly identical language by the Supreme Court in Stanford v. Roche.” Here is a list with links to the amicus briefs.

New Denials

The Federal Circuit denied the petition for rehearing en banc in two cases: