En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received three new petitions raising questions related to estoppel arising from inter partes review, the legal standard for overruling prior precedential decisions, claim construction, and the standard for the Patent Trial and Appeal Board to evaluate substitute claims and a motion to amend claims. The court also invited responses to four petitions raising questions related to the presumption of nexus in a non-obviousness analysis; the process and standard for determining indefiniteness; and choice of law, forum selection clauses, and injunctive relief. Finally, the court denied a petition raising questions related to the assignment of patents and standing. Here are the details.

En Banc Petitions

New Petitions

In The California Institute of Technology v. Broadcom Ltd., Broadcom asked the en banc court to review the following questions:

  1. “Whether 35 U.S.C. §315(e)’s IPR estoppel provision applies only to instituted grounds as this Court held in Shaw, and whether that interpretation remains correct after SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).”
  2. “Whether a panel of this Court can sua sponte overrule a prior precedential decision and, if so, what the applicable legal standard is.”
  3. “Whether a court must apply its claim construction, rather than a ‘plain understanding’ of the claim language, when evaluating whether substantial evidence supports infringement.”

In Zaxcom, Inc. v. Lectrosonics, Inc., Lectrosonics asked the en banc court to review the following question:

  • “Whether the Board may make its own arguments based on the entirety of the record in order to find substitute claims patentable and grant a motion to amend, even when the material was not presented in the motion to amend and the opposing party was not given a chance to respond.”

Lectrosonics also filed an identical petition for a separate case. This petition can be found here.

New Invitations for Responses

The Federal Circuit invited responses to petitions in the following cases:

New Denial

The Federal Circuit denied the petition for rehearing en banc in Filler v. United States, a case that raised questions related to assignments of patents and standing.