Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received a response to a petition raising questions related to the scope of usable prior art in inter partes review. The court also denied a recent motion for limited remand in a case raising questions related to the Appointments Clause. Finally, the court denied a petition raising a question related to transfers of cases. Notably, all three of these cases involved Apple Inc. Here are the details.
En Banc Petitions
In Qualcomm Inc. v. Apple Inc., Intervenor Katherine Vidal, the Director of the U.S. Patent and Trademark Ofice, filed a response to Apple’s petition for rehearing en banc. In its petition, Apple asked the court to review “[w]hether applicant admitted prior art found within the specification of a challenged patent may serve as the basis for an inter partes review proceeding under 35 U.S.C. § 311(b), which provides that a petitioner may request inter partes review ‘on the basis of prior art consisting of patents or printed publications?’” Vidal argues in response that the Federal Circuit should “deny Apple’s [rehearing] petition” as it “neither involves precedent-setting questions of exceptional importance nor threatens the uniformity of this Court’s decisions.”
Order Denying Motion for Limited Remand
In Corephotonics, Ltd. v. Apple Inc., the United States recently motioned for a limited remand for the purpose of allowing for review by the Director of the U.S. Patent and Trademark Office. Corephotonics opposed the motion for limited remand, while Apple did not oppose the motion. Most recently, the Federal Circuit released a nonprecedential order denying the motion for limited remand as moot.
The Federal Circuit denied the petition for rehearing en banc in In re Apple Inc., a case that raised a question related to transfers of cases.