En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received responses to petitions raising questions related to assignor estoppel and inter partes review estoppel. The court also denied a petition filed by a pro se party. Here are the details.

En Banc Petitions

New Responses

In Hologic, Inc. v. Minerva Surgical, Inc., Hologic filed its response to Minerva Surgical’s petition for rehearing en banc. In its petition, Minerva Surgical explained that “[t]his case, remanded from the Supreme Court, is the first opportunity for this Court to apply the Supreme Court’s significantly narrowed assignor estoppel doctrine.” According to Mingerva Surgical, however, “[t]he Panel’s decision fails to faithfully apply the Supreme Court’s standard and, if allowed to stand, will restore assignor estoppel to its prior overly broad status, unmoored from its rationale.” Minerva Surgical went on to argue “the Panel ignored clear and extensive descriptions of the invention’s narrow scope, in favor of the broadest arguable construction of a single never-issued claim,” which will result in lower courts “apply[ing] the doctrine broadly.” In response, Hologic argues that “Minerva’s challenge to the use of settled claim-construction principles” is “not properly before this Court,” explaining that “[b]oth sides agreed the task before the panel on remand was to determine whether Claim 1 is ‘materially broader’ than claim 31.” Hologic elaborates that, regardless, “the panel did not err in applying settled-claim construction principles to decide the scope of claim 31.”

In Click-to-Call Technologies, LP v. Ingenio, Inc., Click-to-Call Technologies filed its response to Ingenio’s petition for rehearing en banc. In its petition, Ingenio argued that “[t]he Panel’s decision explicitly contradicts 35 U.S.C. § 315(e)(2)” because while “[t]he statute applies only to those claims included in the final written decision . . . the Panel effectively rewrote the statute to apply to all claims raised in the petition.” According to Ingenio, “IPR estoppel only applies to claims that result in, and are addressed by, a final written decision.” In response, Click-to-Call argues that “[t]he facts are beyond dispute: Ingenio’s IPR included Claim 27, the IPR results in a final written decision, and the grounds at issue reasonably could have been raised during the IPR.” As a result, Click-to-Call argues, “IPR estoppel applies.”

New Denial

The Federal Circuit denied a petition for rehearing en banc filed by a pro se party in Golden v. United States.