En Banc Activity / Petitions

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 prosecution laches, invited a response to a petition raising questions related to patent eligibility, and received three amicus briefs supporting rehearing in two cases raising the same questions related to non-obviousness of designs under design patent law. Here are the details.

En Banc Petitions

New Responses

In Personalized Media Communications, LLC v. Apple Inc., Apple filed its response to Personalized Media Communications’ petition for rehearing en banc. In its petition, PMC argued that the panel erred by disregarding Hyatt v. Hirschfeld, which held that “’cooperation with the PTO’ ought to preclude a laches defense,” and “by putting the burden of disproving laches on PMC.” Personalized Media Communications elaborated by arguing that, after 2000, PMC’s conduct was not “an ‘egregious misuse of the statutory patent system’ that caused ‘unreasonable and unexplained delay,’” because “PMC and the PTO had entered a ‘consolidation agreement’ under which PCM consolidated its applications and grouped them into 56 categories by subject matter and priority date.”

In response, Apple argues that “PMC fails to substantiate its characterization of the panel opinion, and its disagreement with the result does not warrant rehearing.” Apple contends PMC “does not argue that the prosecution-laches doctrine should be overruled or changed” Rather, says Apple, “PMC simply disagrees with affirmed factual findings concerning duration and timing of PMC’s delays.” Apple maintains the “district court found PMC committed specific delay-causing acts well after Apple began developing FairPlay,” including “unreasonably delaying until 2003 to present claims to the PTO” and “causing further delay be reintroducing previously-rejected claims in 2011.”

New Invitation for Response

The Federal Circuit invited a response to the petition in ChromaDex, Inc. v. Elysium Health, Inc., which raised questions related to patent eligibility.

New Amicus Briefs

The court received three new amicus briefs supporting panel and en banc rehearing in LKQ Corporation v. GM Global Technology Operations LLC. The petition in this case raised questions related to the applicable test for non-obviousness of designs under design patent law.

TYC Brothers Industrial Co., an aftermarket automotive parts company, filed an amicus brief arguing that the restrictive “Rosen/Durling [] obviousness formula” should be eliminated in favor of the “more flexible . . . KSR” approach. TYC Brothers further contends that the current approach “[a]llows OEMS to eliminate aftermarket parts,” which “significantly increase[s] consumer costs.” Moreover, argues the group, “the elimination of readily available and affordable aftermarket repair parts could cause consumers to delay or forgo needed repairs, which clearly creates a safety risk for themselves as well as other drivers.”

In the second amicus brief, a group of intellectual property law professors argues that “Congress simultaneously made clear that all the same utility patent law requirements were to apply to designs, except where Congress had explicitly provided otherwise.” Subsequently, the group argues, “this court should conform its design patent doctrines to the [person having ordinary skill in the art] PHOSITA’s [or Designer of Ordinary Skill in the Art] (DOSA’s) perspective.” The group further contends that, under this approach, the court “should conform its design patent obviousness doctrine to KSR‘s treatment of the PHOSITA‘s creativity,” and depart from the Rosen approach.

In the final amicus brief, two trade organizations argued that, “[b]ecause of the overly rigid Rosen/Durling test, original equipment manufacturers (OEMs) are able to obtain and enforce design patents on insignificant part-variations year-over-year in a crowded field.” The group maintains that “[t]hese design patents, which would otherwise be deemed obvious to an ordinary designer, unfairly exclude competitive aftermarket repair parts from the marketplace and thereby substantially increase repair costs.” The group further contends rehearing is needed to reconcile the Rosen/Durling standard with Egyptian Goddess, Inc. v. Swisa, Inc. standard, which, it says, “mandates a holistic approach to designs.”

Here are the briefs:  

Identical amicus briefs were also filed in LKQ Corporation v. GM Global Technology Operations LLC, which raised the same questions.