En Banc Activity

Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include a new petition filed in a case raising a question about what constitutes a final judgment for purposes of appellate jurisdiction, three new responses to petitions related to eligibility and design patent’s non-obviousness requirement, and two amicus briefs also related to design patent’s non-obviousness requirement. The court also denied two petitions raising questions about eligibility and infringement. Here are the details.

New Petition

Since our last update, a new petition was filed in one case.

In Vroom, Inc. v. Sidekick Technology, LLC, Vroom asked the en banc court to review the following question:

  • “Whether a district court’s judgment on the pleadings in favor of the plaintiffs that all of the defendant’s asserted patent claims are invalid is sufficiently final for this Court to exercise jurisdiction under 28 U.S.C. § 1295 where the plaintiffs’ complaint solely contained counts seeking declarations of noninfringement and the district court did not address the complaint’s prayers for relief on noninfringement.”

New Responses

Three new responses to petitions were filed.

In ChromaDex, Inc. v. Elysium Health, Inc., Elysium Health filed its response to ChromaDex’s petition for rehearing en banc. In its petition, ChromaDex argued the panel erred by overlooking “material facts with respect to both steps of the Alice/Mayo framework.” With regard to the first step, ChromaDex suggested the panel decision “did not fully consider the facts underlying that inquiry, and—without any expert testimony or other sufficient evidentiary basis—simply concluded that the claims effectively cover milk, and any differences between isolated [nicotinamide riboside] and natural [nicotinamide riboside] found in milk are insignificant.” With regard to the second step, ChromaDex maintained that the panel erroneously neglected to address it and the two-step framework “applies to claims directed to all patent ineligible concepts, including ‘natural phenomena.'”

In response, Elysium Health now argues that “the panel’s straightforward application of the Supreme Court’s Myriad decision does not warrant further review.” Elysium further contends “the panel properly refused to read unrecited limitations into the claims” and that “ChromaDex admitted that all claim elements other than ‘isolated’ are found in products of nature.” Notably, as highlighted below, the Federal Circuit denied the petition in this case.

In LKQ Corporation v. GM Global Technology Operations LLC (LKQ Corporation I), GM filed its response to LKQ Corporation’s petition for rehearing en banc. In its petition, LKQ Corporation argued the panel erred by reaching a decision that is “contrary to the statutory language of 35 U.S.C. §§ 103 and 171(b)” as well a number of Supreme Court decisions in the context of design patent law. LKQ explained that the Federal Circuit “and its predecessor have, for more than forty years, approached design patent obviousness with just the sort of rigid, mandatory formula that the Supreme Court rejected in KSR.” LKQ further argued the framework used by the panel for patent obviousness had “no statutory basis” and was “inconsistent with the way designers create new designs.”

In response, GM now explains that, “fundamentally, KSR does not address the unique obviousness issues present in design patents and does not overrule” the precedential “framework for design patent obviousness, expressly or otherwise.” GM further argues that, even if the precedential “framework could be applied in an overly rigid way, as LKQ suggests,” that “most certainly did not happen here.”

In LKQ Corporation v. GM Global Technology Operations LLC (LKQ Corporation II), LKQ filed a separate petition in another case involving the same parties but another patent. In the petition, LKQ asked the en banc court to review the same questions. GM filed a response in this case with arguments mirroring those in the other case.

New Amicus Briefs

Two amicus briefs have been filed in cases involving petitions for en banc rehearing.

The court received amicus briefs supporting panel and en banc rehearing in both of the cases just discussed, LKQ Corporation v. GM Global Technology Operations LLC (LKQ Corporation I) and LKQ Corporation v. GM Global Technology Operations LLC (LKQ Corporation II). Again, the petitions in these cases raised questions related to the applicable test for non-obviousness of designs under design patent law.

In an amicus brief filed by the Automotive Body Parts Association in LKQ Corporation I, the ABPA argues the primary reference requirement creates a problem with assessing patentability. The ABPA indicates “the current low threshold to patentability is contrary to the purpose of patent law, which is promote the progress of science and useful arts.” The ABPA further asserts the “solution to this larger problem is to eliminate the strict need for a primary reference, further develop the concept of what the prior art teaches a designer of ordinary skill, and in appropriate circumstances, to allow the prior art to provide an implicit teaching for obviousness.” An identical amicus brief was also filed by ABPA in LKQ Corporation II

New Denials

Since our last update, the Federal Circuit has denied the petitions in the following two cases: