En Banc Activity

Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include two new petitions raising questions concerning actual reduction to practice and obviousness. The court also denied another petition raising a question related to obviousness. Here are the details.

New Petitions

Since our last update, new petitions were filed in two cases.

In Medtronic, Inc. v. Teleflex Innovations S.A.R.L., Medtronic asked the en banc court to review the following questions:

  1. “Where an invention’s intended purpose is to provide an ‘improvement’ or ‘increase’ in benefits over prior designs, whether the patentee can demonstrate the invention works for that purpose without conducting any comparative testing.”
  2. “Whether a patentee can satisfy the requirement to show independent corroboration of reducing an invention to practice through only (i) vague declarations from persons with no independent or personal knowledge of testing of the relevant prototypes and who cannot place testing of relevant prototypes within a timeframe before the critical date, and (ii) documentary evidence that says nothing about testing.”

In Yita LLC v. MacNeil IP LLC, MacNeil IP asked the en banc court to review the following “points of fact or law” it views the Federal Circuit “overlooked or misapprehended”:

  1. “The Panel misapprehended Demaco and its progeny to negate Yita’s failure to rebut the presumption of nexus that Patent Owner-Appellee MacNeil IP LLC’s (‘MacNeil’) objective evidence was tied to the claim as a whole.”
  2. “The Panel misapprehended the PTAB’s FWD in two critical respects: First, the Panel misread the PTAB’s findings to erroneously attribute secondary considerations exclusively to a single claimed feature rather than to the claim as a whole. Second, even if the PTAB’s FWD rested on an error of law, substantial evidence nevertheless supported the PTAB’s conclusion that secondary considerations were attributable to the claim as a whole.”

New Denial

Since our last update, the Federal Circuit denied the petition in Roku, Inc. v. Universal Electronics, Inc., a patent case presenting a question related to obviousness.