En Banc Activity

Here is an update on recent en banc activity at the Federal Circuit. Highlights include an en banc response brief filed in the only pending en banc case, which addresses the non-obviousness requirement for design patents, and two newly filed petitions for rehearing in two utility patent cases. Here are the details.

En Banc Case

Since our last update, in the only pending en banc case, LKQ Corporation v. GM Global Technology Operations LLC, a patent case addressing design patent obviousness, GM Global Technology Operations LLC filed its en banc response brief. In its brief, GM argues that “[t]he Rosen-Durling framework strikes a careful balance that has worked well for decades.” GM maintaines “[i]t provides flexibility required by KSR, while demanding that the problem of design patent obviousness be analyzed through an appropriate lens.” As a result, according to GM the Federal Circuit “should reaffirm the Rosen-Durling framework for design patent obviousness.”

New Petitions

Since our last update, two new petitions for rehearing were filed in two utility patent cases.

First, in Ikorongo Texas LLC v. Bumble Trading LLC, the petitioner presenting the following questions:

  • “Whether Industrial Chemicals requires the Court to consider the original claims in addition to the specification when conducting a 35 U.S.C. § 251 [reissue proceeding].”
  • “Whether the ‘clearly and unequivocally’ and/or ‘separate and apart’ test purportedly articulated in Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354 (Fed. Cir. 2014), is inconsistent with Section 251, Industrial Chemicals’ ‘same invention’ test, the presumption of validity under 35 U.S.C. §282, and the burden on the patent challenger to present ‘clear and convincing’ evidence of invalidity.”
  • “Whether aspects of an invention that are described in a patent specification in ‘a lengthy list of combinations and possibilities’ or as ‘part of a serial list of suggestions,’ without more, can never be claimed individually on reissue.”

Second, in Ameranth, Inc. v. Domino’s Pizza, the petitioner presenting the following questions:

  • “Does the ‘objectively baseless’ standard in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014), permit fee-shifting under 35 U.S.C. §285 for an entire case during which the PTAB repeatedly and consistently confirmed the continuing validity of all claims of Ameranth’s ’077 patent by denying multiple petitions for CBM review and explaining why the challenged claims of the ’077 patent satisfied §101 eligibility requirements?”
  • “Under this Court’s precedent implementing Octane Fitness, and this Court’s precedent instructing that the PTAB of the USPTO is entitled to respect and that its actions in support of validity are probative of objective reasonableness, is it legal error for a district court (1) to disregard PTAB’s repeated explanations of the challenged claims’ patent eligibility under §101 as actions probative of the objective reasonableness of continued patent enforcement; and (2) to denigrate PTAB’s repeated statements favoring the continuing validity and eligibility of the subject patents as a position that ‘no reasonable patent litigant would believe’?”