En Banc Activity

Here is an update on recent en banc activity at the Federal Circuit. Highlights include new petition for rehearing in two patent cases. One petition raise questions concerning government licenses to patents, while the other petition raises questions related to indefiniteness and claim construction. Here are the details.

New Petitions

Since our last update, two petitions for rehearing en banc have been filed in patent cases.

In University of South Florida Board of Trustees v. United States, the University of South Florida Board of Trustees requests the Federal Circuit review the following questions:

1.”May a Government License, 35 U.S.C. § 202(c)(4), in an invention ever be granted where no government funds of any type were ever provided in the making of the invention?”
2. “Can an invention first reduced to practice months prior to any federal funding agreement be treated as a ‘subject invention’ as defined in 35 U.S.C. § 201(e) for the purposes of awarding the Government a license pursuant to 35 U.S.C. § 202(c)(4)?”

In Mantissa Corporation v. First Financial Corporation, Mantissa Corporation asks the Federal Circuit to review the following questions:

  1. “In analyzing whether a claim of a patent is indefinite, should courts rely on or prioritize (a) the claim language and embodiments in the patent that correspond to the claim language over (b) embodiments in the patent that do not correspond to the claim language?”
  2. “In conducting claim construction, should courts choose a construction of a claim term that is based on corresponding embodiments in the specification over a determination of indefiniteness that is based on non-corresponding embodiments in the specification, particularly in view of construction requiring a burden of proof of a preponderance of evidence and indefiniteness requiring clear and convincing evidence?”