En Banc Activity / Petitions
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Here is an update on recent en banc activity at the Federal Circuit. Highlights include a new opinion in an en banc case addressing design patent law’s nonobviousness requirement; seven new petitions raising questions related to nonobviousness, claim construction, infringement, appellate review, and damages; and three denials of petitions raising questions related to definiteness, claim construction, infringement, licenses, and reduction to practice. Here are the details.

En Banc Case

Earlier this week, the Federal Circuit issued its en banc opinion in LKQ Corporation v. GM Global Technology Operations LLC, a design patent case. In the opinion, the court overruled the long-standing Rosen-Durling test used to assess the nonobviousness of design patents. The court decided to apply “the same conditions for patentability that apply to utility patents.” We plan to post an opinion summary. 

New Petitions

New petitions were filed in seven cases.

In GUI Global Products, Ltd. v. Samsung Electronics Co., Gui Global Products asked the en banc court to review the following question:

  • Whether “[t]he Panel Erred in Finding Substantial Evidence that Kim ‘Teaches’ the ‘Plays . . . a Remote Device’ Element Because the Panel Conflated a Claim Element Being Taught With a Claim Element Being Obvious.”
  • Whether “[t]he Panel’s Decision Conflicts with this Court’s Decisions in Net MoneyIN, Kennametal, Chamberlain Group, and BlephEx.”

In GUI Global Products, Ltd. v. Apple Inc., Gui Global Products asked the en banc court to review the following question:

  • Whether, “if the Court grants Panel rehearing or rehearing in banc for Appeal Nos. 2022-2158 and 2022-2159, then [should] the Court also grant Panel rehearing or rehearing en banc for these two companion appeals, which were dismissed for mootness.”

In Alexsam, Inc. v. Cigna Corporation, Alexsam asked the en banc court to review the following questions:

  1. Whether “the Panel overlooked facts and misapprehended the law when it found that Appellant waived its right to seek review of a stipulated claim construction.”
  2. Whether “the Panel overlooked Appellant’s argument regarding the meaning of the derivative term, ‘for use in the card system.’”
  3. Whether “the Panel overlooked the totality of the evidence on infringement proffered by Appellant, which included qualified expert opinion and undisputed facts not examined by the Panel.”

In Alexsam, Inc. v. Simon Property Group, L.P., Alexsam asked the en banc court to review the following questions:

  1. Whether “the Panel should have resolved the derivative claim construction, which does not align with the intrinsic evidence.”
  2. Whether “the Panel incorrectly found appellant to have waived its understanding of ‘unmodified.’”
  3. Whether “the Panel ignored key evidence of infringement and misstated appellant’s expert’s full opinion.”

In Salix Pharmaceuticals, Ltd. v. Norwich Pharmaceuticals Inc., Salix Pharmaceuticals asked the en banc court to review the following question:

  • “Whether a panel of this Court may affirm findings of a district court based on an analysis the district court never conducted and evidence the district court never credited.”

Then, in the same case, Norwich Pharmaceuticals asked the en banc court to review the following question:

  • “Whether 35 U.S.C. § 271(e)(4)(A) requires district courts to tie the effective date of FDA approval to the indication for which the infringing ANDA seeks approval when that indication alone is the source of the infringement of a method-of-use patent.”

In Luv N’ Care, Ltd. v. Laurain, Eazy-PZ asked the en banc court to review the following question:

  • Whether the Panel’s decision was “contrary to the following decisions of the Supreme Court of the United States or the precedents of this court as it permits the actions of a non-party to form a basis for dismissal for unclean hands.”

In Brumfield v. IBG LLC, Brumfield asked the en banc court to review the following questions:

  1. “Whether the Federal Circuit, after holding, for the first time, that the Supreme Court’s WesternGeco decision permits damages based on foreign conduct in cases involving domestic infringement under 35 U.S.C. § 271(a), can decide sua sponte issues of causation that were never decided by the district court or raised by the parties on appeal, and refuse to remand the case for further briefing and development in light of the new legal standard.”
  2. “Whether the Federal Circuit may, contrary to established Seventh Circuit law, impose a diligence requirement under Rule 60(b)(3) when a party moves for a new trial based on the opposing party’s fraud or misrepresentations.”
  3. “Whether one panel of the Federal Circuit may disregard the findings of a previous panel concerning the same underlying issue (i.e., whether the patents are technological and recite a specific improvement to computer operation) and involving the same parties and the same patent claims.”

Denials

The Federal Circuit also recently denied petitions for rehearing en banc in three cases.

Mantissa Corporation v. First Financial Corporation

The petition in this case asked 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?”

Freshub, Inc. v. Amazon Inc.

The petition in this case asked the federal circuit to review the following question:

  • “Whether the Panel’s decision creates new law that contravenes this Court’s longstanding precedent that a system that only sometimes practices a claim is nevertheless infringing, by requiring a ‘narrowing’ claim construction before an infringement finding may be made.”

University of South Florida Board of Trustees v. United States

The petition in this case asked the Federal Circuit to 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)?”