En Banc Activity / Petitions
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Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include new responses to three petitions raising questions relating to the authority of the International Trade Commission, the statutory experimental use exception to infringement liability, and the use of comparable licenses to calculate damages awards. The court also received two new amicus briefs supporting a petition relating to attorney fees and invited a response to the same petition. Finally, the court denied three petitions raising issues related to design patent law’s nonobviousness requirement, the statutory experimental use exception to infringement liability, and personal jurisdiction. Here are the details.

New Responses

Since our last update, responses to petitions were filed in three cases.

Sonos, Inc. v. International Trade Commission

In this case, two responses were filed in response to a petition filed by Google, which asked the court to consider “[w]hether the International Trade Commission’s authority under 19 U.S.C. § 1337(a)(1)(B)(i) is limited to articles that infringe a patent as imported, or instead extends to cases where infringement can occur only when additional features are added or additional steps are performed after importation.”

In its response, the International Trade Commission argues the Federal Circuit “should deny Google’s petition for rehearing en banc for two reasons.” First, the ITC says, Google “fails to identify the requisite ‘special justification’ to overrule” the relevant Federal Circuit precedent. Second, the ITC continues, “this appeal is a poor vehicle to revisit” that precedent for two reasons: (1) “because the only remaining patent subject to an infringement finding implicating” the precedent “will expire in less than ten months”; and “because Google’s alternate interpretation” of the statute “eschews the traditional tools of statutory construction in favor of an atextual—and self-serving—gloss.”

Sonos also filed a response opposing the same petition. Sonos argues that a recent Supreme Court opinion “does not provide a basis to reconsider” the Federal Circuit’s precedent because that precedent “remains good law because of statutory stare decisis.” Sonos also argues that, “[e]ven without deference,” the relevant precedent adopted the statute’s “best reading.” Moreover, Sonos contends, “[t]his case is the wrong vehicle for reconsidering” the Federal Circuit’s precedent.

Edwards Lifesciences Corporation v. Meril Life Sciences Pvt. Ltd.

In this case, Meril filed a response opposing the petition, which raised a question regarding whether identifying any regulatory use immunizes all other uses under the Hatch-Waxman Act’s safe harbor clause eliminating patent infringement. In its response, Meril argues “[t]his case does not merit en banc review” because “Edwards acknowledges that the majority correctly applied longstanding Federal Circuit precedent to the undisputed facts.” According to Meril, moreover, Edwards is wrong to “urge[] this Court to unravel over 30 years of safe harbor precedent because that precedent allegedly excuses commercial ‘alternative uses’ and ignores the word ‘solely’ in Section 271(e)(1).” Meril argues “[n]either is correct.” As indicated below, the Federal Circuit denied rehearing in this case.

EcoFactor, Inc. v. Google LLC

In this case, EcoFactor filed a response opposing the petition, which asked whether the court erred in “failing to rigorously scrutinize a patentee’s reliance on supposedly comparable licenses” resulting in an “artificially inflated damages award that is divorced from market realities and devoid of connection to the patent’s incremental improvement to the art.”

In its response, EcoFactor argues this case is a “poor candidate” for en banc review because the “majority applied a highly deferential standard of review and found it was not an abuse of discretion to admit a damages opinion that ‘was sufficiently tied to the facts of the case and thus admissible.’” Furthermore, EcoFactor argues, the royalty rate “was based on unrebutted testimony from EcoFactor’s technical expert establishing that these licenses have ‘built-in apportionment’ because of the close comparability of the licensed products and features in the licenses and the comparable scope of the licensed patents and the [allegedly infringing] patent, which cover the ‘same interrelated smart thermostat technologies.’”

New Amicus Briefs

The court received two new amicus briefs supporting en banc rehearing in Dragon Intellectual Property, LLC v. DISH Network L.L.C., a case with a petition raising questions related to awards of attorneys’ fees.

In the first amicus brief, Unified Patents, LLC argues that decisions to award attorneys fees under 35 U.S.C. § 285 “too broadly and categorically insulates lawyers.” Furthermore, Unified Patents contends, “district courts may impose fee liability on those responsible for making the case ‘exceptional,’” including lawyers. More specifically, Unified Patents posits, “much of patent litigation is driven and controlled by lawyers and other non-party actors,” so Unified Patents calls for “this en banc Court [to] reconsider whether a bright-line rule excusing attorneys is required.”

In the second amicus brief, High Tech Inventors Alliance argues “the panel opinion establishes a rigid framework by creating two extra-statutory bright-line rules, unduly cabining the district court’s discretion.” The Alliance further argues that, “[b]ecause § 285 is intended to control the conduct of litigation, it allows an award to be made against counsel,” other mechanisms “are not substitutes for § 285,” and “[t]he panel’s decision immunizes attorneys who conduct litigation through underfunded shell companies.” The Alliance elaborates that “a review of § 285 awards entered in the last few years makes clear that many of them are based on conduct that is attributable to the litigating attorneys, not the client.”

New Invitation for Response

The Federal Circuit invited a response to the petition in Dragon Intellectual Property, LLC v. DISH Network L.L.C., which, as just discussed, raised questions related to awards of attorneys’ fees.

Denials

The Federal Circuit denied petitions for rehearing en banc in the following three cases: