Here is an update on recent en banc activity in patent cases at the Federal Circuit. Highlights include two new petitions raising questions concerning public disclosures under 35 U.S.C. § 102 and issue preclusion. The court also denied two petitions. One raised a question related to the relationship of claim construction and unpatentability arguments in inter partes review proceedings. The other raised questions related to means-plus-function claims and patent eligibility. Here are the details.
New Petitions
New petitions were filed in two cases.
In Sanho Corp. v. Kaijet Technology International Ltd., Sanho asked the court to review the following question:
- “Under what circumstances does an inventor’s disclosure of subject matter to others, which is made without any confidentiality expectations, constitute a ‘public[] disclos[ure]’ under 35 U.S.C. § 102(b)(1)(B) and (2)(B)?”
In Koss Corp. v. Vidal, Koss asked the en banc court to review the following question:
- “Whether issue preclusion applies when a party, after the district court dismissed its claims with leave to replead, amends a complaint to add new claims based on newly pleaded facts, and the new facts and new claims have never been addressed or adjudicated by any tribunal?”
Denials
The court also recently denied petitions for rehearing en banc in the following two cases.
In Apple Inc. v. Omni MedSci, Inc., Omni MedSci raised the following question:
- “When the arguments made and evidence presented in an Inter Partes Review Petition rely on the plain and ordinary meaning of claim terms and fail to account for or address well-established presumptions, such as the presumption that different claim terms have different meanings, which establish the plain and ordinary meaning based on a foreseeable application of the presumptions, does Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374 (Fed. Cir. 2023) strip the Patent Trial and Appeals Board of its discretion to reject as untimely Petitioner’s new unpatentability arguments, which address the foreseeable claim construction for the first time in the Reply brief, or does that discretion, as recognized in, inter alia, Microsoft Corp. v. IPA Techs. Inc., No. 2021-1412, 2022 WL 989403 (Fed. Cir. Apr. 1, 2022) and Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765 (Fed. Cir. 2018) remain intact given the Petitioner’s obligation to meet the statutory particularity requirement of 35 U.S.C. § 312(a)(3)?”
In Impact Engine, Inc. v. Google LLC, Impact Engine raised the following questions:
- “Whether means-plus-function claims subject to § 112(f) are patent-eligible under § 101 as a matter of law.”
- “Whether means-plus-function claims must be properly construed before assessing their eligibility under § 101.”