En Banc Activity / Petitions
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Here is an update on recent en banc activity in patent cases at the Federal Circuit. Highlights include new petitions in two cases raising a question about whether an undisputed feature of prior art may serve as the basis for patent eligibility and questions about enablement of prior art. The court also denied a petition for en banc rehearing raising questions about attorneys’ fees. Here are the details.

New Petitions

Since our last update, there are two new petitions.

In Contour IP Holding LLC v. GoPro, Inc., GoPro asked the court to review the following question:

  • “Whether a claim’s recitation of an undisputed feature of the prior art can be a basis for patent eligibility under 35 U.S.C. § 101.”

In Converter Manufacturing, LLC v. Tekni-Plex, Inc., Converter raised the following questions:

  1. “Whether by summarily affirming the decision of the United States Patent and Trademark Office (‘USPTO’) under Fed. R. App. P. 36, this Court violated the Supreme Court’s mandate in Loper Bright Enterprises v. Raimondo, 144 S. Ct. 2244, 2273 (2024) by failing to independently decide whether the USPTO properly applied the law requiring prior art to be enabled for it to anticipate a claim or render a claim obvious under 35 U.S.C. §§ 102 and 103 based on the record evidence below.”
  2. “Whether proof that the claimed invention was considered by skilled artisans ‘impossible’ to achieve before the priority date overcomes the presumption of enablement afforded to any prior art and combinations thereof such that the proponent of that prior art must prove that skilled artisans could have actually made the claimed invention using the teachings of one or more of the prior art combinations before the priority date.”

Denial

Since our last update, the Federal Circuit denied the petition for en banc rehearing in Dragon Intellectual Property, LLC v. DISH Network L.L.C., which raised the following questions:

  1. “Whether the panel legally erred in determining that, as a matter of law, district courts have no discretion to hold a party’s attorney jointly and severally liable for fees under 35 U.S.C. § 285.”
  2. “Whether the panel legally erred in determining that, as a matter of law, fees incurred by an accused infringer who prevailed in an inter partes review (‘IPR’) when the underlying litigation was stayed are never recoverable.”