Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include a new petition raising a question related to the Federal Circuit’s review of the grant of a motion for attorneys’ fees. Additionally, the court invited a response to a petition raising questions regarding the written description requirement and obvious-type double patenting. Finally, the court denied a petition presenting a question regarding the effect of a remand overturning a holding of the Patent Trial and Appeal Board on which a patent owner relied in drafting amended claims. Here are the details.
New Petition
Since our last update, there is one new petition. In Realtime Adaptive Streaming LLC v. Sling TV, L.L.C., Sling TV asked the court to consider whether the panel’s opinion “fails to apply either Highmark’s abuse of discretion standard of review or Octane Fitness’s totality-of-the-circumstances rubric.”
New Invitation to Respond
Since our last update, the court has invited a response from Allergan USA, Inc. in Allergan USA, Inc. v. MSN Laboratories Private Ltd. The petition filed by MSN Laboratories raises questions regarding the written description requirement and obvious-type double patenting.
New Denial
Since our last update, the Federal Circuit denied the petition in ZyXEL Communications Corp. v. UNM Rainforest Innovations. UNM Rainforest Innovations raised the following issue:
- “This Court has never considered the effect of a remand overturning a holding on which Patent Owner relied in drafting its amended claims. Here, the Panel Opinion overturned an aspect of the Final Written Decision which effectively overturned the Board’s Institution Decision on which Patent Owner relied in drafting its amended claims, as well as in the Board’s preliminary guidance on which Patent Owner relied in choosing not to further amend its claims. This is an issue of first impression. Just as this Court encouraged the PTAB to remedy its relevant actions below in light of the Panel Opinion regarding claim 8, it should similarly allow Patent Owner to remedy its relevant actions below in light of the same.”