En Banc Activity / Featured / Petitions
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Here is an update on recent en banc activity at the Federal Circuit in patent cases. As for granted petitions, a reply brief was filed in a pending en banc case concerning a district court’s responsibility to scrutinize a patentee’s reliance on supposedly comparable licenses. As for pending petitions, a pro se litigant filed a petition, a response was filed to a petition presenting a question related to waiver of alternative grounds for affirmance, and the court denied a petition presenting a question regarding vicarious liability for direct infringement. Here are the details.

En Banc Cases

Reply Brief

Since our last update, a reply brief has been filed in one of the two pending en banc cases, EcoFactor, Inc. v. Google LLC. As a reminder, the court granted rehearing in this case to consider a district court’s responsibility to scrutinize a patentee’s reliance on supposedly comparable licenses.

In its reply brief, Google argues that EcoFactor’s position permits “district courts to abdicate their gatekeeping responsibility to ensure that the jury does not hear unreliable expert testimony.” First, Google argues, EcoFactor’s understandings of Rule 702 “boil down to the assertion that the admissibility of [the expert’s] testimony was a question of fact to be evaluated by the jury.” But, Google contends, that “would deprive Rule 702 of any force.” Google asserts, in particular, that “EcoFactor was unable to present any factual evidence of the critical premise it sought to establish,” the premise that “EcoFactor’s licensees applied” a particular royalty rate “to compute their lump-sum payments.” As a result, Google maintains, EcoFactor had its expert simply “testify that, as an expert, he had concluded that the licensees had applied the[] rate in the licenses.” But, Google says, the expert’s “opinion was based only on his client’s unsupported and unverifiable beliefs about what other parties agreed to and therefore lacked a reliable factual basis and any reliable methodology.” Google contends EcoFactor failed to meet its “burden of establishing that [his] opinion satisfied Rule 702’s reliability prerequisites.” Google further argues, because the district court “deferr[ed] those reliability questions to the jury, the court committed legal error.”

Petitions

New Petition

In Heidary v. Amazon.com, Inc., a pro se litigant has filed an en banc petition.

New Response

In Honeywell International Inc. v. 3G Licensing, S.A., Honeywell filed a response to 3G Licensing’s en banc petition. The petition asked the following question:

  • “Does an appellee’s listing of less than all claims challenged in an IPR on the inside cover of its response brief affirmatively waive alternative grounds for affirmance found by the PTAB for other, non-listed claims when: (i) the appellant did not include any of the non-listed claims on the inside cover of its opening brief; (ii) the appellant did not challenge any of the alternative grounds for affirmance for the non-listed claims in its opening brief (and thus already forfeited them); and (iii) Fed. Cir. R. 32(a)(3) instructs parties to list ‘exemplary claims illustrative of the issue(s),’ not of all claims?”

Now, in its response, Honeywell argues 3G Licensing’s petition should be denied because the petition fails to identify a basis for panel rehearing or en banc review. Honeywell asserts the panel decision corrected “a critical blunder by the Patent Trial and Appeal Board . . . regarding the applicability of a reference . . . to the claims of a patent owned by” 3G Licensing. Honeywell contends the Board’s alternative bases for unpatentability are “premised on the application of law and fact that the Decision rejected.” Honeywell also argues 3G Licensing “made no effort to respond to [Honeywell’s] argument, or the Court’s understanding, that claims 1 and 6 would rise and fall together.” Moreover, according to Honeywell, because “there are no additional factual findings that the Board need undertake” and the “Decision corrects the Board’s misunderstanding of the scope and content of [the expert’s] testimony,” no further findings are necessary. Finally, Honeywell argues, any alleged error is harmless because “there is simply nothing left for the Board to handle on remand.”

New Denial

Since our last update, the court denied the petition for en banc rehearing in CloudofChange, LLC v. NCR Corp., which raised the following issue:

  • “Whether the same vicarious liability analysis for direct use infringement under 35 U.S.C. § 271(a) must be applied to both method and system claims in view of Limelight Networks, Inc. v. Akamai Technologies, Inc., 572 U.S. 915 (2014)?”