En Banc Activity / Featured / Petitions
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Here is an update on recent en banc activity at the Federal Circuit. As for granted petitions, a response brief was filed in a pending en banc case raising questions regarding how to establish standing to allege a violation of a statute or regulation in connection with the procurement of a government contract. As for pending petitions, a new petition has been filed in a patent case; a response has been filed to a petition raising multiple questions regarding patent ownership and a district court’s authority to prohibit parties from sharing part of a claim construction with a jury; and an amicus brief has been filed in support of a petition raising a question concerning whether an abandoned patent application that becomes publicly available only after a challenged patent’s critical date is a printed publication that can form the basis for an inter partes review proceeding. Here are the details.

En Banc Cases

New Response

In Percipient.AI, Inc. v. United States, the United States filed a response to Percipient’s opening en banc brief. This case raises questions regarding how to establish standing to allege a violation of a statute or regulation in connection with the procurement of a government contract.

In its opening en banc brief, Percipient argued the court should adopt the following test: whether “the plaintiff has a sufficient interest in challenging the alleged violation of law that is challenged under [28 U.S.C.] § 1491(b)(1) . . . [w]here that violation blocked the plaintiff from providing its goods or services to meet the needs of an agency.” Alternatively, Percipient also argued, “any party who could demonstrate standing under the APA qualified as an interested party under § 1491(b)(1).”

Now, in its response, the United States raises three arguments urging the court to adopt the panel’s decision. First, the United States argues, the court “has interpreted the term ‘interested party’ . . . to incorporate [the Competition in Contracting Act’s] definition of the same term.” The government contends that definition aligns with the text, structure, and history of the statute. Second, the United States maintains, Percipient’s arguments for carving out a different standing requirement “turns the statutory text on its head” because it “extends protests beyond the process of contract formation.” Finally, the United States rebuts Percipient’s invitation to apply the APA standing rules to the statute because Congress did not “cross-reference[] the standing principles” of the APA in the statute.

En Banc Petitions

New Petition

Since our last update, petitioners have filed one new en banc petition. In United Services Automobile Association v. PNC Bank N.A., United Services raises the following question:

  1. Whether the panel overlooked the point of law that, “[b]ecause like cases must be decided alike, where the Board reaches ‘opposite holdings,’ the Board ‘must at least provide some reasoned basis’ for its change in position. Vicor Corp. v. SynQor, Inc., 869 F.3d 1309, 1323 (Fed. Cir. 2017).”
  2. Whether the panel overlooked the point of law that “[t]he ‘prior art as a whole must be considered,’ and patent challengers may not ‘pick and choose’ the portions of the prior art that ‘will support a given position, to the exclusion of other parts necessary to the full appreciation’ of how a skilled artisan would understand the art as a whole. In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986).”

New Response

In Lone Star Technological Innovations, LLC v. AsusTek Computer, Inc., Lone Star filed a response to AsusTek’s en banc petition. The petition asked the following questions:

  1. “Whether patent ownership can be proven without a written document?”
  2. “Whether the alleged infringer can waive its patent ownership challenge by not raising that issue explicitly in the pre-trial order.”
  3. “Whether the alleged infringer’s assertion in the pre-trial order that it does not owe damages — even if infringement is found — implicitly and sufficiently raises a challenge to patent ownership.”
  4. “Whether plaintiff’s mere oral testimony that it owns the patent-in-suit is sufficient proof of ownership?”
  5. “Whether plaintiff’s mere oral testimony that it owns the patent-in-suit can shift the burden of proof to the accused infringer to disprove that the plaintiff owns the patent-in-suit?”
  6. “Whether it is proper for a district court to have a two-part claim construction for a claim term and prohibit the parties from sharing one part of the claim construction with the jury?”

In its response, Lone Star argues AsusTek’s petition should be denied for two reasons. First, Lone Star argues, it met its burden to prove that it owned the patent and thus has standing. Second, Lone Star contends, the panel properly held that AsusTek forfeited a “secret claim construction” because Asus did not raise it below.

New Amicus Brief

Since our last update, VLSI Technology LLC filed an amicus brief in Lynk Labs, Inc. v. Samsung Electronics Co. The brief supports Lynk Labs, Inc.’s petition, which raised the following question:

  • “Whether an abandoned patent publication that became publicly accessible only after the challenged patent’s critical date is a ‘prior art . . . printed publication[]’ that can be a basis for an inter partes review under 35 U.S.C. §311(b).”

VLSI argues the panel’s decision wrongly expands the scope of inter partes review proceedings “beyond the limits placed upon them by Congress.” First, VLSI argues, the panel’s decision is wrong because IPR “challenges may be brought ‘only on the basis of prior art consisting of patents or printed publications,'” and the abandoned patent application here was “undisputedly not publicly accessible” and therefore not a printed publication. Thus, VLSI continues, the abandoned patent application cannot be prior art used in an IPR. Second, VLSI argues, Congress “could have made the grounds available in IPRs more expansive,” but it allowed for other prior art challenges only in other forums. Third, VLSI argues, the panel’s decision conflicts with the court’s precedent. VLSI contends that this issue is important and “arising in many cases.”