En Banc Activity / Featured
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Here is an update on recent en banc activity at the Federal Circuit in patent cases. Since our last update, the court issued an en banc opinion in a patent case. Additionally, three new en banc petitions were filed. The first raises claim construction questions; the second raises questions related to deference to the Office of Personnel Management; and the first was filed pro se. The Federal Circuit also invited a response to a petition raising a question related to collateral estoppel, and a new response was filed in opposition to an en banc brief. One amicus brief was also filed with the Federal Circuit. Lastly, the court recently denied five petitions for en banc rehearing. Here are the details.

En Banc Case

Last week, the Federal Circuit issued its en banc opinion in EcoFactor, Inc. v. Google LLC, a patent case. In the opinion, the court reversed the Western District of Texas, which had denied a motion for a new trial, and remanded the case for a new trial on damages. The Federal Circuit held that the district court abused its discretion by failing to exclude expert testimony that prior licensees agreed to a particular royalty rate. We plan to post an opinion summary soon.

New Petitions

Since our last update, three new en banc petitions have been filed.

In Samsung Electronics Co. v. Power2B, Inc., Power2B asked the court to consider the following questions:

  1. “Whether, absent a finding that the patentee acted as its own lexicographer, a disputed claim term should be construed contrary to its undisputed plain and ordinary meaning?”
  2. “Whether the Court can invalidate patent claims on appeal based on its own new construction for a disputed term, when the new construction rendered all of Petitioner’s arguments moot for that disputed term in the proceedings below because Petitioner relied on a fundamentally different construction?”

In Lesko v. United States, Lesko asked the court to consider the following questions:

  1. “Considering Loper Bright Enterprises v. Raimondo, 603 U.S. 369 (2024), how should ‘officially ordered or approved’ in 5 U.S.C. § 5542(a) be interpreted?”
  2. “Is this a case in which ‘the agency is authorized to exercise a degree of discretion’ such that the Office of Personnel Management (‘OPM’) has authority to adopt its writing requirement? Loper, 603 U.S. at 394.”
  3. “Is there a statutory provision (e.g., 5 U.S.C. § 1104, 5548) that provides such authority?”

In Golden v. United States, a pro se litigant filed a petition for en banc rehearing.

Invitation for Response

Since our last update, the Federal Circuit invited a response from Kroy IP Holdings, LLC to the petition in Kroy IP Holdings, LLC v. Groupon, Inc. In its petition, Groupon raised the following question:

  • Whether “[t]he panel erred in determining a patent owner is not precluded from asserting patent claims that do not differ materially from claims the Federal Circuit had affirmed were unpatentable based upon a decision of the Patent Trial and Appeal Board and in concluding the patent owner is not collaterally estopped from arguing the validity of those claims under this Court’s precedents.”

New Response

One new response to a petition was filed in a patent case.

In In re Entrestro, Nanjing Noratech Pharmaceutical Co. filed a petition asking “[w]hether the availability of a pediatric exclusivity period gives a court Article III jurisdiction to adjudicate patent infringement even after the patent has expired.” According to Nanjing Noratech, “[t]he panel overlooked controlling law on Article III jurisdiction in patent cases.”

Now, in its response, Novartis Pharmaceuticals Corp. argues “Noratech’s petition fails to acknowledge all the grounds for vacatur here, instead presenting only arguments about Article III and mootness that the panel already considered.” Novartis suggests that “[s]uch a request for a do-over is not a proper basis for panel or en banc rehearing and is alone reason to deny Noratech’s petition.” Additionally, Novartis maintains, “Noratech misreads two long-settled decisions, neither of which Noratech asks to be reconsidered.” It also contends “Noratech’s petition should be rejected at the outset for the simple reason that the Order is supported by independent grounds that Noratech makes no attempt to show warrant further review.”

New Amicus Brief

Since our last update, Unified Patents, LLC filed an amicus brief in Kroy IP Holdings, LLC v. Groupon, Inc. The brief supports Groupon, Inc.’s petition for panel rehearing and rehearing en banc. That petition presented the following question:

  • Whether “[t]he panel erred in determining a patent owner is not precluded from asserting patent claims that do not differ materially from claims the Federal Circuit had affirmed were unpatentable based upon a decision of the Patent Trial and Appeal Board and in concluding the patent owner is not collaterally estopped from arguing the validity of those claims under this Court’s precedents.”

In support of the petition, Unified Patents argues “collateral estoppel applies to the PTAB’s final decisions on validity.” According to Unified Patents, moreover, applying an exception in this case “undermines the deference due to the PTO by the courts in matter of validity.” Unified Patents maintains that, “[e]ven assuming arguendo that estoppel is not a given, there will still be some cases where estoppel is appropriate” and, “[a]t the very least, a case-by-case inquiry is appropriate to decide whether estoppel” should apply. Unified Patents suggests estoppel is a “practical doctrine” that “protects a party from having to litigate issues that have been fully and fairly tried in a previous action and adversely resolved against a party-opponent.” Thus, it says, when a “non-binding exception leads to unfair and impractical results, a court should decline to apply the exception.” Unified Patents additionally contends that the decision here “creates a roadmap for patentees to circumvent the PTAB and harass defendants.”

Denials

Since our last update, the Federal Circuit has denied five petitions for en banc rehearing: