Here is an update on recent en banc activity at the Federal Circuit. Since our last update, the Federal Circuit issued two en banc opinions, one in a trade case, V.O.S. Selections, Inc. v. Trump, and another in a government contract case, Percipient.ai, Inc. v. United States. Additionally, two petitions for en banc rehearing were filed in patent cases. One raises questions related to identification of real parties in interest in inter partes review proceedings. The other raises questions related to claim construction. Finally, a response was filed in opposition to a petition in another patent case raising questions related to estoppel and inter partes review. Here are the details.
En Banc Cases
Since our last update, the Federal Circuit has issued two en banc opinions.
As noted in our breaking news post, the Federal Circuit recently decided V.O.S. Selections, Inc. v. Trump, the en banc case challenging President Trump’s tariffs. The Federal Circuit affirmed the holding of the Court of International Trade that the International Emergency Economic Powers Act “does not authorize the tariffs imposed by the Executive Orders.” The Federal Circuit, however, also vacated the lower court’s permanent universal injunction and remanded the case for the lower court “to reevaluate the propriety of granting injunctive relief and the proper scope of such relief.”
The Federal Circuit also decided Percipient.ai, Inc. v. United States, a government contracts case. The court affirmed a decision of the Court of Federal Claims to dismiss a bid protest for lack of standing. The court held that “an interested party is an actual or prospective bidder or offeror whose direct economic interest would be affected by the award of the contract or by failure to award the contract, regardless of the type of challenge brought.”
Petition Cases
New Petitions
Since our last update, two new petitions for en banc review were filed with the Federal Circuit.
In Dolby Laboratories Licensing Corp. v. Unified Patents, LLC, Dolby Laboratories Licensing asked the en banc court to consider the following questions:
- “Does the AIA create informational rights?”
- “Does a patent owner faced with a petition for inter partes review have a right to know the identities of all real parties in interest to the petition?”
- “Does informational standing require a right that does not only arise in the context of IPR proceedings?”
- “Does informational standing require a special statutory cause of action?”
- “Does 35 U.S.C. § 314(d) bar judicial review of the Board’s refusal to enforce a patent owner’s informational right under § 312(a)(2) as part of the Board’s final written decision?”
- “Does establishing an injury in fact from the violation of a patent owner’s right to information under § 312(a)(2) require evidence that the patent owner ‘will be barred from asserting estoppel’ against the disputed real parties in interest in a future proceeding, or is it sufficient to show that the patent owner would be hindered in attempting to establish estoppel in such a future proceeding, as Dolby demonstrated?”
In Bright Data Ltd. v. Code200, UAB, Bright Data asked the en banc court to review the following questions:
- Do “the prosecution history statements in prior [inter partes reviews] disclaim the [Patent Trial and Appeal Board’s] broader . . . constructions?”
- Does “the prosecution history of the related [patent] support Bright Data’s narrower . . . constructions?”
New Response
Since our last update, Ingenico filed its response in opposition to the petition in Ingenico Inc. v. IOENGINE, LLC. The petition raised the following questions:
- “Whether 35 U.S.C. § 315(e)(2) allows the petitioner in an inter partes review (‘IPR’) that has resulted in a final written decision to avoid estoppel in a civil action by relabeling patents or printed publications that reasonably could have been raised as a ‘ground’ in the IPR.”
- “Whether 35 U.S.C. § 311(b) limits ‘a ground that could be raised under section 102 or 103’ to only certain subparts of 35 U.S.C. §§ 102 or 103.”
Now, in its response, Ingenico argues the Federal Circuit’s “statutory interpretation of the term ‘ground’ as applied to inter partes reviews (‘IPRs’) and IPR estoppel rests on sound footing and no rehearing is necessary.” Ingenico asserts the petition is “a vehicle to rehash many of the same arguments that have now twice been rejected as incongruent with the law concerning IPR estoppel.” According to Ingenico, “reconsideration of the meaning of the word ‘ground’ cannot change the outcome here because IOENGINE failed to meet threshold burdens in asserting IPR estoppel.”