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. Since our last update, two new petitions for en banc rehearing have been filed in patent cases, raising questions related to marking, exceptional case status, and eligibility. The Federal Circuit also issued an invitation for a response to a petition in a patent case raising questions related to prior art and the Administrative Procedure Act. Here are the details.  

En Banc Petitions

New Petitions

Since our last update, two new petitions for en banc rehearing have been filed in patent cases.

In Ortiz & Associates Consulting, LLC v. VIZIO, Inc., Ortiz & Associates Consulting asked the court to review the following questions:

  1. “Whether a non-practicing patentee that does not make or sell any patented article, and that has not granted an ongoing practicing license, has any obligation under 35 U.S.C. § 287(a) to ensure that third-party products are marked or to plead compliance with § 287(a).”
  2. “Whether a patentee’s contrary, text- and precedent-based position on that unresolved question can properly support an ‘exceptional case’ finding under 35 U.S.C. § 285.”

In Polar Electro Oy v. Suunto Oy, Polar Electro asked the court to review the following questions:

  1. “Whether the decision to affirm § 101 ineligibility conflicts with this Court’s and the Supreme Court’s precedents holding that claims directed to improved processes, here specific technological improvements to the functioning of devices, are patent-eligible.”
  2. “Whether a panel may affirm summary judgment that contravenes the principle of party presentation, here an affirmance of patent ineligibility where the district court, not the parties, identified five pieces of prior art never argued by the movant and concluded that claim elements and ordered combinations were ‘well-understood, routine, and conventional.’”

Invitation for Response

The Federal Circuit invited a response to the petition in Merck Serono S.A. v. Hopewell Pharma Ventures, Inc. In its petition, Merck Serono asked the Federal Circuit to consider following questions:

  1. “Whether a disclosure of an invention may be treated as a disclosure ‘by others’ or ‘by another’ under 35 U.S.C. § 102(a), (e) and thus as prior art to a patent filed within one year of the disclosure when nobody ‘other’ than the patent’s co-inventors contributed to the disclosure.”
  2. “Whether the Administrative Procedure Act (‘APA’) entitles a party to notice and a fair opportunity to respond to an agency’s decision to deviate from its longstanding administrative interpretation of law.”