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 were filed in patent cases raising questions related to obviousness and apportionment; the court issued two invitations for responses in patent cases raising questions related to obviousness and de minimis infringement; and the court denied a petition raising questions related to judicial estoppel and appellate procedure. Here are the details.
En Banc Petitions
New Petitions
Since our last update, two new petitions for en banc rehearing have been filed at the Federal Circuit.
In Guardant Health, Inc. v. University of Washington, the University of Washington asked the court to review the following question:
- “Whether the presence of two claim elements together in a prior-art embodiment, standing alone, dispositively proves that the combination of those elements would be obvious—notwithstanding the level of detail in the disclosure and notwithstanding any contrary evidence demonstrating that a skilled artisan would lack a motivation to combine the elements or a reasonable expectation of success in doing so.”
In Willis Electric Co. v. Polygroup Ltd., Polygroup Ltd. asked the court to consider the following questions:
- Whether the panel erred in “focusing on design changes allegedly required for bodily incorporation” in determining obviousness.
- Whether the panel’s apportionment analysis departs from the Supreme Court’s requirement that “patent owners ‘must in every case give evidence tending to separate or apportion the defendant’s profits and the patentee’s damages between the patented feature and the unpatented features.'”
Invitations for Responses
Since our last update, the Federal Circuit invited responses to two petitions for en banc rehearing.
The court invited a response from Autel Intelligent Technology in Orange Electronic Co. v. Autel Intelligent Technology Corp. In its petition for en banc rehearing, Orange Electronic asked the court to consider the following questions:
- Whether “the panel decision misapplied the standard for obviousness in dismissing substantial evidence as to the prior art teachings and secondary considerations.”
- Whether “the panel ignored substantial evidence of a lack of motivation to combine based on the claimed frequency requirements.”
The Federal Circuit also invited a response from AeroVironment in Arlton v. AeroVironment, Inc. In its petition for en banc rehearing, Arlton asked the court to consider the following question:
- “Is the meaning of de minimis infringement as applied in the context of 28 U.S.C. § 1498 different from the long-established meaning of de minimis infringement under 35 U.S.C. § 271?”
Denials
Since our last update, the Federal Circuit has denied a petition for en banc rehearing in the following patent case:
- Gamevice, Inc. v. Nintendo Co. (judicial estoppel and appellate procedure)