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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 were filed raising questions related to eligibility and design-patent infringement; the court issued an invitation for a response to a petition raising questions related to obviousness and apportionment of damages; and a response was filed to a petition raising questions related to obviousness. The Federal Circuit also denied one petition for en banc rehearing in a Lanham Act case. 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 Q Technologies, Inc. v. Walmart, Inc., Q Technologies asked the court to review the following question:

  • Whether “using physical location to improve another basic computer function, file sharing, is ‘not . . . technological’ and not patent-eligible” given the court’s holding in Weisner v. Google LLC, 51 F.4th 1073 (Fed. Cir. 2022), that “an invention that ‘us[es] physical location. . . to improve’ the basic computer function of conducting a ‘search’ is technological and therefore patent-eligible.”

In Range of Motion Products, LLC v. Armaid Co., Range of Motion Products asked the court to consider the following questions:

  1. “The test for design-patent infringement that the Supreme Court established in Gorham inquires only as to whether an ordinary observer would find the appearance of two designs ‘substantially the same.’ 81 U.S. at 528. Is this Court’s test for design-patent infringement, originating in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), inconsistent with that rule, because this Court’s test asks first whether the appearance of two designs is ‘plainly dissimilar’?”
  2. “Does this Court’s precedent holding that judges should resolve ‘factual dispute[s]’ regarding functionality versus ornamentation at claim construction . . . conflict with the Seventh Amendment jury-trial right under the Supreme Court’s framework in Markman?”

New Invitation for Response

Since our last update, the Federal Circuit invited a response from Willis Electronic Co. to the petition filed in Willis Electric Co. v. Polygroup Ltd. In its petition, Polygroup asked the court to consider the following questions:

  1. Whether the panel erred in “focusing on design changes allegedly required for bodily incorporation” in determining obviousness.
  2. 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.'”

New Response

Since our last update, a new response to a petition was filed in Orange Electronic Co. v. Autel Intelligent Technology Corp. In its petition, Orange Electronic asked the court to consider the following questions:

  1. Whether “the panel decision misapplied the standard for obviousness in dismissing substantial evidence as to the prior art teachings and secondary considerations.”
  2. Whether “the panel ignored substantial evidence of a lack of motivation to combine based on the claimed frequency requirements.”

Now, in its response, Autel Intelligent Technology argues that Orange Electronic “does not present any issue that comes close to meeting the standards for rehearing or rehearing en banc.” As to Orange Electronic’s first argument, “that the prior art references did not disclose a ‘portable’ apparatus for reprogramming vehicles’ tire pressure detectors,” Autel argues “the claims do not use ‘portable’
in some general sense.” Instead, Autel contends, “the claims specify that ‘portable’ means ‘portable relative to the vehicle’ – and there is no dispute that the apparatus in the prior art could be moved to and around the vehicle.” Autel also argues Orange Electronic’s second argument, “that secondary considerations show the asserted claims are not obvious, pointing to an industry award it received,” was forfeited “by devoting only a single sentence to it in its appellate brief.” Finally, Autel argues, Orange’s last argument was never made in Orange’s appellate brief.

Denial

Since our last update, the Federal Circuit denied a petition for en banc rehearing in the following case: