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 raising questions related to eligibility and Article III standing; two amicus briefs were filed in case raising questions related to obviousness and apportionment of damages; a panel granted in part a petition for panel rehearing; and the court denied two petitions for en banc rehearing raising questions related to obviousness and another petition filed pro se. Here are the details.

En Banc Petitions

New Petitions

Since our last update, two new petitions were filed in patent cases.

In Oasis Tooling, Inc. v. Siemens Industry Software, Inc., Oasis Tooling asked the court to consider the following questions:

  1. “Are patent claims that recite the use of a computer to perform a distinct process to automate a task previously performed by humans, but in a different and improved way, patent eligible under 35 U.S.C. § 101?”
  2. “On summary judgment, is a court required, at step two of the Alice inquiry, to address the evidence presented to determine if a genuine dispute exists regarding whether the combination of claim elements was well-understood, routine, and conventional at the time of the invention?”

In Applications In Internet Time, LLC v. Salesforce, Inc., Applications In Internet Time asked the court to consider the following questions:

  1. “Whether a plaintiff holding a recorded patent assignment, who reasonably believed it owned the asserted patents at the time the complaint was filed, lacks Article III constitutional standing or instead lacks only a statutory cause of action under 35 U.S.C. § 281, where the assignment is later found to be defective due to mistake.”
  2. “Whether the equitable remedies of contract reformation and Rule 17(a)(3) ratification are categorically unavailable to cure defects in title existing when the complaint was filed, notwithstanding this Court’s precedential holding in Schwendimann v. Arkwright Advanced Coating, Inc., 959 F.3d 1065 (Fed. Cir. 2020), and the acknowledged division among district courts applying this Court’s precedent.”

New Response

One new response was filed since our last update 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.’”

Now, in its response, Willis Electric argues the petition’s “scattershot approach does not identify any overarching legal question that the unanimous panel supposedly decided contrary to precedent, nor does it raise a precedent-setting question.” Willis Electric suggests that, “[a]t most, Polygroup argues that the panel incorrectly applied clearly established law to the specific facts of this case.” Regarding obviousness, Willis Electric contends the petition “ignored the deferential standard of review applicable to a jury’s finding of no motivation to combine, accuses the panel of adopting an erroneous approach. . . that the panel neither mentioned nor applied, and urges the Court to view the record in light most favorable to Polygroup, rather than the jury verdict.” Furthermore, Willis Electric argues, Polygroup’s arguments related to damages, “some of which were not made in its appeal briefs,” do not warrant rehearing because they “do not engage with the panel’s detailed, case-specific analysis.”

Amicus Briefs

Since our last update, two new amicus briefs were filed in Range of Motion Products, LLC v. Armaid Company Inc. Both support rehearing.

In its petition, 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?”

Now, in its amicus brief, Industrial Designers Society of America, Inc. argues the court should correct three errors “to assure certainty and predictability in design patent litigation.” First, IDSA states, “the majority opinion and district court below improperly focus the design patent infringement inquiry on differences in design, instead of overall similarity.” Second, it continues, “the majority opinion endorses the district court’s improper functional dissection of claimed design.” Third, IDSA contends, the Federal Circuit “should clarify that the standard for assessing functionality of claimed design focuses on the existence of alternative designs.”

The Institute of Design Science and Public Policy, in its amicus brief, argues this case should be reheard en banc “to correct two errors and better align design patent analysis with the actual perceptions of consumers and the Gorham test for design patent infringement.” First, IDSPP argues, while the majority opinion endorsed the district court’s application of the “plainly dissimilar” language from Egyptian Goddess, that standard “is irreparably flawed” and “dictates outcomes that are inconsistent with the Gorham test for design patent infringement.” Second, IDSPP asserts, the panel “affirm[ed] the district court’s improper dissection of the claimed design into functional and ornamental aspects.”

Petition for Panel Rehearing Granted in Part

Since our last update, a panel granted in part and denied in part a petition for panel rehearing. In Arlton v. AeroVironment, Inc., the panel said it would grant the petition for panel rehearing “only to the extent the panel will make the following changes to the language of its nonprecedential opinion.” The panel listed nine grammatical changes to its nonprecedential opinion. The petition for rehearing en banc remains pending.

Denials

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