En Banc Activity / Featured
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Here is an update on recent en banc activity at the Federal Circuit in patent cases. Since our last update, five new petitions for en banc rehearing have been filed raising questions related to correction of inventorship, damages, the domestic industry requirement, and infringement. Three new amicus briefs were also filed in a case raising questions related to design patent infringement. Finally, four petitions were denied in cases raising questions related to eligibility and infringement. Here are the details.

New Petitions

Since our last update, five new petitions for en banc rehearing have been filed.

In Fortress Iron, LP v. Digger Specialties, Inc., Fortress Iron asked the court to consider the following question:

  • “Does a recognized coinventor have the right ‘not to be named,’ therefore rendering a patent invalid, even when all his rights have been assigned and he has no economic or other interest in the patent?”

In Exafer Ltd. v. Microsoft Corp., Microsoft asked the court to consider the following question:

  • “Whether § 284 requires that damages based on non-infringing product sales as a measure of a reasonable royalty be proximately tied to the use made of the patented invention, or whether a generalized ‘causal connection’ between the patented and unpatented products is sufficient?”

In Apple Inc. v. International Trade Commission, Apple asked the court to consider the following questions:

  1. “Whether, for purposes of 19 U.S.C. §1337(a)(3)(B), research and development investments made in a concededly non-patent-practicing device can be considered in determining whether a complainant has established a ‘significant employment of labor or capital’ ‘with respect to’ patent-practicing devices.”
  2. “Whether, for purposes of 19 U.S.C. §1337(a)(2), a complainant can establish that an ‘industry in the United States [] relating to the articles protected by [a] patent . . . exists’ when it fails to identify any device that actually practices the patent or make a showing that the physical devices produced are ‘representative’ of the article.”

In Corcept Therapeutics, Inc. v. Teva Pharmaceuticals USA, Inc., Corcept Therapuetics asked the court to consider the following question:

  • Whether “[t]he panel erroneously relied on Genentech, Inc. v. Sandoz Inc., 55 F.4th 1368 (Fed. Cir. 2022), when Genentech conflicts with prior Federal Circuit precedent and is therefore not controlling.”

In Implicit, LLC v. Sonos, Inc., Implicit asked the court to consider the following question:

  • Whether “the panel decision is contrary to at least the following statute and precedents of this court: Egenera, Inc. v. Cisco Sys., Inc., 972 F.3d 1367 (Fed. Cir. 2020); Stark v. Advanced Magnetics, Inc., 119 F.3d 1551 (Fed. Cir. 1997); Stark v. Advanced Magnetics, Inc., 29 F.3d 1570 (Fed. Cir. 1994); 35 U.S.C. § 256.”

Amicus Briefs

Since our last update, three new amicus briefs were filed in Range of Motion Products, Inc. v. Armaid Co. Here are the questions presented:

  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?”

All three of the amicus briefs support rehearing:

Denials

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