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, two new responses were filed. One responds to a petition raising questions related to infringement and claim construction in design patent cases. The other responds to a petition raising a question related to admissibility of expert testimony. Two new amicus briefs were also filed supporting a petition raising questions related to the domestic industry requirement at the International Trade Commission. Finally, the court denied two petitions in cases raising questions related to obviousness, apportionment, and eligibility. Here are the details.

Responses

Since our last update, two responses to petitions for en banc rehearing have been filed.

First, a response was filed in Range of Motion Products, Inc. v. Armaid Co. In its petition, Range of Motion 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 response, Armaid argues “[e]n banc review is not warranted to revisit the long-settled and correct approach to design patent infringement, and, even if it were, this case would be a poor vehicle to do so.” Armaid further argues, “[i]n truth, Egyptian Goddess did not ‘change[],’ much less ‘gut,’ Gorham’s test . . . but instead expressly applied it.” Armaid goes on to say that, “[s]ince Markman, this Court has repeatedly recognized that claim construction is a question for the court, and there is no good reason to revisit that unbroken line of cases here.”

A new response was also filed in Barry v. DePuy Synthes Companies. In its petition, DePuy Synthes asked the court to consider the following question:

  • “[W]hether, after the 2023 amendments to Federal Rule of Evidence 702 and this Court’s en banc decision in EcoFactor, a panel may treat as issues of ‘weight’ matters that go to the questions of (i) sufficiency of an expert’s basis for his opinions, and (ii) reliable application of methodology, including where trial testimony departs from the governing claim construction and where a survey expert fails to demonstrate representativeness of the survey population and employs flawed survey question design.”

In its response, Barry argues that “[n]either the 2023 Amendments to Rule 702 . . . nor this Court’s decision in EcoFactor . . . changed the law on what constitutes reliable, and thus admissible, expert testimony.” Barry also highlights how “[n]o other circuit has taken en banc a Rule 702 case” after the 2023 Amendments, “and this Court need not do so again.”

Amicus Briefs

Since our last update, two amicus briefs were filed in Apple Inc. v. International Trade Commission. Here are the questions presented:

  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.”

Both amicus briefs support rehearing:

Denials

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