Here is an update on recent en banc activity at the Federal Circuit in patent cases. Since our last update, three new petitions for en banc rehearing have been filed raising questions related to appellate procedure and the non-obviousness requirement. Also one new response brief responds to a petition raising a question related to damages. Here are the details.
New Petitions
Since our last update, new petitions were filed in three cases.
In Otsuka Pharmaceutical Co. v. Lupin Ltd., Otsuka asked the en banc court to review the following question:
- Whether the “the panel decision is contrary to the following decision of the Supreme Court of the United States or the precedent of this Court: Pullman-Standard v. Swint, 456 U.S. 273, 291-92 (1982) (holding when the district court has failed to make a finding because of an erroneous view of the law, or where findings are infirm because of an erroneous view of the law, a remand is the proper course unless the record permits only one resolution of the factual issue); Hewlett-Packard Co. v. Bausch & Lomb Inc., 882 F.2d 1556, 1562-63 (Fed. Cir. 1989) (applying Pullman and remanding where the district court’s erroneous legal framework left a necessary factual finding unresolved).”
In Metrom Rail, LLC v. Siemens Mobility, Inc., Metrom Rail asked the en banc court to review the following question:
- “Is the application of this Court’s decision in Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299 (Fed. Cir. 2006) to require direct evidence of nexus to objective indicia of nonobviousness be tied to a feature not known in the prior art for claims linked to an ‘inventive combination of known elements’ inconsistent with Graham’s mandate to consider evidence of objective indicia of nonobviousness where present?”t?”
In Clearplay, Inc. v. Dish Network L.L.C., Clearplay asked the en banc court to review the following question:
- “[W]hether the Federal Circuit’s requirement of ‘particularized testimony and linking argument,’ as applied to set aside a jury’s equivalence verdict resting on panel-credited limitation-specific testimony and on Warner-Jenkinson enumerated factors, conflicts with Warner-Jenkinson and Graver Tank.”
Responses
Since our last update, one new response brief was filed.
In its petition, in Exafer Ltd. v. Microsoft Corp. Microsoft asked the court to consider the following question:
- “Whether [35 U.S.C.] § 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?”
Now, in its response, Exafer argues the court’s “unanimous decision properly reflects § 284’s requirement that damages value the ‘use made of the invention by the infringer.'” Exafer contends the panel “recognized the direct causal link under § 284 between Microsoft’s infrastructure infringement and the increased capacity the parties would have valued during an ex ante hypothetical negotiation.” According to Exafer, “[b]ecause the decision is tethered to Microsoft’s actual infringement and consistent with the hypothetical negotiation framework, Microsoft identifies no doctrinal error.”