En Banc Activity / 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, three new petitions for en banc rehearing were filed in cases raising questions related to eligibility, claim construction, PTAB procedure, obviousness, and appellate procedure. Here are the details.

En Banc Petitions

New

Since our last update, three new petitions for en banc rehearing were filed.

In Caddo Systems, Inc. v. Jetbrains Americas, Inc., Caddo Systems asked the en banc court to review the following questions:

  1. “What distinguishes a claim directed to a specific manner of displaying or navigating information in a computer interface, held patent eligible in Core Wireless, Data Engine, and Trading Technologies International, Inc. v. CQG, Inc., from a claim directed to displaying information or improving a user’s experience, held ineligible in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016); Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359 (Fed. Cir. 2020); IBM v. Zillow Group., Inc., 50 F.4th 1371 (Fed. Cir. 2022); and Broadband iTV, Inc. v. Amazon.com, Inc., 113 F.4th 1359 (Fed. Cir. 2024)?”
  2. “May a technological improvement disclosed in the specification render a user-interface claim non-abstract at Alice step one when the claim does not recite the hardware constraint or performance benefit the specification identifies, as Core Wireless held, and if so, how does that rule operate alongside this Court’s more recent decisions requiring that the improvement be embodied in the claims?”

In DoDots Licensing Solutions LLC v. Samsung Electronics Co., DoDots asked the en banc court to review the following questions:

  1. “Should this Court address the procedural unfairness at the Patent Trial and Appeal Board—the reason obviousness, rather than anticipation, accounts for almost 90% of the grounds on which the Board finds claims unpatentable?”
  2. “May patent rights be extinguished based upon proceedings that fail to provide adequate notice of any specific ground of invalidity, such as petitions that misleadingly state between 70 and 100 times noncommittal alternative language that invokes countless separate theories of invalidity (e.g., a POSITA would have either ‘recognized or found obvious’ or ‘understood or found obvious’ claim elements and sub-elements)?”
  3. “Should secondary considerations be reduced to a near nullity by affirming a decision that strained to ignore one of the clearest and most applicable sets of secondary considerations ever put on record: showing that the prior art covering Microsoft’s Active Desktop, which Bill Gates admitted failed to solve a long-felt need after it was released, could never have rendered obvious patent claims that the public recognized did solve that long-felt need and that led directly to hundreds of millions of dollars of commercial success?”
  4. “Should this Court correct inconsistent claim construction positions reached on the same terms in the same patents? In Lenovo Holding Co. v DoDots Licensing Sols. LLC, Nos. 2021-1247, 2021-1521, 2021-1580, 2021 U.S. App. LEXIS 36126, at *7 (Fed. Cir. Dec. 8, 2021), this Court stated that the NIMs were ‘applications’ and that configurability is determined from the developer’s point of view. However, the panel affirmed invalidity in this latest appeal on the grounds that NIMs are mere linear boundaries and that configurability can be decided from the user’s point of view (e.g., the ability to move a box around, which has always been possible in Windows).”

In In re Carter, the pro se litigant asked the court to review the following question:

  • Whether “[r]ehearing is required because the Motions Panel has issued an order based on a completely fabricated factual premise that directly contradicts the unalterable electronic text of the underlying record.”