Here is an update on recent en banc activity in patent cases at the Federal Circuit. Highlights include two new petitions raising questions concerning a court’s responsibility to scrutinize a patentee’s reliance on supposedly comparable licenses and claim construction matters. The court also denied two petitions raising questions related to claim construction and summary judgment. Here are the details.
New Petitions
New petitions were filed in two cases.
In EcoFactor, Inc. v. Google LLC, the petition asked the en banc court to review the following question:
- Did the court err in “failing to rigorously scrutinize a patentee’s reliance on supposedly comparable licenses” resulting in an “artificially inflated damages award that is divorced from market realities and devoid of connection to the patent’s incremental improvement to the art”?
In Apple Inc. v. Omni MedSci, Inc., the petition asked the en banc court to review the following question:
- “When the arguments made and evidence presented in an Inter Partes Review Petition rely on the plain and ordinary meaning of claim terms and fail to account for or address well-established presumptions, such as the presumption that different claim terms have different meanings, which establish the plain and ordinary meaning based on a foreseeable application of the presumptions, does Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374 (Fed. Cir. 2023) strip the Patent Trial and Appeals Board of its discretion to reject as untimely Petitioner’s new unpatentability arguments, which address the foreseeable claim construction for the first time in the Reply brief, or does that discretion, as recognized in, inter alia, Microsoft Corp. v. IPA Techs. Inc., No. 2021-1412, 2022 WL 989403 (Fed. Cir. Apr. 1, 2022) and Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765 (Fed. Cir. 2018) remain intact given the Petitioner’s obligation to meet the statutory particularity requirement of 35 U.S.C. § 312(a)(3)?”
Denials
The Federal Circuit also recently denied petitions for rehearing en banc in two cases.
In UNM Rainforest Innovations v. ZyXEL Communications Corp., the petition raised the following questions:
- “Whether the Panel erred in applying its own guidance, as provided in Phillips, in reviewing the PTAB’s claim construction.”
- “Whether the Panel erred in upholding the PTAB’s claim construction, and more particularly, erring in not considering the totality of the specification in its review of the PTAB’s claim construction.”
In Island Intellectual Property LLC v. TD Ameritrade, Inc., the petition raised the following questions:
- “May the Court disregard FRCP 56 when deciding summary judgment in a patent litigation, in particular Rule 56’s requirement to apply all inferences in favor of the non-moving party?”
- “May the Court invalidate a patent as ineligible on summary judgment without a reasoned analysis under Step 2 of Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)?”