En Banc Activity / Featured / 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, two new petitions have been filed. One of the two new petitions raises multiple issues regarding patent ownership and a district court’s authority to prohibit parties from sharing part of a claim construction with a jury. The other new petition raises questions concerning expert testimony to prove infringement of a means plus function element, claim construction, and the reverse doctrine of equivalents. Here are the details.

New Petitions

Since our last update, petitioners have filed two new en banc petitions.

In Lone Star Technological Innovations, LLC v. AsusTek Computer, Inc., AsusTek Computer raises the following questions:

  1. “Whether patent ownership can be proven without a written document?”
  2. “Whether the alleged infringer can waive its patent ownership challenge by not raising that issue explicitly in the pre-trial order.”
  3. “Whether the alleged infringer’s assertion in the pre-trial order that it does not owe damages — even if infringement is found — implicitly and sufficiently raises a challenge to patent ownership.”
  4. “Whether plaintiff’s mere oral testimony that it owns the patent-in-suit is sufficient proof of ownership?”
  5. “Whether plaintiff’s mere oral testimony that it owns the patent-in-suit can shift the burden of proof to the accused infringer to disprove that the plaintiff owns the patent-in-suit?”
  6. “Whether it is proper for a district court to have a two-part claim construction for a claim term and prohibit the parties from sharing one part of the claim construction with the jury?”

In Steuben Foods, Inc. v. Shibuya Hoppmann Corporation, Shibuya Hoppmann raises the following questions:

  1. “Whether an accused structure can be found to infringe a means-plus-function limitation merely based on expert testimony that the structure performs the same function as the structure disclosed in the patent, without regard to whether the structures perform that function in substantially the same way.”
  2. “Whether a patent claim may be construed to cover a prior-art design where the specification expressly teaches that the prior-art design lacks an essential element of the claimed invention.”
  3. “Whether, when performing [a reverse doctrine of equivalents] analysis, it is permissible to determine the principle of operation of the claimed invention by looking exclusively at the accused product rather than the disclosure in the patent.”