Therasense v. Becton Dickinson
This case will be heard by the 9 active judges plus Senior Judge Daniel Friedman. Senior judges usually do not participate in en banc arguments. Judge Friedman, the senior member of the court at 94 years of age, is able to do so because he was a part of the original panel that included Judges Dyk and Linn.
Therasense could significantly alter the court’s jurisprudence on inequitable conduct. The en banc order laid out six questions regarding materiality and the balancing inquiry with intent to deceive the PTO. There has been a rift on the court in recent years with Judge Linn frequently calling for the court to take up inequitable conduct en banc. He finally gets his wish tomorrow.
TiVo v. EchoStar
This case will be heard by the 9 active members, plus Senior Judge H. Robert Mayer, who was a member of the original panel that heard the case. TiVo concerns the use of contempt proceedings, in lieu of a new trial, for patent infringement. After a judgment of infringement where the infringer introduces a product that is different from the originally infringing product, must the patent owner start over with a new infringement suit or can it simply ask the court to find that the defendant is violating the court’s order to stop infringing?
The court posed a number of questions that it will seek to answer in this case to determine which proceeding is appropriate in various circumstances.
If Judge O’Malley is confirmed by the Senate during the lame duck session of Congress, she could also participate in the en banc decision even though she was not a member of the court during the argument.