En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases. Notably, much of the activity relates in some way to Arthrex, Inc. v. Smith & Nephew, Inc. Highlights include three new petitions (including two petitions raising questions related to waiver of arguments similar to those made in Arthrex), a response in opposition to a petition also making arguments raised in Arthrex, briefing on a motion raising arguments related to Arthrex, requests for responses in three cases (including, notably, Arthrex itself), and the denial of two petitions raising questions related to patent eligibility. Here are the details.

New Petitions

Three new petitions were filed.

In VirnetX Inc. v. Apple Inc., Apple asked the en banc court to review the following three questions:

  1. “Whether issue preclusion bars an invalidity defense not pursued at trial in a prior action.”
  2. “Whether this Court should hold patent claims invalid and unenforceable where it has previously held claims indistinguishable therefrom unpatentable.”
  3. “Whether a method patent can be directly infringed where there is no evidence the defendant performed the claimed method steps in the United States.”

In Customedia Technologies, LLC v. DISH Network Corporation, Customedia Technologies asked the en banc court to review the following two questions:

  1. “[W]hether a litigant can waive a constitutional defense based on an intervening change of law that implicates important issues of public concern.”
  2. “[W]hether, after Arthrex, the Director’s delegation of institution authority to APJs acting as principal officers violated 35 U.S.C. § 324 and due process of law.”

In Bedgear, LLC v. Fredman Bros. Furniture Co. (18-2082), Fredman Brothers Furniture asked the en banc court to review the following question:

  • Whether, “[u]nder this Court’s precedent, including Trading Technologies, Bedgear failed to properly raise an Appointments Clause challenge on appeal and, therefore, waived it.”

New Responses, Briefing on a Motion for Reconsideration, and Requests for Responses

A response in opposition to a petition was filed in Bedgear, LLC v. Fredman Bros. Furniture Co. (18-2170). In the response, Fredman Brothers Furniture argues that, “[b]ecause Bedgear did not properly preserve any Appointments Clause challenge in its opening brief under this Court’s precedent, Arthrex is inapplicable and affords Bedgear no relief.” Fredman goes on to say that “[t]he Court, therefore, was correct in issuing its Rule 36 affirmance and should deny Bedgear’s combined petition for rehearing.”

In Boston Scientific Neuromodulation Corp. v. Nevro Corp., Boston Scientific filed a motion for en banc reconsideration of the Court’s Order that Boston forfeited an Appointments Clause challenge. Nevro argues that the Court should deny the motion because “Boston Scientific presents nothing new or that otherwise is inconsistent with the course charged by the Court in Customedia and similar cases.”

The Director of the USPTO also filed a response, arguing that Boston Scientific’s motion to reconsider should be denied because Boston Scientific “is wrong in contending that this Court’s and the Supreme Court’s ‘controlling’ precedents require the Court to address an Appointments Clause challenge ‘irrespective of whether parties raise the issue in their briefs’ before a new rule is announced.” According to the Director, “[n]o court has ever adopted such a rule . . . . [a]nd [Boston Scientific] provides no compelling reason for excusing its failure to observe the bedrock procedural rule that a non-jurisdictional argument is forfeited unless timely asserted.” The Director says that “this Court should adhere to the ordinary litigation waiver principles applied in its Customedia Order, under which a challenge is forfeited if not raised in a party’s opening brief.”

Boston Scientific later filed a reply brief rejecting Nevro’s position by arguing that “[t]his Court has never held that an argument must be ‘futile’ before it will excuse the failure to raise it.” “Nor has it,” says Boston Scientific, “required a party to make an implausible argument just because it theoretically could have.” Boston Scientific also rejects the Director’s position by arguing that “Appointments Clause challenges are, as the Government concedes, ‘structural constitutional objections.’” Rather, “[t]hey are the kind of extraordinary defects courts have often permitted parties to raise, even belatedly,” it contends. Boston Scientific maintains its position that the Court should grant reconsideration en banc because “[t]he panel’s forfeiture holding is directly contrary to controlling Federal Circuit and Supreme Court precedent, exceptionally important, and this case presents an ideal vehicle to resolve it.”

In addition to these briefs on pending petitions, the Federal Circuit invited responses to the petitions filed in the following three cases:

  • Bedgear, LLC v. Fredman Bros. Furniture Co. (18-2082) (Whether, “[u]nder this Court’s precedent, including Trading Technologies, Bedgear failed to properly raise an Appointments Clause challenge on appeal and, therefore, waived it.”)
  • Airbus S.A.S. v. Firepass Corporation (1. Can an Examiner’s rejection which lacks all of the elements of a prima facie case of unpatentability be sustained?; 2. Is Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013), which requires the PTAB to consider arguments not made or adopted by the Examiner, decided correctly?)
  • Arthrex, Inc. v. Smith & Nephew, Inc. (constitutionality of the appointment of the administrative patent judges of the Patent Trial and Appeal Board)


The Federal Circuit denied petitions in two cases: