En Banc Activity / Petitions
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Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include new petitions in three cases raising questions related to transfer motions, licenses, and the constitutionality of the appointment of Administrative Patent Judges, two responses to petitions raising questions related to the knowledge of one of ordinary skill in the art and the constitutionality of the appointment of Administrative Patent Judges, and the denial of a motion for en banc reconsideration in a case that raised arguments related to the constitutionality of the appointment of Administrative Patent Judges. Here are the details.

New Petitions

New petitions were filed in three cases.

In In re Apple Inc., Apple asked the en banc court to review the following question:

  • “[W]hether a plaintiff can defeat a transfer motion by doing nothing more than alleging that there may be likely witnesses in, or other connections to, the plaintiff’s chosen forum.”

In Molon Motor and Coil Corporation v. Nidec Motor Corporation, Molon Motor asked the en banc court to review the following question:

  • “Did the published decision of the 2-1 Panel majority apply an improperly heightened standard for merger of patent license agreements that conflicts with controlling law and the plain terms of a merger clause?”

In Image Processing Technologies, LLC v. Samsung Electronics Co., separate petitions were filed by the government and Samsung.

The government presented the following questions:

  1. “Whether the administrative patent judges of the Patent Trial and Appeal Board are inferior officers of the United States under the Appointments Clause, U.S. Const. art. II, § 2, cl. 2, such that Congress permissibly vested their appointments in a department head, rather than principal officers of the United States who must be nominated by the President and confirmed by the Senate.”
  2. “Whether this Court should entertain an Appointments Clause challenge a litigant forfeited by failing to raise it before the agency.”
  3. “How to remedy any Appointments Clause defect in the Patent Trial and Appeal Board.”
  4. “Whether the Arthrex panel’s decision to excuse a challenger’s forfeiture of an Appointments Clause challenge applies automatically to excuse forfeiture in future cases, or whether this Court’s ordinary forfeiture rules apply.”

Samsung presented the following questions:

  1. “Whether litigants who failed to raise an Appointments Clause challenge before the Patent Trial and Appeal Board (the ‘PTAB’ or ‘Board’) should be permitted to raise such a challenge on appeal, where there are other cases properly presenting the issue already before this Court.”
  2. “Whether Board Administrative Patent Judges (‘APJs’) are inferior or principal officers of the United States for purposes of the constitution’s Appointments Clause.”
  3. “If APJs are principal officers, what remedy is warranted for this and similarly-situated cases.”

New Responses

Responses to petitions were filed in two cases.

In Bedgear, LLC v. Fredman Bros. Furniture Co. (18-2082), Bedgear argues that it “properly raised an argument that the underlying decisions of the Administrative Patent Judges (‘APJs’) must be vacated because APJs were principal officers who operated under an unconstitutional appointment provision.” It also argues that, “[b]ecause Arthrex correctly decided that those appointments were unconstitutional while these consolidated cases were pending, Bedgear is entitled to application of that decision.”

In Airbus S.A.S. v. Firepass Corp., Airbus argues that “[t]he Panel’s decision to vacate the Board’s decision and remand for the Board to consider relevant evidence of a POSA’s knowledge, which the Board erroneously refused to consider, was correct and consistent with precedent.” Airbus further explains that Firepass’s rehearing arguments, which are “based on the premise that the examiner’s rejections did not meet the burden to present a prima facie case,” are incorrect because the “rejections . . . provided the required statutory notice of the basis and reasons for the rejections.”

Denials

The Federal Circuit denied the motion for en banc reconsideration of the Court’s Order in Boston Scientific Neuromodulation Corp. v. Nevro Corp. The motion raised the questions of whether Arthrex should be applied to cases pending on appeal at the time it was decided, and whether the PTAB must consider arguments not made or adopted by examiners.