En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include five new petitions related to obviousness, Arthrex, alleged appellate fact-finding, and prevailing party determinations; one response to a petition raising arguments related to Arthrex; three amicus briefs in support of a petition concerning design patent infringement; and an order denying a petition related to definiteness with a dissent by four judges. Here are the details.

New Petitions

New petitions were filed in five cases.

In HVLPO2, LLC v. Oxygen Frog, LLC, Oxygen Frog asked the en banc court to review the following question:

  • “Whether or not the Panel’s decision that allowing any witness testimony on any aspect of obviousness, even using the standard dictionary definition of the commonly used word ‘obvious,’ by a non-Fed. R. Evid. 702 (‘Rule 702’) witness by a trial judge constitutes abuse of discretion.”

In CG Technology Development, LLC v. FanDuel, Inc., CG Technology asked the en banc court to review the following three questions:

  1. Whether “the panel impermissibly engaged in appellate factfinding to read the primary obviousness reference . . . in such a way as to affirm unpatentability under a new claim construction that the Board had never applied.”
  2. Whether “[t]he panel erred not only by engaging in the impermissible factfinding, but also by invoking the ‘harmless error’ doctrine.”
  3. Whether “Arthrex, Inc. v. Smith & Nephew, Inc. [] undermines the prior holding of this Court that the Director has authority to delegate institution to APJs under 35 U.S.C. § 314.”

In Stuart v. Rust-Oleum Corporation, Rust-Oleum asked the en banc court to review the following three questions:

  1. “Whether this Court erred by vacating and remanding this case based on an Appointments Clause challenge[] raised for the first time in a single pre-briefing motion before this Court.”
  2. “Whether this Court erred by holding that APJs are principal officers under the Appointments Clause.”
  3. “Whether this Court erred by holding that the appropriate remedy in a case like this one is to vacate and remand the PTAB’s Final Written Decision.”

In Polaris Innovations Limited v. Kingston Technology Co. Inc., the government asked the en banc court to review the following two 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. “How to remedy any Appointments Clause defect in the Patent Trial and Appeal Board.”

In Diem LLC v. BigCommerce, Inc., BigCommerce asked the en banc court to review the following question:

  • Whether the Federal Circuit’s “‘prevailing party’ jurisprudence has diverged from most sister circuits in contradiction of Supreme Court law.”

New Responses

In Customedia Technologies, LLC v. DISH Network Corporation, DISH Network filed a response arguing the petition should be denied because the Federal Circuit “has already considered Customedia’s principal argument and determined that Customedia waived any Appointments Clause challenge.” DISH Network further argues that Customedia “waived and forfeited any Appointments Clause challenge by failing to properly present it on appeal.” DISH Network also argues that Customedia’s new argument, that “[t]he Director’s delegation under 37 C.F.R. § 42.4(a) of institution authority to APJs acting as principal officers cannot be squared with 35 U.S.C. § 324,” is also forfeited and waived because “Customedia did not present it in any of its numerous supplemental briefs, notices, motions, or requests for reconsideration.”

New Amicus Briefs

Three amicus briefs were filed in Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc.

Industrial Designers Society of America, Inc. (“IDSA”) filed an amicus brief in support of granting the petition for rehearing. IDSA argues that “branding on an accused product is irrelevant to the design patent infringement analysis,” and the inclusion of branding on the accused product in the infringement evaluation both “dramatically increases the complexity of decision-making for the consumer, most importantly, and necessarily distorts the accurate application of the ordinary observer test.”

A “Group of Interested Practitioners” also filed an amicus brief in support of granting the petition for rehearing. The Practitioners argue that “[t]he broad wording in the panel’s opinion . . . appears to create a sweeping new rule governing the design patent infringement analysis.” Furthermore, they contend, it “appears to directly contradict longstanding Supreme Court and Federal Circuit precedent that the analysis must compare only the patented design and the accused design—here a fabric pattern—and not incorporate labeling (e.g., logos, brand names, tags, trademarks, etc.).” Moreover, the Practitioners maintain that such contradiction “threatens the integrity and reliability of the design patent system, and jeopardizes the value of millions of design patents.”

Bison Designs, LLC and Golight, Inc. filed a third amicus brief in support of granting the petition for rehearing. In their brief, Bison Designs and Golight, similar to the position taken by the the Practitioners, argue that the panel opinion “appears to create a sweeping new rule governing design patent infringement analysis” and “appears to represent a dramatic departure from established precedent.” Bison Designs and Golight urge the Court to “grant the petition for rehearing and clarify the extent to which the incorporation of a logo in a design may distinguish the overall design from a patent.”


The Federal Circuit denied the petition for rehearing en banc in HZNP Finance Limited v. Actavis Laboratories UT, Inc., a case presenting a question related to the definiteness requirement. Notably, Judge Lourie authored a dissenting opinion joined by Judges Newman, O’Malley, and Stoll. There they explain they would “rehear this case en banc to clarify that . . . ‘consisting essentially of’ language does not render . . . claims that do not recite advantages of an invention or methods of measuring them indefinite.”