En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include four new petitions, three of which related to Arthrex and another related to obviousness, two responses to petitions raising questions related to the statutory experimental use exception and obviousness, and the denial of three petitions. Here are the details.

New Petitions

New petitions were filed in four cases.

In Vaporstream, Inc. v. Snap Inc., Snap asked the en banc court to review the following two questions:

  1. “Whether the appointment of Administrative Patent Judges to the PTAB violates the Appointments Clause of the U.S. Constitution, Art. 2, § 2, cl. 2, as the panel in Arthrex decided.”
  2. “If the answer to the first question is ‘yes,’ what appropriate judicial remedy, if any, can be applied to cure the constitutional violation?”

In Uniloc 2017 LLC v. Cisco Systems, Inc., Cisco Systems asked the en banc court to review the following question:

  • Whether “[i]n vacating the Final Written Decision and remanding this case in light of Arthrex, the panel overlooked the express limitations of Arthrex and the longstanding and numerous authorities holding that arguments not properly briefed in an appellant’s opening brief are not preserved for appeal.”

In Koninklijke Philips N.V. v. Google LLC, Koninklijke Philips asked the en banc court to review the following question:

  • “Can a stated combination of one reference with ‘general knowledge,’ the alleged general knowledge is based on the teaching of a single second reference, be used to circumvent consideration of the totality of the second reference, such that a Petitioner may opt to avoid portions of the second reference that would lead away from, or are incompatible with, the inventor’s solution?”

In Polaris Innovations Limited v. Kingston Technology Company, Polaris Innovations asked the en banc court to review the following three questions:

  1. “Whether severance of the tenure protections for Administrative Patent Judges (‘APJs’) was not available to the Arthrex panel to remedy the violation of the Appointments Clause by the IPR statute, 35 U.S.C. § 311 et seq, because Congress would not have denied APJs such protection.”
  2. “Whether the Arthrex decision’s removal of APJ tenure protections is insufficient to cure the violation of the Appointments Clause by the IPR statute.”
  3. “Whether it was proper for the panel to remand this matter for new proceedings before a three-judge panel of non-tenured APJs whose appointment continues to violate the Appointments Clause.”

New Responses

Responses to petitions were filed in two cases.

In Amgen Inc. v. Hospira, Inc., Amgen argues in its response that en banc review is not warranted because “the panel correctly concluded that the Safe Harbor jury instruction was not legal error.” Amgen further contends that, in presenting its questions for en banc review, “Hospira ignores the factual nature of the Safe Harbor defense and the jury’s verdict, and improperly reframes the statutory inquiry to read ‘reasonably related’ out of the inquiry.” Finally, Amgen notes that “[t]he panel correctly rejected Hospira’s attempt to read into the claim an additional method step” and thus, “the panel correctly affirmed the district court’s claim construction.”

In FOX Factory, Inc. v. SRAM, LLC, FOX Factory argues in its response that the Court should deny SRAM’s petition for rehearing en banc because “[w]ithout even mentioning, Therasense, SRAM and Judge Michel erroneously accuse the panel of making up new rules and tests that, in actuality, flow directly from the holding of that case and the particular facts of this one.” In all, FOX Factory centers its response around the argument that “the panel did not fashion any new rigid ‘rule’ or ‘test’,” rather the panel “applied this Court’s relevant precedents to this case’s particular facts.”


The Federal Circuit denied the petitions for en banc rehearing in the following three cases: