En Banc Activity / Petitions

Here is an update on recent en banc activity at the Federal Circuit in patent cases. Highlights include new petitions filed in six cases raising questions related to the Appointments Clause, claim construction, and implied licenses, one request by the Federal Circuit for a response to a petition raising questions related to collateral estoppel and inter partes review, and the denial of three petitions raising questions related to transfer, waiver, and design patent infringement. Here are the details.

New Petitions

New petitions were filed in six cases.

Intervenor Iancu, Director of the U.S. Patent and Trademark Office, filed four new petitions in Stuart v. Rust-Oleum Corporation, Mirror Imaging, LLC v. Fidelity Information Services, Vilox Technologies, LLC v. Unified Patents Inc., and Pfizer Inc. v. Merck Sharp & Dohme Corp. In each case, Director Iancu asked the en banc court to review the following questions:

  1. “This case presents the same three questions presented in Arthrex . . . in which all parties have petitioned for en banc review:
    • 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.
    • Whether this Court should entertain an Appointments Clause challenge a litigant forfeited by failing to raise it before the agency.
    • How to remedy any Appointments Clause defect in the Patent Trial and Appeal Board.”
  2. “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.”

In Pfizer Inc. v. Merck Sharp & Dohme Corp., in addition to the petition filed by Director Iancu, Sanofi Pasteur and Merck Sharp & Dohme also filed petitions for rehearing en banc. Here are the questions presented to the en banc court by both parties:

Sanofi Pasteur presented the following questions:

  1. “Whether Administrative Patent Judges (‘APJs’) of the Patent Trial and Appeal Board (‘PTAB’) are inferior or principal officers of the United States.”
  2. “If APJs are principal officers, what remedy, if any, is warranted for any defect in their appointment.”

Merck Sharp & Dohme presented the following question:

  • “Whether the Administrative Patent Judges of the Patent Trial and Appeal Board were appointed in violation of the Constitution, when such a constitutional challenge must be raised, and what the proper remedy for any violation is.”

In Samsung Electronics America v. Prisua Engineering Corp., Prisua Engineering asked the en banc court to review the following question:

  • Whether the panel’s decision to remand this case to the to the Patent Trial and Appeal Board “for consideration of whether the Board can apply prior art to claims the Board found itself unable to construe” is “contrary to well-established and widely followed decisions of this Court holding that claims must be construed before anticipation or obviousness can be evaluated in view of prior art, and that claims therefore cannot be both indefinite and anticipated, or both indefinite and obvious.”

In Cheetah Omni LLC v. AT&T Services, Inc., Cheetah Omni asked the en banc court to review the following two questions:

  1. “Does the Supreme Court’s decision in Rodriguez v. Fed. Deposit Ins. Corp. require this Court to abrogate its federal common law rule that, regardless of state contract law, continuation patents are implicitly licensed unless there is a clear intent to the contrary?”
  2. “Should the Court limit its legal estoppel-based implied patent license doctrine to cases where an implied license is ‘necessary to practice an expressly licensed patent’?”

New Requests for Responses

The Federal Circuit invited a response to the petition filed in Personal Audio, LLC v. CBS Corporation, which presented questions regarding the collateral estoppel effect of inter partes review.


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