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 filed in thirteen cases raising questions related to the Appointments Clause, venue, and claim construction and the denial of six petitions raising questions related to non-obviousness, anticipation, inherency, procedure, the statutory experimental use exception, and the Appointments Clause. Here are the details.

New Petitions

New petitions were filed in thirteen cases.

In seven cases (Document Security Systems, Inc v. Seoul Semiconductor Co., Agrofresh, Inc. v. UPL Limited, Vaporstream, Inc. v. Snap Inc., Concert Pharmaceuticals, Inc. v. Incyte Corporation, Polaris Innovations Limited v. Kingston Technology Co. (Polaris I), Polaris Innovations Limited v. Kingston Technology Co. (Polaris II), Polaris Innovations Limited v. Kingston Technology Co. (Polaris III)), the government presented the following questions:

  1. “This case presents the same three questions presented in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), in which all parties have petitioned for en banc review:”
    • A. “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.”
    • B. “Whether this Court should entertain an Appointments Clause challenge a litigant forfeited by failing to raise it before the agency.”
    • C. “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 Vaporstream, Inc. v. Snap Inc., Snap Inc. also presented its own 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 Concert Pharmaceuticals, Inc. v. Incyte Corporation, Incyte Corporation also presented its own questions:

  1. “Whether the appointment of Administrative Patent Judges (APJs) to the Patent Trial and Appeal Board (PTAB) violated the Appointments Clause of the U.S. Constitution, U.S. Const., Art 2, § 2, cl. 2, as the panel in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), concluded.”
  2. “What appropriate judicial remedy, if any, can be fashioned to ameliorate such a constitutional violation of the Appointments Clause, if found.”
  3. “Whether this Court should entertain an Appointments Clause challenge that a litigant forfeited by failing to raise it before the agency.”
  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.”

In Polaris Innovations Limited v. Kingston Technology Co. (Polaris I), Polaris Innovations Limited v. Kingston Technology Co. (Polaris II), and Polaris Innovations Limited v. Kingston Technology Co. (Polaris III), Polaris Innovations Limited also presented its own 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.”

In Polaris Innovations Limited v. Kingston Technology Co. (Polaris I), Polaris Innovations Limited v. Kingston Technology Co. (Polaris II), and Polaris Innovations Limited v. Kingston Technology Co. (Polaris III), Kingston Technology also presented its own questions:

  1. “Whether APJs are inferior officers under the statutory scheme enacted by Congress, without their removal protection stripped; and”
  2. “Assuming removal protection must be stricken from the statute to render APJs inferior officers, whether Board decisions must be remanded to be reheard by a new panel.”

In Alacritech, Inc. v. Intel Corporation (Alacritech II), Alacritech, Inc. v. Intel Corporation (Alacritech III), and Alacritech, Inc. v. Intel Corporation (Alacritech IV), Alacritech presented the same question:

  • “[W]hether the Arthrex panel erred in severing the removal provisions necessary to sustain PTAB judges’ independent and impartiality, instead of striking down the entire statute.”

In In re Google LLC, Super Interconnect Technologies, LLC presented the following question:

  • “[W]hether 28 U.S.C. § 1400(b) ‘requires the regular, physical presence of an employee or other agent of the defendant conducting the defendant’s business at the alleged “place of business.”'”

In Mira Advanced Technology v. Microsoft Corporation, Mira Advanced Technology filed a petition stating that “[t]his case has only one single issue, namely, whether the key claim term ‘contact list’ is properly construed by the Board.”

In SAP America, Inc. v. Arunachalam, a pro se party presented a petition for en banc rehearing.

Denials

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