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 seven cases raising questions related to the Administrative Procedure Act, obviousness, patent eligibility, and the Appointments Clause, and the denial of four petitions raising questions related to collateral estoppel and inter partes review, the Appointments Clause, and obviousness. Here are the details.

New Petitions

New petitions were filed in seven cases.

In Spring Ventures, Ltd. v. Google LLC, Spring Ventures asked the en banc court to review the following question:

  • Whether “the panel decision conflicts with this Court’s precedent with respect to the evidentiary basis and the explanation requirement imposed by the [Administrative Procedure Act].”

In Uber Technologies, Inc. v. X One, Inc., X One asked the en banc court to review the following question:

  • Whether “[t]he panel improperly substituted its own obviousness determination for one that should have been made in the first instance by the Board, thus intruding on the domain entrusted to the Board by Congress.”

In Mantissa Corporation v. OnDot Systems, Inc., Mantissa asked the en banc court to review the following three questions:

  1. “Is a claimed process using generic computer hardware and software patent eligible under Alice Step One if it is ‘directed to an improvement of an existing technology’, Enfish, 822 F.3d at 1337, as distinguished from improving ‘computer functionality’, Aatrix, 890 F.3d at 1357?”
  2. “Can claimed inventions be proven patent-ineligible under Alice Step Two by clear and convincing evidence if the challenger has presented no accepted facts for ineligibility and the patentee has presented accepted facts for eligibility from: (i) the patent specification, the prosecution history, and the prior art; (ii) the claims; (iii) descriptions of existing technologies; (iv) industry praise of the claimed invention; (v) testimony from two skilled artisans; and (vi) admissions of the challenger?”
  3. “May a district court assert factual evidence outside the record without giving the patentee notice or opportunity to rebut the evidence, and rely primarily on this evidence for summary judgment of patent ineligibility under Alice?”

In Intel Corporation v. Alacritech, Inc. (Alacritech I), Alacritech, Inc. v. Intel Corporation (Alacritech II), Alacritech, Inc. v. Intel Corporation (Alacritech III), and Alacritech, Inc. v. Intel Corporation (Alacritech IV), Intel asked the en banc court to review the following four questions:

  1. “Whether the case should be allowed to proceed on the merits when no party is requesting remand based on Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019).”
  2. “Whether litigants who failed to raise an Appointments Clause challenge before the Patent Trial and Appeal Board (‘PTAB’ or ‘Board’) should be permitted to raise such a challenge on appeal when there is no need for timely resolution or remedial action.”
  3. “If administrative patent judges (‘APJs’) are principal officers, what remedy is warranted for this and similarly-situated cases.”
  4. “Whether APJs of the PTAB are inferior or principal officers of the United States under the Appointments Clause.”


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