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 four cases raising questions related to claim construction, persons who may petition for post-issuance review proceedings, and jurisdiction; three new responses to petitions raising questions related to venue, eligibility, non-obviousness, and claim construction; and the denial of petitions in six cases raising questions related to the Appointments Clause, non-obviousness, and eligibility. Here are the details

New Petitions

New petitions were filed in four cases.

In Deep Green Wireless LLC v. Ooma, Inc., Deep Green Wireless presented the following question:

  • “[T]he panel majority affirmed the Board’s decision, on the basis that the Board’s construction was ‘not inconsistent with the specification’s disclosure.’ But this Court has held that simply checking whether a construction is ‘not inconsistent’ with the specification is not the proper way to determine the broadest reasonable interpretation in light of the specification. See, e.g., Smith, 871 F.3d at 1383 (BRI standard ‘is not simply an interpretation that is not inconsistent with the specification’). Deep Green accordingly requests panel rehearing or rehearing en banc to resolve the conflict between the panel majority’s rationale and controlling precedent of this Court with respect to the determination of the broadest reasonable interpretation of a claim term.”

In Bozeman Financial LLC v. Federal Reserve Bank I and Bozeman Financial LLC v. Federal Reserve Bank II, Bozeman Financial presented the same question:

  • “[H]ow to determine, and whether, our nation’s regional Federal Reserve banks are part of the Federal Government, and thus do not qualify as ‘persons’ under the America Invents Act (AIA) in light of Return Mail, Inc. v. United States Postal Service, 139 S. Ct. 1853, 1865 (2019) (the federal government ‘is not a “person” who may petition for post-issuance review under the AIA’).”

In Intellisoft, Ltd. v. Acer America Corp., Acer America presented the following questions:

  1. “Whether a state trade secret claim that requires resolution of who invented a patent claim, and whether patent claims read on an industry standard, ‘necessarily raises’ a federal issue sufficient for jurisdiction under 28 U.S.C. §1441, per Gunn v. Minton, 568 U.S. 251 (2013), and, whether the panel’s ‘lack of an adequate explanation of the basis’ for relying on a trade secret claim that was never raised violates Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809 (1986).”
  2. “Whether a party must have a state court’s permission to bring patent counterclaims before a case becomes removable under 28 U.S.C. §1454, when every rule of statutory construction refutes that conclusion.”

New Responses

New responses to petitions were filed in three cases.

In In re Google LLC, Google filed its response to the petition, which asked the en banc court to consider “whether 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 Illumina, Inc. v. Ariosa Diagnostics, Inc., Illumina and Sequenom filed their combined response to the petition, which raised a question concerning patent eligibility.

In Collabo Innovations, Inc. v. Sony Corporation, Sony filed its response to the petition, which raised questions related to non-obviousness and claim construction.


The court denied petitions in six cases: