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 five cases raising questions related to claim construction, the Appointments Clause, and obviousness; an invitation for a response in one case raising questions related to inequitable conduct and obviousness; the denial of four petitions raising questions related to the Appointments Clause, venue, damages, and claim construction; and the withdrawal of one petition raising questions related to the Administrative Procedure Act. Here are the details.

New Petitions

New petitions were filed in five cases.

In Personalized Media v. Apple Inc., Apple asked the en banc court to review the following question:

  • “Whether a claim construction that is otherwise proper based on the claim language and specification can be narrowed based on prosecution history that does not clearly and unmistakably dictate a narrower construction.”

In three cases entitled North Star Innovations v. Micron Technology, Inc., Micron presented the following common question:

  • Whether “[r]efusing to hold North Star to its forfeiture” by not making an Appointments Clause challenge to the Board “is contrary to the precedent of the Supreme Court and this Court.”

To access the case pages, click here, here, and here.

In Spigen Korea Co. v. Ultraproof Inc., Ultraproof presented the following two questions:

  1. Whether “[t]he Court failed to appreciate the inventor’s implicit admission that the ’218 patent is a suitable primary reference in his conception drawing.”
  2. Whether “[t]he Court misapprehended the effect of having the inventor’s actual references he considered in conceiving the patented design by requiring that one of the references be a ‘basically the same’ primary reference for obviousness.”

New Invitation for Response

The Federal Circuit invited a response to a petition in one case:


The Federal Circuit denied petitions in the following four cases:

Withdrawn Petitions

A petition was withdrawn in one case: