En Banc Activity

Here is an update on recent en banc activity at the Federal Circuit. Last week the court heard oral argument in the en banc veterans case. As for petitions in patent cases, highlights include a new petition raising a question related to claim construction; new responses to petitions raising questions related to inter partes review and Rule 36 summary affirmances; a new invitation to respond to a petition raising questions related to deference to the Patent Trial and Appeal Board; a new amicus brief in a case raising questions related to inter partes review; and the denial of two petitions raising questions related to patent eligibility and transfer of venue. Here are the details.

En Banc Case

The court heard a lengthy (over 2 hour!) oral argument in Arellano v. Tran, a veterans cases addressing equitable tolling. For more information, see our argument recap. You can listen to the entire oral argument here.

En Banc Petitions

New Petition

A new petition was filed in one patent case.

In SIMO Holdings, Inc. v. Hong Kong uCloudlink Network Technology Ltd., SIMO Holdings asked the en banc court to review the following question:

  • “When construing claims of the form ‘a plurality of’ followed by a list of items separated by the word ‘and,’ whether the panel is correct that SuperGuide (which Petitioner contends has been overruled by the en banc Court for the pertinent point) provides for a canon of claim construction compelling the elevation of certain grammatical constructs above the intrinsic record of a patent, particularly where (1) there are other, more reasonable grammatical constructs; (2) invocation of a particular grammatical construct contradicts the specification; and (3) invocation of a particular grammatical construct results in claim scope not supported by the specification.”

New Responses

In Apple, Inc. v. Maxell Ltd., the USPTO (as Intervenor) filed its response to Apple’s petition for en banc review. In its petition, Apple argued that the Patent Trial and Appeal Board incorrectly decided to deny Apple’s petition for inter partes review. Apple asserted that the “NHK-Fintiv rule,” a rule adopted by the Director of the USPTO that “permits denial solely because of pending litigation involving the same patent claims[,] . . . exceeds the Office’s statutory authority, is arbitrary and capricious, and violates the rulemaking requirements of the Administrative Procedure Act (‘APA’).” In response, the USPTO argues that the plain text of the statute allows the agency to decide “whether to institute inter partes review,” and that “this Court’s consistent rulings reflect Congress’s choice to empower—but never require—the USPTO to institute an IPR.”

In Waterblasting, LLC v. Hirshfeld (formerly Waterblasting, LLC v. Iancu), the USPTO filed its response to Waterblasting’s petition for en banc review. In its petition, Waterblasting argueed that the court’s Rule 36 affirmance without opinion of a PTAB decision violated the Supreme Court’s precedent in SEC v. Chenery Corp. because “the panel’s affirmance could not have been based on the same grounds as the Board based its decision.” In response, the USPTO argues that “[t]he panel here simply issued a Rule 36 affirmance of the Patent Trial Appeal Board’s decision finding all of the claims at issue obvious over the combination of two prior art references,” and that “Waterblasting presents a fact bound issue that requires neither panel nor en banc rehearing.”

New Invitation for Response

The Federal Circuit invited a response to a petition in the following case:

New Amicus Brief

The Association of Public and Land-grant Universities (“APLU”) filed an amicus brief in Board of Regents of the University of Texas System v. Baylor College of Medicine. In the brief, APLU argues that the panel’s decision, “holding that sovereign immunity does not apply in IPRs,” will “saddle public universities with substantial litigation costs, divert resources (including the time of research faculty) away from the core mission of these state institutions, and impede the ability of state universities to disseminate technology – due to the cloud of uncertainty that envelops a patent subject to an IPR.”


The Federal Circuit denied petitions in the following two cases: