En Banc Activity

Here is an update on recent en banc activity at the Federal Circuit. Highlights include a new petition for rehearing in a patent case concerning the presumption of nexus related to secondary considerations of non-obviousness, along with three denials of rehearing in cases raising questions related to Rule 36, anticipation, secondary considerations of non-obviousness, and design patent infringement. Here are the details.

New Petition

Jager Pro, Inc. filed a petition for rehearing in Jager Pro, Inc. v. W-W Manufacturing Co. Here is the question presented:

  • “What is required for a patent owner to be accorded the presumption of nexus between a commercial product and challenged patent claims?”


Since our last update, the Federal Circuit denied rehearing in the following cases:

  • Schwendimann v. Neenah, Inc., which asked the court to review the following questions:
    • “Where the Panel is presented with inconsistent claim constructions from the Board and the District Court, is it permissible for the Panel to issue a Rule 36 affirmance without indicating which claim constructions were held correct, thereby making it impossible for Patent Owner and the public to know how the claims were construed, and making it impossible for Patent Owner to seek review of the claim constructions?”
    • “Assuming, arguendo (and with no way of knowing), that the Panel found that the District Court’s constructions of the claim terms were correct (and either rejected the Board’s claim constructions or somehow reconciled the two sets of claim constructions), was it erroneous for the Panel to invalidate claims as anticipated where there was no express or inherent disclosure that the prior art reference contained each of the claim limitations in the invalidated patent claims?”
  • Team Worldwide Corporation v. Intex Recreation Corp., which asked the court to review the following question:
    • “How much evidence is needed for a company with a patented, hugely successful product to be credited with secondary considerations of non-obviousness and maintain the validity of its patent claims?”
  • Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., which asked the cout to review the following question:
    • “Did the panel err in limiting comparison prior art used for design patent infringement analysis by (1) permitting consideration of functional and (2) importing the anticipation standard?”