En Banc Activity

Here is an update on recent en banc activity at the Federal Circuit. Highlights include four denials of petitions for rehearing en banc in patent cases concerning questions of patent eligibility, printed publications, and inter partes review. Here are the details.


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

In CyWee Group Ltd. v. ZTE (USA), Inc., the Federal Circuit denied rehearing CyWee Group’s petition, which asked the Court to review the following questions:

  1. “Whether the Panel erred in upholding joinder of a party under 35 U.S.C. 315(c), where the joined party did not ‘properly file a petition’ for inter partes review within the statutory time limit.”
  2. “Whether the Panel erred in failing to hold a time-barred joined petitioner estopped from reneging on the very conditions it voluntarily assumed to attain joinder.”

In Plotagraph, Inc. v. Lightricks, Ltd, the Federal Circuit denied rehearing Plotagraph’s question of “whether patent prosecution history and claim interpretation have any effect upon how a claim is viewed under step one of the patent eligibility test set forth in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).”

In Weber, Inc. v. Provisur Technologies, Inc., the court denied review of the following questions:

  1. “Does the Panel’s precedential decision articulate a new bright-line rule for determining whether a reference is a publicly accessible printed publication eligible to be used in an [inter partes review] under 35 U.S.C. § 311 that conflicts with this Court’s prior precedent requiring a careful case by case assessment of all facts and circumstances related to the reference’s disclosure?”
  2.  “In evaluating whether substantial evidence supports the Board’s factual determination that a printed publication is publicly accessible, is the Panel permitted to engage in its own fact-finding, identify contrary facts in the record, and re-weigh evidence without deference to the Board’s factual findings and credibility determinations?”

Finally, the Federal Circuit denied rehearing in Wildcat Licensing WI LLC v. Atlas Copco Tools and Assembly Systems LLC, which asked the court to review the following questions:

  1. “Whether the proper standard of review for determining whether the Board improperly relied on ‘new’ arguments not raised in an [inter partes review] petition is de novo or abuse of discretion.”
  2. “Whether under 35 U.S.C. § 312(a)(3)—which requires IPR petitions to ‘identif[y] . . . with particularity . . . the evidence that supports the grounds for the challenge to each claim’—the Board may hold a claimed invention obvious based upon a new theory relying on an embodiment of the prior art that was not identified in the IPR petition.”