En Banc Activity / Featured
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Here is an update on recent en banc activity at the Federal Circuit. Since our last update, the court heard oral argument in the en banc case challenging President Trump’s tariffs, and the court denied three petitions for en banc review, two in patent cases and one in a takings case. Notably, in the denial in one of the patent cases, Chief Judge Moore and Judge Stoll issued a concurring opinion and Judges Dyk and Hughes issued a dissenting opinion. Here are the details.

En Banc Case

Since our last update, the Federal Circuit heard oral argument in V.O.S. Selections, Inc. v. Trump, the en banc case challenging President Trump’s tariffs. We will post an argument recap soon.

En Banc Petitions

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

Notably, Chief Judge Moore and Judge Stoll concurred and Judges Dyk and Hughes dissented from the decision to deny en banc review in Kroy IP Holdings, LLC v. Groupon, Inc. Here are the introductions to their opinions:

Kroy IP Holdings, LLC v. Groupon, Inc.

MOORE, Chief Judge, with whom STOLL, Circuit Judge, joins, concurs with denial of the petition for rehearing en banc.

The Supreme Court has repeatedly reprimanded us for creating patent-specific departures from well-established principles. Collateral estoppel is a well-established doctrine. The dissent advocates for a patent-specific collateral estoppel rule contrary to Supreme Court precedent. Collateral estoppel does not apply when, as here, the differing standard of proof—preponderance of the evidence before the PTAB versus clear and convincing evidence in district court—materially alters the question of invalidity. See B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 154 (2015) (explaining collateral estoppel does not apply “if the second action involves application of a different legal standard,” such as a different burden of proof); Grogan v. Garner, 498 U.S. 279, 284–85 (1991) (explaining collateral estoppel does not apply when a prior judgment was rendered under a preponderance of the evidence standard and the subsequent matter requires proof by clear and convincing evidence); 18 Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice & Procedure § 4422 (3d ed. 2016) (“[A] party who has carried the burden of establishing an issue by a preponderance of the evidence is not entitled to assert preclusion in a later action that requires proof of the same issue by a higher standard.”). That a patent claim is invalid by a preponderance of the evidence does not mean it is also invalid by clear and convincing evidence.

Policy implications cannot override the desire for uniformity in the application of law across different subject matters. Moreover, litigants can more efficiently and cost-effectively challenge the relevant claims through IPR— including by filing a second petition to cover any claims omitted from the first petition—rather than litigating collateral estoppel in district court. Given the PTAB’s grant of the first petition and invalidation of certain claims of the same patent, it would be odd if the PTAB did not also grant the second petition if it presented a nearly identical substantial question of invalidity.

For these reasons, I concur in the denial of en banc.

DYK, Circuit Judge, with whom HUGHES, Circuit Judge, joins, dissents from denial of petition for rehearing en banc.

We respectfully dissent from the denial of en banc rehearing.

This case presents a significant question: whether, under the Leahy-Smith America Invents Act (“AIA”), decisions of the Patent Trial and Appeal Board (“Board”) determining that particular claims are unpatentable have collateral estoppel effect in district court infringement litigation so that patentably indistinct claims are barred. In holding that there is no such collateral estoppel effect, the panel contradicts our earlier decision in XY, LLC v. Ova Genetics, L.C., 890 F.3d 1282, 1294 (Fed. Cir. 2018) (holding that IPR unpatentability decisions have “immediate issue-preclusive effect” when affirmed by this court), fails to recognize that Supreme Court precedent makes the application of collateral estoppel dependent on Congressional intent, and undermines the central purpose of the AIA—to make Board decisions a substitute for district court invalidity litigation.