For the first time since 2008, the United States Court of Appeals for the Federal Circuit issued an en banc decision in a design patent case — an event usually reserved for decisions that impact exceptionally important legal questions or questions involving prior precedent. In LKQ v. GM Global Technology Operations, No. 2021-2348, the Federal Circuit’s full panel decided to address the ongoing appropriateness of the Rosen-Durling test for determining obviousness within design patents. According to the Federal Circuit’s en banc panel, the Rosen-Durling test is no longer appropriate in light of the obviousness analysis endorsed by the Supreme Court in KSR International v. Telflex, 550 U.S. 398 (2007).

But what is an en banc ruling? And for litigators, what is the practical impact?

These questions arise far more often than most practitioners might care to admit. Below is some simple guidance.

What is an en banc ruling?

Historically, en banc means “from the bench.” Wex. Cornell Law School. Retrieved 17 Oct. 2021. Unlike ordinary three-judge merits panels at the Federal Circuit, an en banc panel involves all active judges sitting simultaneously. And yes, the “active” requirement is of key importance. In fact, the Internal Operating Procedures for the United States Court of Appeals for the Federal Circuit expressly denote which judges do not qualify as “active” for purposes of participating in an en banc panel (“Judges who are recused or disqualified from participating in an en banc case are not counted as active judges … ”).

Colloquially, lawyers associate en banc rulings with precedential rulings — and they would be somewhat correct in doing so. But precedential rulings and en banc rulings are not completely interchangeable. For example, a precedential ruling cannot, itself, be used to overcome an en banc ruling, nor should it, as such, would undoubtedly raise questions involving stare decisis. Speaking in broad strokes, en banc consideration “is required to overrule a prior holding of this (the Federal Circuit) or a predecessor court expressed in an opinion having precedential status,” whereas precedential disposition is used “to inform the bar and interested persons other than the parties” of the court’s ruling and rationale(s).

A deeper dive into the en banc procedure.

En banc petitions may be filed for hearings, as well as rehearings. And, a petition for an en banc hearing, or rehearing, may also be made for motions or other matters not involving the merits of the case. However, as noted by the Internal Operating Procedures, en banc hearings are rare, and are only convened for the following reasons:

1. Necessity of securing or maintaining uniformity of decisions;
2. Involvement of a question of exceptional importance;
3. Necessity of overruling a prior holding of this or a predecessor court expressed in an opinion having precedential status; or
4. The initiation, continuation, or resolution of a conflict with another circuit.

The en banc criteria and process, explained.

“A party seeking en banc consideration must typically show that either the [original three-judge merits panel] has (1) failed to follow existing decision of the U.S. Supreme Court or Federal Circuit precedent or (2) followed Federal Circuit precedent that the petitioning party now seeks to have overruled by the court en banc.”

The process for seeking en banc consideration begins when a party prepares an en banc petition. After the petition is filed, the clerk circulates the petition for en banc hearing — or rehearing — to the Federal Circuit judges for a series of reviews. Then, if deemed necessary, any judge may request a response.

If a response is requested, and one is subsequently filed, the response will then be circulated to the judges. If, after viewing the response, any judge elects to initiate a poll, the poll is circulated in order to determine whether to grant the petition. When a poll is requested, the chief judge shall distribute an en banc ballot containing the following choices: (i) deny en banc review; (ii) hear or rehear the appeal en banc; or (iii) defer voting pending a conference of the judges.

If a majority of the active judges respond to the poll by voting to hear or rehear the appeal en banc, a committee of judges will be selected to prepare a vote sheet setting forth any questions proposed to be addressed by the court. Then, the clerk will enter a schedule and the en banc hearing will proceed.

When was the last time this happened?

The last utility patent case to receive an en banc panel was in 2018, when the full court heard arguments in Click-to-Call Technologies, LP v. Ingenio, No. 15-1242. There, the question before the full court was whether 35 U.S.C. § 315(b)’s time bar applied to bar institution when an Inter partes review (IPR) petitioner was served with a complaint for patent infringement more than one year before filing its petition, but the district court action in which the petitioner was so served was voluntarily dismissed without prejudice. The en banc court held that the time bar applied in such a scenario.

Taft Takeaways

• Understand that en banc panels are rare.
• En banc panels may address questions of exceptional legal importance and/or questions involving a conflict across circuits.
• An en banc ruling will override a precedential ruling, but a precedential ruling will not override an en banc ruling.

Additional Resources

Other recent en banc rulings from the Federal Circuit cover a range of topics:

• Nantkwest, Inc. v. Iancu, No. 16-1794 (holding that 35 U.S.C. § 145 does not authorize reimbursement of attorneys’ fees if a disappointed patent applicant initiates a civil action to obtain a patent after an unfavorable decision at the Patent Trial and Appeal Board);
• Wi-Fi One, LLC v. Broadcom Corp., No. 15-1944, 15-1945, 15-1946 (revisiting the question of whether the bar on judicial review of institution decisions in § 314(d) applies to time bar determinations made under § 315(b));
• Aqua Products, Inc. v. Matal, No. 15-1177 (holding that 35 U.S.C. § 316(e) unambiguously requires a petitioner to prove all propositions of unpatentability, including for amended claims proffered during an IPR);
• Apple Inc. v. Samsung Electronics Co., No. 15-1171, 15-1195, 15-1994 (affirming Federal Circuit’s understanding of the appellate function as being limited to deciding the issues raised on appeal by the parties, deciding these issues only on the basis of what is contained in the record, and as requiring appropriate deference be applied to the review of fact findings);
• Medicines Company v. Hospira, Inc., No. 14-1469, 14-1504 (discussing what constitutes an on-sale barring event when the patentable subject matter is a product by process); and
• Lexmark int’l, Inc. v. Impression Products, Inc., No. 14-1617, 14-1619 (considering whether two decisions of this court concerning the uncodified doctrine of patent exhaustion — one decision from 1992, the other from 2001 — remain sound in light of later Supreme Court decisions).