On October 7, 2016, the Federal Circuit issued another decision in the ongoing patent litigations between Apple and Samsung that began in the Northern District of California. The district court had found at summary judgment that Samsung infringed one of Apple’s patents.  The jury subsequently determined that Samsung infringed two others, and that the asserted claims were not invalid.  The district court then denied Samsung’s motions for judgment as a matter of law (“JMOL”) and entered judgment accordingly.  In the subsequent appeals (2015-1171, 2015-1195, 2015-1994) a panel of the Federal Circuit (Chief Judge Prost, Judge Dyk, and Judge Reyna) reversed the district judge’s denial of JMOL with regard to the jury’s verdict of infringement of one patent and non-obviousness of two others.

Apple sought rehearing en banc, arguing that the panel had erred by relying upon “extra record evidence” to modify one of the parties’ agreed-upon claim constructions – evidence that the panel had located through its own independent research.  According to Judge Dyk’s dissent from the opinion of the en banc majority, for the first time in 26 years the Court granted en banc review in an obviousness case.  And the Court did so without further briefing from the parties, amici, or the government.

The en banc majority opinion and three dissents (authored by, not surprisingly, the members of the original panel) stretch more than one hundred  pages and include a fascinating obviousness analysis focusing on, in particular, motivation to combine and the role of secondary considerations.  The decision is, in this author’s opinion, a “must read” for that reason alone.  This article, however, concerns the Court’s grant of en banc review in the first place, which all three dissenting Judges condemned in their opinions.

Federal Rule of Appellate Procedure 35 provides that an “en banc hearing or rehearing is not favored and ordinarily will not be ordered unless: (1) en banc consideration is necessary to secure or maintain uniformity of the court’s decisions; or (2) the proceeding involves a question of exceptional importance.”  The majority states, “we did not take this case en banc to decide important legal questions about the inner workings of the law of obviousness.  We have applied existing obviousness law to the facts of this case.  We took this case en banc to affirm our understanding of our appellate function, to apply governing law, and to maintain our fidelity to the Supreme Court’s Teva decision.”  (Slip. Op, at 5.)

While these are no doubt worthy endeavors, in his dissent, Judge Reyna harshly criticizes the decision to take the case en banc, noting that “[w]hen a panel opinion is ‘not viewed as having changed the law,’ disagreement with the panel’s decision ‘is not a sufficient reason for en banc review.’” (Slip Op., at 3 (citing Dow Chem. Co. v. Nova Chems. Corp. (Canada), 809 F.3d 1223, 1227-28 (Fed. Cir. 2015) (Moore J., joined by Newman, O’Malley, and Taranto, JJ., concurring in the denial of rehearing en banc)).)  His Honor goes on to argue that the majority “claims to apply existing law to the facts of the case.  The majority opinion does not explore the applicability of existing law, or the first interpretation of a statute.  The opinion does not claim to change the law or lead to a greater understanding of the law as its result.  In sum, the majority’s en banc review is simply a do over.”  (Id., at 5.)

Whether one agrees with the ultimate outcome or not, there does seem to be some tension between the majority’s admitted application of existing law to the facts of the case and the standard for en banc review articulated in FRAP 35 and the Federal Circuit case law interpreting the requirements of that Rule.  The majority opinion does not purport to reconcile conflicting panel decisions, and the majority does not characterize its decision as one of “exceptional importance” as that term is used in the Rule.  Instead, the opinion appears to be something of a “do over,” as Judge Reyna noted in His Honor’s dissent.

It is difficult to know what, if anything, to take from the Court’s decision to grant en banc review in this particular case.  It may simply be a situation where certain members of the Court viewed the outcome as incorrect and felt the compelling need to fix it, especially given the high profile nature of the litigation.  It may be that the judges who joined in the decision to grant rehearing were concerned that the panel had gone beyond the record to make factual findings and, for that reason, the decision set a dangerous precedent (in the colloquial sense of the term).  Whatever the reason, the opinion offers valuable insight into the Judges’ differing views on the law of obviousness and the appellate court’s role in resolving questions that underlie an obviousness determination.  And if nothing else, the decision to grant en banc review will provide powerful ammunition to parties asking the Court to rehear their cases, and it will no doubt be cited in the many petitions for rehearing that are likely to be filed going forward.