Case: 15-1810
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`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`NOTICE OF ENTRY OF
`
`JUDGMENT ACCOMPANIED BY OPINION
`
`OPINION FILED AND JUDGMENT ENTERED: 11/ 15/2016
`
`The attached opinion announcing the judgment of the court in your case was filed and judgment was entered on
`the date indicated above. The mandate will be issued in due course.
`
`Information is also provided about petitions for rehearing and suggestions for rehearing en banc. The questions
`and answers are those frequently asked and answered by the Clerk's Office.
`
`No costs were taxed in this appeal.
`
`Regarding exhibits and visual aids: Your attention is directed Fed. R. App. P. 34(g) which states that the clerk
`may destroy or dispose of the exhibits if counsel does not reclaim them within a reasonable time after the clerk gives
`notice to remove them. (The clerk deems a reasonable time to be 15 days from the date the final mandate is issued.)
`
`FOR THE COURT
`
`[sz Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
`cc: Peter Andrew Detre
`
`William M. Jay
`Adam R. Lawton
`Michael V. Messinger
`Joseph E. Mutschelknaus
`Brett M. Schuman
`Deirdre M. Wells
`
`_
`
`Jon Wright
`Eleanor M. Yost
`David Zimmer
`
`15-1810 - Unwired Planet, LLC v. Google Inc.
`United States Patent and Trademark Office, Case No. lPR2014-00036
`
`

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`Case: 15-1810
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`fltiniteh fitates Qtnurt of gppeals
`
`for the jfeheral Qliirtutt
`
`UNWIRED PLANET, LLC,
`Appellant
`
`V.
`
`GOOGLE INC.,
`Appellee
`
`2015-1810, 2015-1811
`
`Appeals from the United States Patent and Trade-
`mark Office, Patent Trial and Appeal Board,
`in Nos.
`IPR2014-00036, CBM2014-00005.
`
`Decided: November 15, 2016
`
`WILLIAM M. JAY, Goodwin Procter LLP, Washington,
`DC, argued for appellant. Also represented by ELEANOR
`M. YOST; BRETT M. SCHUMAN, DAVID ZIMMER, San Fran-
`cisco, CA.
`
`JON WRIGHT, Sterne Kessler Goldstein & Fox, PLLC,
`Washington, DC, argued for appellee. Also represented by
`MICHAEL V. MESSINGER, DEIRDRE M. WELLS, JOSEPH E.
`MUTSCHELKNAUS; PETER ANDREW DETRE, Munger, Tolles
`& Olson, LLP, San Francisco, CA; ADAM R. LAWTON, Los
`Angele s, CA.
`
`

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`UNWIRED PLANET, LLC V. GOOGLE INC.
`
`Before REYNA, PLAGER, and HUGHES, Circuit Judges.
`
`REYNA, Circuit Judge.
`
`Unwired Planet, LLC (“Unwired”) appeals from the
`final Written decisions of the Patent Trial and Appeal
`Board (“Board”) in Inter Partes Review (“IPR”) No. 2014-
`00036 and Covered Business Method (“CBM”) Patent
`Review No. 2014-00005. Google Inc. v. Unwired Planet,
`LLC, IPR2014-00036, 2015 WL 1478653 (P.T.A.B. Mar.
`30, 2015) (“IPR Final Decision”); Google Inc. v. Unwired
`Planet, LLC, CBM2014-00005,
`2015 WL
`1519056
`(P.T.A.B. Mar. 30, 2015) (“CBM Final Decision”). For the
`reasons stated below, we affirm the Board’s decision that
`the challenged claims of U.S. Patent No. 7,024,205 (the
`“’205 patent”) are invalid as obvious in the IPR appeal
`and dismiss the CBM appeal as moot.
`
`BACKGROUND
`
`U.S. Patent No. 7,024,205
`
`The ’205 patent is entitled “Subscriber Delivered Lo-
`cation-Based Services.” It describes a system and method
`for providing wireless network subscribers (e.g., cell
`phone users) with prioritized search results based on the
`location of their mobile device (e.g., the nearest gas sta-
`tion). The specification describes how search results can
`be personalized for subscribers by taking into account, for
`example, “favorite restaurants; automobile service plans;
`and/or a wide variety of other subscriber information.”
`’205 patent col. 2 11. 18-19.
`
`the specification also describes how
`In contrast,
`search results can be ordered to give priority to “preferred
`service providers defined by the network administrator.”
`Id. at col. 8 11. 35-36. This allows the network to generate
`revenue by charging service providers to be put on the
`preferred-service-provider list.
`Id. at col. 8 11. 46-52.
`Preferred-provider status,
`in turn,
`leads to preferred
`
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`listings being prioritized in search results
`providers’
`provided to subscribers.
`
`Prioritization based on subscriber information and
`preferred provider status is independent of a subsci-iber’s
`location; hence, it can lead to service providers that are
`actually farther away from the subscriber being given
`priority over service providers that are nearer. As a
`consequence, the results returned to the subscriber can
`order preferred providers and other service providers that
`are farther away higher than nearer service providers.
`The parties and the Board refer to this result as “farther-
`over-nearer ordering,” although that term is not used in
`the patent.
`
`The sole independent claim of the ’205 patent, claim 1,
`claims farther-over-nearer ordering in the context of
`wireless location-based services through a series of meth-
`od steps. We treat claim 1 of the ’205 patent as repre-
`sentative and dispositive because the parties do not argue
`that any limitations of the dependent claims alter the
`obviousness analysis in the context of the asserted prior '
`art. Relevant here, it claims:
`
`identifying, on said network platform, first and
`second service providers and associated first and
`second service provider information[,] .
`.
`. wherein
`said first service provider is farther from [a] mo-
`bile unit than said second service provider; [and]
`**‘k
`
`based on said stored prioritization information,
`prioritizing said first and second service provider
`information, wherein said first [farther] location
`information is assigned a higher priority than said
`second [nearer] location information; and
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`UNWIRED PLANET, LLC V. GOOGLE INC.
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`outputting both said first and second service in-
`formation on said mobile unit based upon said
`
`step of prioritizing.
`
`’205 patent, cl. 1, col. 10 11. 27-57.
`
`Asserted Prior Art
`
`Five asserted prior art references are relevant to the
`issues addressed below.
`
`The primary reference, U.S. Patent No. 6,108,533
`(“Brohoff”), is entitled “Geographical Database for Radio
`Systems.”
`It describes a system using a radio telecom-
`munication network in combination with a database of
`consumer services. Brohoff col. 2 11. 18-25. The system
`provides the information about nearby consumer services
`in response to search requests. To do so,
`the system
`determines the location of the mobile device sending the
`search request and provides information about nearby,
`relevant consumer services from its database. Id. at col. 2
`11. 33-42. Brohoff teaches using a database where the
`consumer services are grouped by geographic zones and
`returning location-based search results grouped by these
`geographic zones. Id. at col. 2 11. 48-58, col. 3 11. 13-19.
`
`One secondary reference is Wilbert O. Galitz’s book
`The Essential Guide to User Interface Design: An Intro-
`duction to GUI Design Principles and Techniques (John
`Wiley & Sons, Inc. (1997)) (“Galitz”).
`It discusses princi-
`ples for interface design,
`including discussing the ad-
`vantages
`of various
`techniques
`for ordering
`text
`information and menus.
`Id. at 120-21, 255-56.
`It also
`discusses the benefits and’ applications of several ordering
`techniques, including alphabetic order. Id. at 256. Galitz
`further suggests how the design principles it discusses
`may be applied in designing interfaces for future, special-
`ized devices. Id. at 32.
`
`Another secondary reference is Laura Rich’s article IQ
`News: New Search Engine Allows Sites To Pay Their Way
`
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`To Top.1 It describes a search engine that orders search
`results “according to who paid the most for that particular
`keyword” in a search.
`It also discusses ranking sites
`“according to user and editor input.”
`
`is European Patent No. EP
`A fourth reference
`0647076 (“Remy”), entitled, “Cellular radio communica-
`tion system with access to location dependent service,
`location retrieving module and server module for person-
`al, location dependent services.”
`It describes a cellular
`radio communication system within a network of geo-
`graphical cells that responds to a location-based query
`with the nearest result.
`
`International Patent No. WO 97/22066
`Finally,
`(“Hopkins”) is entitled “Method for computer aided adver-
`tisement.” It describes a computer-implemented method
`for presenting vendor advertising information to a user.
`Hopkins discusses how users can search the information
`alphabetically, by name, by address, or by geographical
`area.
`
`Procedural History
`
`Google Inc. (“Google”) filed the IPR and CBM petitions
`on appeal on October 8, 2013. In both proceedings, Google
`challenged claims 1-6 of the ’205 patent. The Board
`consolidated the proceedings before the same panel and,
`on April 8, 2014, instituted both proceedings on all chal-
`lenged claims.
`IPR2014-00036,
`2014 WL 1410358;
`CBM2014-00005, 2014 WL 1396977. On March 30, 2015,
`the Board issued final written decisions invalidating all of
`
`the challenged claims as obvious.
`
`Laura Rich, IQ News: New Search Engine Allows
`1
`Sites To Pay Their Way To Top, http://www.adweek.com/
`news/advertising/iq-news-new-search-engine-allows-sites-
`pay-their-way-top-24893 (Feb. 23, 1998).
`
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`In the IPR final written decision, the Board held the
`challenged claims were obvious on three grounds.
`IPR
`Final Decision, 2015 WL 1478653, at *18.
`In the first
`ground, claims 1-3, 5, and 6 were held obvious over
`Brohoff in View of Galitz.
`In the second ground, claim 4
`was held obvious in further view of Rich.
`In the third
`ground, claims 1-6 were also held obvious over Remy in
`View of Hopkins.
`
`In the CBM final written decision,’ the Board held
`that claims 1-6 were invalid for lack of written descrip-
`tion under 35 U.S.C. § 112 {I 1.2 CBM Final Decision,
`2015 WL 1519056, at *17. Specifically, the Board deter-
`mined that the specification lacked written description
`support for the claim term “prioritization information
`establishing a basis independent of proximity and inde-
`pendent of any subscriber preferences for prioritizing said
`first and second service provider information” and for
`farther-over-nearer ordering. Id. at *14, *16.
`
`Unwired appeals from both final written decisions.
`We consolidated the appeals for briefing and argument.
`Order Consolidating Appeals, No. 2015-1810, ECF No. 2
`(Fed. Cir. July 15, 2015). We have jurisdiction under 28
`U.S.C. § 1295(a)(4)(A) and 35 U.S.C. §§ 319, 329.
`
`35 U.S.C. §§ 103 and 112 were replaced with new
`2
`versions in the America Invents Act (“AIA”). See Leahy
`Smith America Invents Act, Pub. L. No. 112-29, §§ 3(c),
`4(c), 125 Stat. 284, 287, 296 (2011) (“AIA”). However, the
`AIA versions of §§ 103 and 112 do not apply to the pa-
`tents-in-suit in view of the AIA’s effective date provi-
`sions. See AIA, §§ 3(n)(1), 4(e), 125 Stat. 293, 297. Thus,
`we refer to the pre-AIA version of Title 35.
`
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`STANDARD OF REVIEW
`
`We review the Board’s factual determinations for sub-
`stantial evidence and its legal conclusion of obviousness
`de novo. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,
`1280 (Fed. Cir. 2015), aff’d, Cuozzo Speed Techs., LLC
`v. Lee, 136 S. Ct. 2131 (2016); Inphi Corp. v. Netlist, Inc.,
`805 F.3d 1350, 1354 (Fed. Cir. 2015). “Substantial evi-
`dence is such relevant evidence as a reasonable mind
`might accept as adequate to support a conclusion.” Ken-
`nametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376,
`1381 (Fed. Cir. 2015) (quotation marks omitted).
`
`DISCUSSION
`
`A claim would have been obvious “if the differences
`between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which
`said subject matter pertains.” 35 U.S.C. § 103(a) (2006).
`In order to determine if a claim would have been obvious,
`“the scope and content of the prior art are to be deter-
`mined; differences between the prior art and the claims at
`issue are to be ascertained; and the level of ordinary skill
`in the pertinent art resolved.” KSR Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 406 (2007) (quoting Graham 1). John
`Deere Co., 383 U.S. 1, 17 (1966)). Given the differences
`between the prior art and the claimed invention,
`the
`claimed combination would have been obvious only if
`there was an apparent reason for a skilled artisan “to
`combine the known elements in the fashion claimed by
`the patent at issue.” KSR, 550 U.S. at 418.
`
`Unwired makes three challenges to the Board’s basis
`for the first ground of obviousness in the IPR. Unwired
`argues (1) that Galitz is not analogous prior art, (2) that
`the prior art does not teach farther-over-nearer ordering,
`and (3) that a person of skill in the art would not have
`been motivated to combine Brohoff with Galitz. Unwired
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`does not separately dispute the further combination with
`Rich in the second ground of obviousness. We find sub-
`stantial evidence supports the Board’s factual findings
`with respect to the first two grounds of the IPR, and these
`facts lead to the conclusion that claims 1-6 of the ’205
`patent were obvious. This resolves the patentability of all
`challenged claims, so we do not reach the third ground in
`the IPR or the issues presented in the CBM review.
`
`1. The relevant prior art includes Galitz.
`
`Unwired challenges the Board’s factfinding with re-
`spect to the scope of the prior art. Unwired argues that
`Galitz “has nothing to do with mobile telephony or loca-
`tion-based services, but instead is a manual for designers
`of graphic user interfaces—a thoroughly different con-
`cept.” Unwired Br. 16. We disagree.
`
`Prior art is analogous and can be applied in an obvi-
`ousness combination if it either (1) “is from the same field
`of endeavor,
`regardless of the problem addressed” or
`(2) “is reasonably pertinent to the particular problem with
`which the inventor is involved.” In re Clay, 966 F.2d 656,
`658-59 (Fed. Cir. 1992). To determine if art is analogous,
`we look to “the purposes of both the invention and the
`prior art.” Id. at 659.
`If a reference disclosure and the
`claimed invention have a same purpose,
`the reference
`relates to the same problem, which supports an obvious-
`ness rejection. Id.
`
`The field of endeavor of the ’205 patent is not limited
`to technical issues related to the wireless network system;
`it also teaches methods for ordering and displaying infor-
`mation from the network on users’ mobile devices. The
`’205 patent discusses various ways that “the service
`information can be provided to the user,” including “on a
`visual display of the [mobile device], as an audible, rec-
`orded message, or through any other appropriate means.”
`’205 patent col. 3 11. 15-18.
`“In cases where the service
`information is provided as a menu of selections,
`the
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`method may further involve receiving a menu selection
`entered by the user and outputting further service infor-
`mation in response to the menu selection. Id. at col. 3 11.
`18-22. One particular problem the ’205 patent addresses
`is how to display and order information on a mobile
`device. When a menu is displayed on a mobile device, it
`“may be ordered based on any of various criteria such as
`the preferences expressed in the subscriber profile, near-
`est to farthest, preferred service providers defined by the
`network administrator, etc.” Id. at col. 811. 32-36.
`
`The Galitz reference deals generally with graphical
`user interface design and includes a chapter devoted to
`menu design with specific suggestions for how to order
`menu items. J.A. 1182-94. This discussion substantially
`focuses on displaying and ordering text in lists and men-
`us. One example that Galitz uses is address text, which it
`urges should be ordered “in the customary way” and
`sequenced to accord with user expectations, i.e., “street,
`city, state, and zip code.” J .A. 1053. Additionally, Galitz
`discusses future operating systems for internet-connected
`devices that “will aim at niches,” including “the purse or
`wallet.” J .A. 966.
`It suggests that the “narrower focus”
`on such devices “will result in much less complexity.” Id.
`
`The Board also relied on the testimony of Dr. Donald
`Cox.
`IPR Final Decision, 2015 WL 1478653, at *10. He
`discussed the Yellow Pages as a “customary and conven-
`tional use of sequential or alphabetical ordering for loca-
`tion-based services.” Id. The Yellow Pages list businesses
`in a “specific geographic area,” sort “the businesses into
`similar types,” and then alphabetically order the listings
`in each category.
`Id. (quoting Decl. of Dr. Donald Cox,
`1] 27, J.A. 494).
`
`Taken together, this evidence establishes that Galitz
`is analogous prior art to the ’205 patent. The field of
`endeavor of a patent is not limited to the specific point of
`novelty, the narrowest possible conception of the field, or
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`the particular focus within a given field. Here, both
`Galitz and the ’205 patent are in the field of interface
`design, with Galitz focusing on graphical user interfaces
`and the ’205 patent focusing on interfaces for location-
`based services. These two areas of focus overlap within
`the broader field of interface design because the teachings
`in graphical user interface design, including design prin-
`ciples for displaying text and ordering menus, have rele-
`vance
`in interfaces
`for
`location-based applications.
`Likewise, a skilled artisan seeking to apply interface
`design principles to display addresses—one of the particu-
`lar problems dealt with by the inventor of the ’205 pa-
`tent—wou1d reasonably look to Galitz, which teaches
`solutions to this same problem. As the Board found, Dr.
`Cox’s
`testimony shows a skilled artisan would have
`understood the applicability of Galitz’s teachings to this
`problem by providing an example of conventional address
`text and ordering in the location-based context. The
`Board correctly applied Galitz as analogous art based on
`substantial evidence that Galitz is both from the same
`field of endeavor as the ’205 patent and is reasonably
`pertinent
`to the problem of displaying address infor-
`mation.
`
`2. The prior art teaches prioritization that results in
`farther-over-nearer ordering.
`
`Unwired argues that none of the prior art references
`cited teach farther-over-nearer ordering as claimed. It
`faults the Board for equating prioritization schemes that
`“sometimes return a farther result” with “farther-over-
`nearer ordering.” Unwired Br. 18-19 (emphasis in origi-
`nal). We reject this argument because combinations of
`prior art that sometimes meet the claim elements are
`sufficient to show obviousness. See Hewlett-Packard Co.
`v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003).
`
`Unwired acknowledges that the claims do not require
`prioritizing locations that are farther away because they
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`1 1
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`are farther away. The claims only require using prioriti-
`zation information that results in a farther-over-nearer
`order.
`’205 patent, cl. 1, col. 10 11. 53-55 (“wherein said
`first location information is assigned a higher priority
`than said second location information”). The claimed
`result, where a farther first location is given priority over
`a 1-nearer second location, could result from many prioriti-
`zation schemes that do not depend on location.
`
`The prioritization information used in the proposed
`combination of the prior art
`is alphabetical ordering.
`Galitz recommends “alphabetical ordering” for lists with
`“a large number of options” and “small lists where no
`frequency or sequence pattern is obvious.”
`J.A. 1189.
`Alphabetical prioritization will often result in locations
`that are farther away being given a higher priority than
`locations that are nearer. For example, prioritizing a list
`of countries in English by alphabetical order will place
`Afghanistan before Niger, even when the prioritization is
`done in nearby Nigeria. Alphabetical order, thus, will
`result in instances of farther-over-nearer ordering.
`
`It does not matter that the use of alphabetical order
`for locations would not always result
`in farther-over-
`nearer ordering. It is enough that the combination would
`sometimes perform all the method steps,
`including far-
`ther-over-nearer ordering. See Hewlett-Packard, 340 F.3d
`at 1326. Because the use of alphabetical order as prioriti-
`zation information would sometimes meet the farther-
`over-nearer claims elements,
`the Board was correct to
`conclude that the proposed combination taught all of the
`elements of claim 1.
`
`3. A skilled artisan would be motivated to combine.
`
`Unwired argues that in the context of location-based
`services, a skilled artisan would have no motivation to
`combine the prior art references to achieve farther-over-
`nearer ordering. Unwired argues that “Google has never
`shown a motivation to modify Brohoff, because Google has
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`never shown that those working in the art perceived a
`problem with nearer-first ordering.” Unwired Br. 30.
`
`Google argues that the proposed combination does not
`require abandoning nearer-first ordering.
`It notes that
`Galitz teaches the advantages of using ordering tech-
`niques in combination. Google characterizes the proposed
`combination as using the ordering techniques of Galitz in
`combination with Brohoffs disclosure of grouping search
`results based on proximity zones. Google also argues that
`it does not need to show that there was a known problem
`with the prior art system in order to articulate the re-
`quired rational underpinning for the proposed combina-
`tion. We agree.
`
`The Court in KSR described many potential ration-
`ales that could make a modification or combination of
`prior art references obvious to a skilled artisan. 550 U.S.
`at 417-22; see also MPEP § 2143. KSR overturned the
`approach previously used by this court requiring that
`some teaching, suggestion, or motivation be found in the
`prior art. 550 U.S. at 415.
`Instead, the Court explained
`that a rationale to combine could arise from “interrelated
`teachings of multiple patents;
`the effects of demands
`known to the design community or present in the market-
`place; and the background knowledge possessed by a
`person having ordinary skill in the art.” Id. at 418. For
`example, the Court stated that “if a technique has been
`used to improve one device, and a person of ordinary skill
`in the art would recognize that it would improve similar
`devices in the same way, using the technique is obvious
`unless its actual application is beyond his or her skill.”
`Id. at 417. For the technique’s use to be obvious, the
`skilled artisan need only be able to recognize, based on
`her background knowledge, its potential to improve the
`device and be able to apply the technique.
`
`The device to be improved is Brohoff. The Board ex-
`plained that Brohoff teaches a system that allows users to
`
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`search for information and be provided results based on
`their location. In the provided search results, “the identi-
`fied service providers are grouped by their respective
`locations within a zone.”
`IPR Final Decision, 2015 WL
`1478653, at *8 (citing Brohoff, col. 6 ll. 45-49). While the
`zones in Brohoff are ordered nearer-first, Brohoff does not
`explain how the service providers are prioritized within
`their zone groups. See Brohoff, col. 8 11. 47-55.
`
`The improvement is provided by using the technique
`of combining ordering methods found in Galitz. As the
`Board recognized, Galitz teaches benefits of various
`ordering techniques and suggests using them in combina-
`tion.
`IPR Final Decision, 2015 WL 1478653, at *8. To
`take advantage of the benefits of multiple techniques,
`“[s]creen layout normally reflects a combination of [differ-
`ent] techniques.” Id. (quoting Galitz at 121, J.A. 1054)
`(second modification in original). Using ordering tech-
`niques in combination is, thus, a technique that a person
`of ordinary skill in the art would recognize could be used
`to improve information display.
`
`The Board’s determination that a person of skill in the
`art would have been motivated to apply the techniques of
`Galitz to Brohoff is supported by substantial evidence.
`The Board found that testimony of Dr. Cox was entitled to
`“substantial weight because [it]
`is consistent with the
`teachings of Brohoff and Galitz.” Id. at *11. He explained
`that “Galitz recognized that information may be ordered
`by category——such as Brohoffs geographic zones—and,
`within each category,
`information may be ordered by
`other prioritization information.” Id. at *8 (quoting Decl.
`of Dr. Donald Cox, 1l 42, J.A. 502).
`
`Unwired does not dispute that a person of ordinary
`skill in the art would have been able to apply the teach-
`ings of Galitz to make the improvement
`it suggests.
`Unwired claims that the specific problem of farther-over-
`nearer ordering itself is not discussed in the combined
`
`

`

`Case: 15-1810
`
`Document: 55-2
`
`Page: 14
`
`Filed: 11/15/2016
`
`(15 of 17)
`
`14
`
`UNWIRED PLANET, LLC V. GOOGLE INC.
`
`references. Ga1itz’s teaching of the advantages of combin-
`ing ordering techniques shows “there was an apparent
`reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR, 550 U.S. at 418.
`Irrespective of whether a person of skill in the art would
`have recognized specific use of Brohoff, substantial evi-
`dence exists if she could have seen the advantages of
`applying the teachings of Galitz to improve Brohoff. This
`is sufficient to render the combination obvious. Id. at 417.
`
`CONCLUSION
`
`We affirm the Board’s determination that claims 1-6
`of the ’205 patent were obvious in No. 2015-1810. We
`dismiss as moot the appeal in No. 2015-1811.
`
`AFFIRMED-IN-PART AND DISMISSED-IN—PART
`
`COSTS
`
`No costs.
`
`

`

`Case: 15-1810
`
`Document: 55-3
`
`Page: 1
`
`Filed: 11/15/2016
`
`(16 of 17)
`
`um I ED §TA| E§ QQQBT QF APPEAL§
`F R THE FEDERAL IR UIT
`
`Questions and Answers
`
`Petitions for Rehearing (Fed. Cir. R. 40)
`and
`Petitions for Hearing or Rehearing En Banc (Fed. Cir. Fl. 35)
`
`
`Q. When is a petition for rehearing appropriate?
`
`A. Petitions for panel rehearing are rarely successful
`because they most often fail to articulate sufficient grounds
`upon which to grant them. For example, a petition for panel
`rehearing should not be used to reargue issues already
`briefed and orally argued; if a party failed to persuade the
`court on an issue in the first instance, a petition for panel
`rehearing should not be used as an attempt to get a second
`“bite at the apple.” This is especially so when the court has
`entered a judgment of affirmance without opinion under
`Fed. Cir. R. 36. Such dispositions are entered it the court
`determines the judgment of the trial court is based on
`findings that are not clearly erroneous, the evidence
`supporting the jury verdict is sufficient, the record supports
`the trial court's ruling, the decision of the administrative
`agency warrants affirmance under the appropriate standard
`of review, or the judgment or decision is without an error of
`law.
`
`0. When is a petition for hearing or rehearing en banc
`appropriate?
`
`A. En banc decisions are extraordinary occurrences. To
`properly answer the question, one must first understand the
`responsibility of a three-judge merits panel of the court. The
`panel is charged with deciding individual appeals according
`to the law of the circuit as established in the court's
`
`precedential opinions. While each merits panel is
`empowered to enter precedential opinions, the ultimate
`duty of the court en banc is to set forth the law of the
`Federal Circuit, which merit panels are obliged to follow.
`
`Thus, as a usual prerequisite, a merits panel of the court
`must have entered a precedential opinion in support of its
`judgment for a suggestion for rehearing en banc to be
`appropriate. In addition, the party seeking rehearing en
`banc must show that either the merits panel has failed to
`follow identifiable decisions of the U.S. Supreme Court or
`
`Federal Circuit precedential opinions or that the merits
`panel has followed circuit precedent, which the party seeks
`to have overruled by the court en banc.
`
`0. How frequently are petitions for rehearing granted by
`merits panels or petitions for rehearing en banc accepted
`by the court?
`
`A. The data regarding petitions for rehearing since 1982
`shows that merits panels granted some relief in only three
`percent of the more than 1900 petitions filed. The relief
`granted usually involved only minor corrections of factual
`misstatements, rarely resulting in a change of outcome in
`the decision.
`
`En banc petitions were accepted less frequently, in only 16
`of more than 1100 requests. Historically, the court itself
`initiated en banc review in more than half (21 of 37) of the
`very few appeals decided en banc since 1982. This sua
`sponte, en banc review is a by—product of the court's
`practice of circulating every precedential panel decision to
`all the judges of the Federal Circuit before it is published.
`No count is kept of sua sponte, en banc polls that fail to
`carry enough judges. but one of the reasons that virtually
`all of the more than 1100 petitions made by the parties
`since 1982 have been declined is that the court itself has
`already implicitly approved the precedential opinions before
`they are filed by the merits panel.
`
`O. is it necessary to have filed either of these petitions
`before filing a petition for certiorari in the U. S. Supreme
`Court?
`
`A. No. All that is needed is a final judgment of the Court of
`Appeals. As a matter of interest, very few petitions for
`certiorari from Federal Circuit decisions are granted. Since
`1982, the U.S. Supreme Court has granted certiorari in only
`31 appeals heard in the Federal Circuit. Almost 1000
`petitions for certiorari have been filed in that period.
`
`October 20, 2016
`
`

`

`Case: 15-1810
`
`Document: 55-4
`
`Pagezl
`
`Filed: 11/15/2016
`
`(17 of 17)
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`INFORMATION SHEET
`
`FILING A PETITION FOR A WRIT OF CERTIORARI
`
`There is no automatic right of appeal to the Supreme Court of the United States from judgments
`of the Federal Circuit. You must file a petition for a writ of certiorari which the Supreme Court
`will grant only when there are compelling reasons. (See Rule 10 of the Rules of the Supreme
`Court of the United States, hereinafter called Rules.)
`
`Time. The petition must be filed in the Supreme Court of the United States within 90 days of the
`entry of judgment in this Court or within 90 days of the denial of a timely petition for rehearing.
`The judgment is entered on the day the Federal Circuit issues a final decision in your case. [The
`time does not run from the issuance of the mandate, which has no effect on the right to petition.]
`
`(See Rule 13 of the Rules.)
`
`Fees. Either the $300 docketing fee or a motion for leave to proceed in forma pauperis with an
`affidavit in support thereof must accompany the petition. (See Rules 38 and 39.)
`
`Authorized Filer. The petition must be filed by a member of the bar of the Supreme Court of the
`United States or by the petitioner representing himself or herself.
`
`Format of a Petition. The Rules are very specific about the order of the required information
`and should be consulted before you start drafting your petition. (See Rule 14.) Rules 33 and 34
`should be consulted regarding type size and font, paper size, paper weight, margins, page limits,
`cover, etc.
`
`Number of Copies. Forty copies of a petition must be filed unless the petitioner is proceeding in
`forma pauperis, in which case an original and ten copies of the petition for writ of certiorari and
`of the motion for leave to proceed in forma pauperis. (See Rule 12.)
`
`Where to File. You must file your documents at the Supreme Court.
`
`Clerk
`
`Supreme Court of the United States
`1 First Street, NE
`Washington, DC 20543
`(202) 479-3000
`
`No documents are filed at the Federal Circuit and the Federal Circuit provides no information to
`the Supreme Court unl