Appeals to the Court of Appeals for the Federal Circuit

AuthorKenneth Dorsney
chapter 20
Appeals to the Court
of Appeals for the
Mixing law and technology can be complex, especially for district courts
trying to follow the precedent of appellate courts that lacked a steady
diet of patent cases. This complexity led to a lack of uniformity in patent
law. The lack of uniformity and concomitant lack of predictability led to
many calls for specialized courts of one form or another. The U.S. Court
of Appeals for the Federal Circuit was established by the Federal Courts
Improvement Act of 1982,1 in part, to provide for the “ ‘special need for
nationwide uniformity’ in certain areas of the law.”2 The Federal Circuit
is an Article III court under the U.S. Constitution and is a “co-equal mem-
ber” of the system of 13 U.S. courts of appeals.3 The Federal Circuit has
nationwide jurisdiction over a number of specialized legal areas, including
patent appeals from district courts.
A familiarity with the case law and procedural law in all jurisdictional
areas of the court is necessary to formulate the strongest positions dur-
ing appeal. Because the Court of Appeals for the Federal Circuit hears
virtually all patent appeals, and because the Supreme Court reviews only
a small number of patent cases each year, the Federal Circuit is more
often than not the highest court that will hear a patent appeal. It is worth
Michael J. Schaengold, Greenberg Traurig, LLP; Scott A. Chambers, Ph.D., Porzio,
Bromberg & Newman, P.C.; Patrick J. McCarthy, Greenberg Traurig, LLP.
1. Pub. L. No. 97-164, 96 Stat. 25.
2. United States v. Hohri, 482 U.S. 64, 72 (1987).
3. In re Roberts, 846 F.2d 1360, 1362 (Fed. Cir. 1988) (en banc).
dor54588_20_ch20_491–516.indd 491 5/5/16 5:40 PM
noting, however, that the Supreme Court issued five significant patent
opinions in 2014, and three in 2015.4
The Federal Circuit, which has authorized 12 active judges,5 also
has six senior judges6 who hear and resolve cases. Appeals are randomly
assigned to panels to provide each judge “with a representative cross-
section of the fields of law within the jurisdiction of the court.”7 Cases are
generally heard by a panel of three judges; however, any odd number of at
least three judges may form the panel.8
Panels of the Federal Circuit are bound by the decisions of the Supreme
Court, the precedential (or published decisions) of the Federal Circuit, and
the decisions of the Federal Circuit’s predecessor courts: the Court of Cus-
toms and Patent Appeals and the Court of Claims.9 A precedential deci-
sion of the Federal Circuit or one of its predecessor courts is binding on
subsequent Federal Circuit panels unless overruled by the Supreme Court
or the Federal Circuit sitting en banc.10 When a conflict occurs between the
decisions of a prior and subsequent panel, the decision of the first panel is
considered precedential; provided, of course, that the first panel opinion is
not itself conflicting with other applicable precedent (i.e., an earlier Fed-
eral Circuit decision or any Supreme Court decision).11 A panel, however,
will not be overruling precedent if it is simply “refin[ing] holdings in its
precedent which were stated or have been interpreted too broadly.”12
4. See Kimble v. Marvel Entm’t, LLC, __ U.S. __, 2015 WL 2473380 (June 22, 2015);
Commil U.S., LLC v. Cisco Sys., Inc., 135 S. Ct. 1920 (2015); Teva Pharms. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831 (2015); Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014);
Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111 (2014); Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120 (2014); Octane Fitness, LLC v. ICON Health &
Fitness, Inc., 134 S. Ct. 1749 (2014); Highmark Inc. v. Allcare Health Mgmt. Sys., 134 S.
Ct. 1744 (2014).
5. The 12 active judges are (1) Chief Judge Sharon Prost; (2) Judge Pauline Newman;
(3) Judge Alan David Lourie; (4) Judge Timothy B. Dyk; (5) Judge Kimberly Ann Moore;
(6) Judge Kathleen M. O’Malley; (7) Judge Jimmie V. Reyna; (8) Judge Evan Wallach; (9)
Judge Richard G. Taranto; (10) Judge Raymond T. Chen; (11) Judge Todd M. Hughes; and
(12) Judge Kara Farnandez Stoll.
6. The six senior judges are (1) Judge Haldane Robert Mayer; (2) Judge S. Jay Plager;
(3) Judge Raymond Charles Clevenger III; (4) Judge Alvin Anthony Schall; (5) Judge
William Curtis Bryson; and (6) Judge Richard Linn.
9. South Corp. v. United States, 690 F.2d 1368, 1370 (Fed. Cir. 1982) (en banc);
Remington Prods., Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 1579 (Fed. Cir. 1990).
10. Newell Co. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1988); Kimberly-Clark
Corp. v. Fort Howard Paper Co., 772 F.2d 860, 863 (Fed. Cir. 1985).
11. Newell Co., 864 F.2d at 765; Johnston v. Ivac Corp., 885 F.2d 1574, 1579 (Fed. Cir.
1989); see, e.g., Atl. Thermaplastics Co. v. Taytex Corp., 970 F.2d 834, 838 n.2 (Fed. Cir.
1992) (refusing to follow a previous case that had not considered earlier Supreme Court
12. Woodward v. Sage Prods., Inc., 818 F.2d 841, 851 (Fed Cir. 1987) (en banc).
dor54588_20_ch20_491–516.indd 492 5/5/16 5:40 PM

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