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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: 03/26/2015
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.
Costs are taxed against the appellant in favor of the appellee under Rule 39. The party entitled to costs is
provided a bill of costs form and an instruction sheet with this notice.
The parties are encouraged to stipulate to the costs. A bill of costs will be presumed correct in the absence of a
timely filed objection.
Costs are payable to the party awarded costs. If costs are awarded to the government, they should be paid to
the Treasurer of the United States. Where costs are awarded against the government, payment should be made to
the person(s) designated under the governing statutes, the court's orders, and the parties' written settlement
agreements. In cases between private parties, payment should be made to counsel for the party awarded costs or, if
the party is not represented by counsel, to the party pro se. Payment of costs should not be sent to the court. Costs
should be paid promptly.
If the court also imposed monetary sanctions, they are payable to the opposing party unless the court's opinion
provides otherwise. Sanctions should be paid in the same way as costs.
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

/s/ Daniel E. O'Toole
Daniel E. O'Toole
Clerk of Court

cc: Dennis C. Barghaan Jr.

Gabriel Bell
Richard P. Bress
Matthew James Dowd
Claire Joy Evans
Clarence Edward Polk Jr.
Kenneth G. Schuler
Anthony H. Son
Stephen P. Swinton
Aaron Webb
Charles A. Weiss
Marc Nathan Zubick

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13-1206 - Exela Pharma Sciences, LLC v. Lee

United States District Court for the Eastern District of Virginia, Case No. 12-CV-0469

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United States Court of Appeals

for the Federal Circuit
______________________

EXELA PHARMA SCIENCES, LLC, EXELA

PHARMSCI, INC., EXELA HOLDINGS, INC.,
Plaintiffs-Appellants
v.
MICHELLE K. LEE, Deputy Director,
U.S. Patent and Trademark Office,
Defendant-Appellee
CADENCE PHARMACEUTICALS, INC.,
SCR PHARMATOP,
Intervenors
______________________
2013-1206
______________________
Appeal from the United States District Court for the
Eastern District of Virginia in No. 12-CV-0469, Judge
Liam O'Grady.
______________________
Decided: March 26, 2015
______________________
MATTHEW JAMES DOWD, Wiley Rein, LLP, Washington, DC, argued for plaintiffs-appellants. Also represented by CLAIRE JOY EVANS; CLARENCE EDWARD POLK, JR.,
Exela Pharma Sciences, LLC, Ashburn, VA; ANTHONY H.
SON, Andrews Kurth, LLP, Washington, DC.

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DENNIS C. BARGHAAN, JR., Office of the United States

Attorney for the Eastern District of Virginia, Alexandria,
VA, argued for defendant-appellee. Also represented by
DANA J. BOENTE; NATHAN KELLEY, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA.
RICHARD P. BRESS, Latham & Watkins LLP, Washington, DC, argued for intervenors. Intervenor Cadence
Pharmaceuticals, Inc., also represented by GABRIEL BELL,
Washington, DC; STEPHEN P. SWINTON, San Diego, CA;
MARC NATHAN ZUBICK, KENNETH G. SCHULER, Chicago, IL.
Intervenor SCR Pharmatop represented by CHARLES A.
WEISS, Holland & Knight, LLP, New York, NY.
______________________
Before NEWMAN and DYK, Circuit Judges.
Concurring opinion filed by Circuit Judge NEWMAN
Concurring opinion filed by Circuit Judge DYK
PER CURIAM.
This appeal presents the question of whether a third
party has the right to challenge, by way of the Administrative Procedure Act (APA), a ruling of the Patent and
Trademark Office reviving a patent application that had
become abandoned by failure to meet a filing schedule
established by the Patent Cooperation Treaty and its
implementing statute. The challengers are Exela Pharma
Sciences, LLC; Exela Pharmsci, Inc.; and Exela Holdings,
Inc. (collectively Exela). Exela petitioned the PTO to
reconsider and withdraw its revival of the national stage

Randall R. Rader, who retired from the position of

Circuit Judge on June 30, 2014, did not participate in this
decision.

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application and to cancel the issued patent. The patent is

United States Patent No. 6,992,218 (the 218 patent),
assigned to SCR Pharmatop.
The PTO declined to consider Exelas petition, stating
that no law or regulation authorizes non-party challenge
to a PTO ruling to accept a tardy filing. Exela then
brought suit under the APA in the United States District
Court for the Eastern District of Virginia, arguing that
the PTOs action was ultra vires and that Exelas petition
should have been considered and favorably decided. The
PTO moved to dismiss Exelas complaint on several
grounds.
The district court initially held that Exela was entitled to challenge the PTOs decision under the APA, but
on reconsideration and in view of new Fourth Circuit
precedent, the district court dismissed Exelas complaint
for failing to meet the statute of limitations for claims
filed against the United States, including APA claims. 1
We affirm the dismissal, on the ground that PTO revival rulings are not subject to third party collateral
challenge, thereby precluding review regardless of whether Exelas claims were time-barred.
BACKGROUND
Patentee SCR Pharmatop filed its initial patent application in France on June 6, 2000 and, in conformity with
the Patent Cooperation Treaty (PCT), filed an international patent application identifying the United States,
among others, as a designated state on June 6, 2001. The

Exela Pharma Sciences, LLC v. Kappos, No. 1:12cv-469, 2012 WL 3638552 (E.D. Va. Aug. 22, 2012); Exela
Pharma Sciences, LLC v. Kappos, No. 1:12-cv-469, 2012
WL 6697068 (E.D. Va. Dec. 21, 2012) (Reconsideration
Decision).
1

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PCT implementing statute, 35 U.S.C. 351 et seq., requires the applicant to fulfill certain United States documentary and fee requirements within 30 months after the
filing of the foreign priority application, here by December
6, 2002. See 35 U.S.C. 371(c), (d); PCT art. 22. SCR
Pharmatop did not file the required materials by December 6, 2002, and consequently the United States application was deemed abandoned. On January 2, 2003 SCR
Pharmatop filed a petition to revive the application,
stating that the delay was unintentional, using the form
provided by the PTO for revival requests. The PTO
granted the petition on April 25, 2003. The application
was duly examined, and the 218 patent issued on January 31, 2006.
In August 2011 SCR Pharmatop and exclusive sublicensee Cadence Pharmaceuticals, Inc. (collectively
Pharmatop) sued Exela in the United States District
Court for the District of Delaware for infringement of the
218 patent. The suit was brought under the HatchWaxman Act, 35 U.S.C. 271(e)(2), in response to Exelas
notice and filing of an Abbreviated New Drug Application
and Paragraph IV Certification relating to Pharmatops
injectable acetaminophen-based drug Ofirmev.
On November 30, 2011 Exela filed the subject petition
in the PTO, under the APA and 37 C.F.R. 1.181, 1.182,
and 1.183, challenging the PTOs revival of the patent
application that led to the 218 patent. Exela argued that
unintentional delay was not an available ground for
revival of a U.S. patent application claiming priority
under the PCT-implementing statute as then in effect.
Exela pointed out that 35 U.S.C. 371(d) limited the
revival of such national stage applications to those in
which the non-compliance was unavoidable:
The requirements with respect to the national fee
. . ., the translation . . ., and the oath or declaration . . . shall be complied with by the date of the

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commencement of the national stage or by such

later time as may be fixed by the Director. . . .
Failure to comply with these requirements shall
be regarded as abandonment of the application by
the parties thereof, unless it be shown to the satisfaction of the Director that such failure to comply
was unavoidable. . . . 2
35 U.S.C. 371(d) (2002). Exela argued that the PTO
erred in applying its general revival regulation, 37 C.F.R.
1.137, which provides:
Revival of abandoned application, terminated
reexamination proceeding, or lapsed patent.
(a) Unavoidable. If the delay in reply by applicant
or patent owner was unavoidable, a petition
may be filed pursuant to this paragraph to revive an abandoned application, a reexamination proceeding . . . , or a lapsed patent. A
grantable petition pursuant to this paragraph
must be accompanied by: . . .
(b) Unintentional. If the delay in reply by applicant or patent owner was unintentional, a petition may be filed pursuant to this paragraph to
revive an abandoned application, a reexamination proceeding . . . , or a lapsed patent. A
grantable petition pursuant to this paragraph
must be accompanied by: . . .
37 C.F.R. 1.137 (2000). Exela asserted that a PTO
regulation cannot override a statute, and therefore, the
PTO lacked discretion to grant SCR Pharmatops revival
petition for unintentional delay.

The statute was amended, effective December 18,

2013, removing the clause stating the unavoidable
standard.
2

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The PTO declined to consider Exelas petition, stating

that no statute or regulation authorizes third party
challenge to a PTO ruling concerning revival of a patent
application. See PTO letter to Exelas counsel, February
17, 2012 (returning petition fee).
Following the PTOs rejection of its petition, Exela
filed this district court action under the APA, asking the
court to compel the PTO to vacate its revival decision.
The PTO moved to dismiss Exelas complaint under
Federal Rules 12(b)(1) and (6) on several grounds, including that Exela lacks standing to challenge the PTOs
revival ruling, that Exelas APA action is time-barred,
and that a PTO revival ruling is not subject to judicial
review at the request of a third party challenger.
The district court initially denied the PTOs motion to
dismiss on all grounds, but while its decision was pending, the Fourth Circuit issued its decision in Hire Order,
Ltd. v. Marianos, 698 F.3d 136, 170 (4th Cir. 2012),
holding that for facial challenges to a federal regulation,
the six-year limitations period of 28 U.S.C. 2401(a) starts
to accrue when the regulation is adopted. The district
court, on reconsideration, observed that the regulation
here at issue, 37 C.F.R. 1.137, was adopted in 1982, and
that Exela presented a facial challenge to the regulation,
for it sought a declaration regarding which standard to
apply across the board. Reconsideration Dec. at 46.
Applying Hire Order, the district court held Exelas action
time-barred by the six-year period of limitations.
This appeal followed.
DISCUSSION
Exela argues that its complaint was improperly dismissed and that it is entitled to proceed, citing the APAs
purpose of providing remedy to any person suffering
legal wrong because of agency action, or adversely affected or aggrieved by agency action within the meaning of a

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relevant statute. 5 U.S.C. 702. Exela stresses that the

dominating consideration in APA actions is the strong
presumption that Congress intends judicial review of
administrative action, Bowen v. Michigan Academy of
Family Physicians, 476 U.S. 667, 670 (1986). Exela states
that the PTOs action in reviving the Pharmatop application was contrary to the PCT statute, and that unless
judicial review is available, an ultra vires PTO action will
escape correction, thereby enabling enforcement of a
patent that should not have issued.
The PTO responds that there is no authority for third
parties to collaterally challenge the correctness of PTO
revival rulings. Thus the PTO contends that the merits
should be decided in its favor, even if dismissal is not
appropriate on limitations grounds.
Exela argues that although such third party action is
not explicitly authorized by statute or regulation, it is
available under the APA. Exela cites the Courts statement in Block v. Community Nutrition Institute that
where substantial doubt about the congressional intent
exists, the general presumption favoring judicial review of
administrative action is controlling. 467 U.S. 340, 35051
(1984).
We conclude that Congress did not intend to permit
judicial review for challenges such as the one brought
here. Whether the APA confers such a cause of action
upon third parties raises a substantial question of patent
law, and is reviewable by this court applying Federal
Circuit law. See Helfgott & Karas, P.C. v. Dickinson, 209
F.3d 1328, 1334 (Fed. Cir. 2000) (holding [T]he question
of whether the Commissioner has violated the APA in
applying the PCT rules and regulations, as well as its own
regulations, raises a substantial question under the
patent laws. . . .).
The question on this appeal is not whether a patent
applicant may challenge a PTO revival ruling as to its

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application; that question was resolved in the affirmative

by this courts decision in Morganroth v. Quigg, 885 F.2d
843 (Fed. Cir. 1989). The issue here is whether a third
party may collaterally challenge and obtain judicial
review of a PTO revival ruling concerning an unrelated
patent application. The Patent Acts intricate scheme for
administrative and judicial review of PTO patentability
determinations, and the Patent Acts careful framework
for judicial review at the behest of particular persons
through particular procedures demonstrate that third
party challenge of PTO revival rulings under the APA is
not legislatively intended. Pregis Corp. v. Kappos, 700
F.3d 1348, 1357 (Fed. Cir. 2012) ([A] third party cannot
sue the PTO under the APA to challenge a PTO decision
to issue a patent.).
We conclude that PTO revival actions are not subject
to third party challenge under the APA. On this ground,
the dismissal of the Exela complaint is affirmed.
AFFIRMED

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United States Court of Appeals

for the Federal Circuit
______________________

EXELA PHARMA SCIENCES, LLC, EXELA

PHARMSCI, INC., EXELA HOLDINGS, INC.,
Plaintiffs-Appellants
v.
MICHELLE K. LEE, Deputy Director,
U.S. Patent and Trademark Office,
Defendant-Appellee
CADENCE PHARMACEUTICALS, INC.,
SCR PHARMATOP,
Intervenors
______________________
2013-1206
______________________
Appeal from the United States District Court for the
Eastern District of Virginia in No. 12-CV-0469, Judge
Liam O'Grady.
______________________
NEWMAN, Circuit Judge, concurring.
I join the courts decision, for neither the Patent Act
nor the Administrative Procedure Act provides a cause of
action in which third persons may challenge the revival
by the PTO of an application that was deemed abandoned
for failure to meet a filing date.

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I write separately to address the concerns raised in

Judge Dyks concurring opinion, in which he criticizes the
courts ruling in Aristocrat Technologies Australia Pty
Ltd. v. International Game Technology, 543 F.3d 657 (Fed.
Cir. 2008). With all respect to my colleague, I do not
share the view that Aristocrat was wrongly decided.
In Aristocrat the defendant in an infringement suit
argued that the PTO erroneously revived Aristocrats
Patent Cooperation Treaty application (which was one
day late), and sought invalidity on that ground. This
court stated that the PTOs revival of an application is
neither a fact or act made a defense by title 35 nor a
ground specified in part II of title 35 as a condition for
patentability. 543 F.3d at 663. The court explained:
If any prosecution irregularity or procedural
lapse, however minor, became grist for a later assertion of invalidity, accused infringers would inundate the courts with arguments relating to
every minor transgression they could comb from
the file wrapper. This deluge would only detract
from the important legal issues to be resolved
primarily, infringement and validity.
Id.
The Patent Act is explicit as to the grounds for challenges to issued patents; these grounds do not include
challenge to PTO discretionary actions in revival of
deemed-abandoned applications.
A PTO decision to
excuse a tardy filing is not a statutory ground of invalidity or defense to infringement under 35 U.S.C. 282, nor is
it a ground on which third persons can initiate and participate in post-issuance disputes, see Chapter 30 (prior art
citations and requests for reexamination), Chapter 31
(inter partes review), and Chapter 32 (post-grant review).
Rather, it is an irregularity in prosecution that becomes
irrelevant after the patent has issued. Magnivision, Inc.
v. Bonneau Co., 115 F.3d 956, 960 (Fed. Cir. 1997); see

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also Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1324

(Fed. Cir. 2004) ([T]he presumption of validity is not
subject to being diluted by procedural lapses during
prosecution.). The patent statutes are specific as to
legislative intent, and do not extend to prosecution
irregularities and procedural lapses. Aristocrat, 543 F.3d
at 663. The Supreme Court in Block v. Community Nutrition Institute, 467 U.S. 340 (1984), discussed the principles of challenge to administrative actions, and
summarized:
Whether and to what extent a particular statute
precludes judicial review is determined not only
from its express language, but also from the structure of the statutory scheme, its objectives, its legislative history, and the nature of the
administrative action involved.
467 U.S. at 345. The recently enacted America Invents
Act (AIA), which provides new mechanisms for third party
attacks on issued patents, did not change the principle
that internal PTO procedures are not subject to third
party collateral attack.
The Court stated in Block: In a complex scheme of
this type, the omission of such a provision is sufficient
reason to believe that Congress intended to foreclose [the
action]. 467 U.S. at 346. The statute concerning filing
schedules under the Patent Cooperation Treaty was
recently amended to remove the requirement that delay
be unavoidable, see 35 U.S.C. 371(d) (2013), demonstrating legislative knowledge of the issue decided in Aristocrat. However, Congress made no new amendments to
the scope of infringement defenses available in the district courts. Aristocrat warrants stability, not judicial
taint as problematic.
Judge Dyk correctly points out that there are areas in
which a non-listed defense has been recognized by
courts, conc. op. at 4, citing cases in which antitrust

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violation, patent misuse, and shop right have been recognized as defenses to patent infringement. With all respect, my colleague errs in stating that such major
substantive issues, each of which is a traditional defense,
cannot be so easily distinguished from an excuse for a
missed filing date. Conc. Op. at 5. If judges cannot easily
distinguish the significance of antitrust violation from a
missed date, we must try harder.

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United States Court of Appeals

for the Federal Circuit
______________________

EXELA PHARMA SCIENCES, LLC, EXELA

PHARMSCI, INC., EXELA HOLDINGS, INC.,
Plaintiffs-Appellants
v.
MICHELLE K. LEE, Deputy Director,
U.S. Patent and Trademark Office,
Defendant-Appellee
CADENCE PHARMACEUTICALS, INC.,
SCR PHARMATOP
Intervenors
______________________
2013-1206
______________________
Appeal from the United States District Court for the
Eastern District of Virginia in No. 12-CV-0469, Judge
Liam O'Grady.
______________________
DYK, Circuit Judge, concurring.
I join the majority opinion holding that the structure
of the Patent Act bars third party Administrative Procedure Act (APA) challenges to patent validity based on an
improper revival of an abandoned patent application.

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In my view, the Patent Act is structured to channel

third party challenges to patent validity to either of two
routes: as defenses to infringement actions or as challenges brought at the PTO utilizing statutorily authorized
proceedings such as inter partes review, post-grant review, or inter partes reexamination. This statutory
scheme is inconsistent with APA review by third parties
in the district court. See Pregis Corp. v. Kappos, 700 F.3d
1348, 1357 (Fed. Cir. 2012) ([A] third party cannot sue
the PTO under the APA to challenge a PTO decision to
issue a patent.).
The heart of Exelas argument to the contrary is that
it is entitled to proceed under the APA because there is a
strong presumption that Congress intends judicial review of administrative action, Bowen v. Michigan Academy of Family Physicians, 476 U.S. 667, 670 (1986), and
because, since our precedent in Aristocrat Technologies
Australia Pty Ltd. v. International Game Technology, 543
F.3d 657 (Fed. Cir. 2008), barred review of improper
revival as a defense in infringement actions, the only
available route to review is under the APA.
In Aristocrat, this court held that a defendant in an
infringement action could not assert improper revival of
an abandoned patent application as a defense in that
action. See 543 F.3d at 66061. We need not decide here
whether Aristocrat was correctly decided. Whether it was
or not, the Patent Act is inconsistent with third party
APA review. However, I write separately to explain why I
think our decision in Aristocrat was problematic.
The panel in Aristocrat held that improper revival
could not be raised as a defense to an infringement action
because improper revival was not literally among the
catalog of defenses listed in 35 U.S.C. 282. See id. at
66364. The panel noted that we have held that a provision of the Patent Act not falling within the literal scope

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of section 282 may nevertheless provide a defense of

noninfringement or invalidity. Id. at 664 (relying on
Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed.
Cir. 1995) (holding that a patentee who improperly enlarged the scope of its claims during reexamination,
violating 35 U.S.C. 305, was subject to a defense of
invalidity)). But the panel distinguished Quantum on the
ground that the concern in Quantum that failure to
impose invalidity for violation of the statute would encourage noncompliance was not present where there is
no legitimate incentive for an applicant to intentionally
abandon its application, much less to attempt to persuade
the PTO to improperly revive it. Id.
There are four aspects of the Aristocrat opinion that
in my view warrant its reconsideration.
First, Aristocrat did not discuss the presumption of
judicial review of agency action. See Sackett v. Envtl. Prot.
Agency, 132 S. Ct. 1367, 1373 (2012); Bowen, 476 U.S. at
670; Block v. Cmty. Nutrition Inst., 467 U.S. 340, 34849
(1984); see also 5 U.S.C. 702 (conferring a general cause
of action upon persons adversely affected or aggrieved by
agency action within the meaning of a relevant statute).
As we hold today, there is no APA review for improper
revivals and no alternative mechanism for review, so an
invalidity defense would be the only route available for
judicial review.
Second, contrary to the suggestion in Aristocrat and
by my colleague in her concurrence, this is not a case
involving a minor procedural error in the PTO process.
See Magnivision, Inc. v. Bonneau Co., 115 F.3d 956, 960
(Fed. Cir. 1997) (holding that [p]rocedural lapses during
examination [such as in that case, an examiners not
recording a phone call] . . . do not provide grounds of
invalidity). Here, Congress thought the issue of timely
filing to be sufficiently important that it provided that a

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patent would be treated as abandoned for noncompliance,

and it allowed the PTO to reinstate the patent only when
specific criteria were satisfied. See 35 U.S.C. 371(d)
(2002).
Third, in Morganroth v. Quigg, 885 F.2d 843, 846
(Fed. Cir. 1989), we held that review of the PTOs refusal
to revive a patent application was available under the
APA. That case is not cited in Aristocrat, and it is indeed
difficult to understand why a third party facing liability
for infringement of the patent cannot seek judicial review
of a revival decision if the patent applicant can do so, even
though the patent applicant and accused infringer must
pursue different avenues for review (a defense for the
accused infringer and review under the APA for the
patent applicant).
Fourth, Aristocrat failed to recognize that Quantum
was hardly the only example of situations in which a nonlisted defense has been recognized by courts. Obviousness-type double patenting, for example, is a wellestablished defense that is not specified in the statute.
See, e.g., Gilead Scis., Inc. v. Natco Pharma Ltd., 753 F.3d
1208, 1212 (Fed. Cir. 2014). Patent misuse is also a
defense. See, e.g., Brulotte v. Thys Co., 379 U.S. 29 (1964)
(holding that charging royalties beyond life of the patent
impermissibly enlarges monopoly of the patent); Princo
Corp. v. Intl Trade Commn, 616 F.3d 1318, 132629
(Fed. Cir. 2010) (describing patent misuse and calling it
mainly a judicially created defense). The shop rights
doctrine is also a judicially created defense to patent
infringement that applies when an employer is sued for
patent infringement by an employee who created the
patented invention with the employers resources while
under its employment, even though the employer otherwise has no legal rights to the resultant invention.
Beriont v. GTE Labs, Inc., 535 F. Appx 919, 923 (Fed. Cir.

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2013). These other cases cannot be so easily distinguished

from the situation in Aristocrat itself.
In the future, en banc action to reconsider Aristocrat
may be appropriate.

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UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT
Questions and Answers
Petitions for Rehearing (Fed. Cir. R. 40)
and
Petitions for Hearing or Rehearing En Banc (Fed. Cir. R. 35)
Q. When is a petition for rehearing appropriate?
A. Petitions for rehearing are rarely considered meritorious.
Consequently, it is easiest to first answer when a petition
for rehearing is not appropriate. A petition for 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, they do not get a second chance.
This is especially so when the court has entered a
judgment of affirmance without opinion under Fed. Cir. R.
36, as a disposition of this nature is used only when the
appellant has utterly failed to raise any issues in the appeal
that require an opinion to be written in support of the courts
judgment of affirmance.
Thus, as a usual prerequisite, the court must have filed
an opinion in support of its judgment for a petition for
rehearing to be appropriate. Counsel seeking rehearing
must be able to identify in the courts opinion a material
error of fact or law, the correction of which would require a
different judgment on appeal.

Q. 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 courts
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.

Q. 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 courts
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.

Q. 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.

July 21, 2008

Case: 13-1206

Document: 63-3

Page: 2

Filed: 03/26/2015

(21 of 21)

UNITED STATES COURT O}' 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 ofjudgment 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 unless the Supreme Court asks for the information.
Access to the Rules. The current rules can be found in Title 28 of the United States Code
Annotated and other legal publications available in many public libraries.

Revised December 16, 1999