Case: 17-1855
`
`Document: 46-1
`
`Pagezl
`
`Filed: 06/27/2018
`
`(1 Of 15)
`
`NOTE: This disposition is nonprecedential.
`
`filiniteh étateg Qtnurt of gnpealg
`
`for the jfeheral Qtimu't
`
`ELBRUS INTERNATIONAL LIMITED,
`Appellant
`
`V.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Appellee
`
`2017-1855
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2015-
`01524.
`
`Decided: June 27, 2018
`
`PHILIP P. MANN, Mann Law Group, Seattle, WA, for
`appellant.
`
`NAVEEN MODI, Paul Hastings LLP, Washington, DC,
`for appellee.
`Also represented by STEPHEN BLAKE
`KINNAIRD, JOSEPH PALYS; JOSEPH JOHN RUMPLER, II, Palo
`Alto, CA.
`
`Before REYNA, BRYSON, and HUGHES, Circuit Judges.
`
`

`

`Case: 17-1855
`
`Document: 46-1
`
`Page:2
`
`Filed: 06/27/2018
`
`(2 of 15)
`
`2
`
`ELBRUS INT’L LTD. V. SAMSUNG ELECS. CO., LTD.
`
`PER CURIAM.
`
`Elbrus International Ltd. appeals from the final writ-
`ten decision in an inter partes review proceeding in which
`the Patent Trial and Appeal Board found claims 1, 2, 5, 6,
`and 9 of US. Patent No. 6,366,130 (“the ’130 patent”) to
`be invalid. Samsung Elecs. CO., Ltd. v. Elbrus Int’l Ltd.,
`No. IPR2015-01524, 2017 WL 379208 (P.T.A.B. Jan. 17,
`2017). We affirm.
`,
`
`BACKGROUND
`
`The ’130 patent, entitled “High Speed Low Power Da-
`ta Transfer Scheme,” relates to a “high speed and lower
`power”
`complementary metal-oxide
`semiconductor
`(“CMOS”) data transfer arrangement. The arrangement
`“includes two active pull up/pull down bus drivers, a
`differential bus that precharges to a specific voltage level
`and a latched differential sense amplifier that serves as a
`bus receiver.” ’130 patent, col. 1, 11. 24—28.
`
`Claim 1 is the only independent claim. It recites:
`
`1. A data transfer arrangement comprising:
`
`two bus drivers;
`
`a voltage precharge source;
`
`a differential bus coupled to the bus drivers
`and to the voltage precharge source; a[n]d
`
`a latching sense amplifier coupled to the dif-
`ferential bus;
`
`wherein the latching sense amplifier compris-
`
`es:
`
`a first stage including a cross-coupled latch
`‘ coupled to a differential data bus; and
`
`an output stage coupled to an output of said
`first stage;
`
`

`

`Case: 17—1855
`
`Document: 46—1
`
`Page:3
`
`Filed: 06/27/2018
`
`(3 of 15)
`
`ELBRUS INT’L LTD. V. SAMSUNG ELECS. CO., LTD.
`
`3
`
`wherein the output of the first stage is coupled
`to an input of the output stage; [and]
`
`wherein the differential bus and the differen-
`
`tial data bus are precharge[d] to a voltage Vpr be-
`tween Vdd and ground, where Vpr=K*Vdd, and K
`is a precharging voltage factor.
`
`DISCUSSION
`
`I
`
`Elbrus argues that the Board adopted an erroneous
`construction of the claim term “bus.” Adopting Samsung’s
`proposal,
`the Board construed “bus” as “one or more
`conductors that are used for the transmission of signals,
`data, or power.” Samsung Elecs. Co., 2017 WL 379208, at
`*3. Elbrus contends that the Board should have adopted
`its proposed construction,
`i.e., “a common path along
`which power or signals travel from one or several sources
`to one or several destinations.” Id. The meaning of the
`term “bus” bears on whether Samsung’s lead prior art
`reference, US. Patent No. 5,828,241 (“Sukegawa”), dis-
`closes a “differential data bus,” as recited in claim 1.
`
`Although the Board adopted Samsung’s construction,
`it concluded that Sukegawa discloses a “differential data
`bus” under both Samsung’s and Elbrus’s proposed con-
`structions.
`Id. at *6—7. Because we find no error in the
`
`Board’s conclusion, we need not address Elbus’s argu-
`ments regarding the proper construction of “bus.”
`
`Sukegawa is entitled “Signal Transmission Circuit
`Providing Amplified Output from Positive Feedback of
`Intermediate Amplifier Circuit.”
`It concerns “a type of
`signal transmission circuit wherein the signal is amplified
`and transmitted by means of the positive feedback of an
`intermediate amplifier circuit having input/output shared
`terminals.” Sukegawa, col. 1, 11. 11—15.
`
`

`

`Case217-1855
`
`Document: 46-1
`
`Page:4
`
`Filed: 06/27/2018
`
`(4 of 15)
`
`4
`
`ELBRUS INT’L LTD. V. SAMSUNG ELECS. CO., LTD.
`
`As part of its petition, Samsung provided the follow-
`ing annotated excerpt of figure 1 of Sukegawa:
`
` Coupling first stage
`
`bus
`
`to differential data
`
`In the diagram, Samsung identified the differential
`data bus as the lines associated with nodes N3 and N4
`
`(also labeled C), which connect the transistors 38—41 to
`the transistors 34 and 35 as well as to CMOS inverters 36
`
`and 37. See Sukegawa, col. 8, 11. 49—53.
`
`The Board found that those lines disclosed a differen-
`
`tial data bus under both Samsung’s and Elbrus’s proposed
`constructions, The Board noted that Sukegawa “discloses
`a ‘signal transmission circuit,’ wherein a signal is trans—
`mitted to receiver circuit 4 containing output terminals
`OUT and OUT_.” Samsung Elecs. Co., 2017 WL 379208,
`at *6 (citing Sukegawa, col. 9, 11. 4—24). Those lines carry
`electrical signals from the transistors to the inverters, a
`function that satisfies Samsung’s construction of bus as
`“one or more conductors that are used for the transmis-
`
`sion of signals, data, or power.” Id. (citing Sukegawa, col.
`8, 11. 59—64; col. 9, 11. 4—7; col. 9, 11. 14—24).
`
`

`

`Case: 17-1855
`
`Document: 46-1
`
`Page:5
`
`Filed: 06/27/2018
`
`(5 of 15)
`
`ELBRUS INT’L LTD. V. SAMSUNG ELECS. CO., LTD.
`
`5
`
`The Board also found that the portion of figure 1 iden-
`tified by Samsung satisfies Elbrus’s construction of “bus.”
`Citing the figure and expert testimony, the Board found
`that figure 1 shows “a finite, non-zero distance between
`transistors 34 and 35 and inverters 36 and 37, respective-
`ly, and discloses transmitting from one portion of the
`circuit to another portion.”
`Id. at *7. From this,
`the
`Board concluded that Sukegawa discloses a “bus” even
`under Elbrus’s construction of “a common path along
`which power or signals travel from one or several sources
`to one or several destinations.” Id.
`
`We find no error in the Board’s analysis. On appeal,
`Elbrus argues that Sukegawa’s nodes have “no non-trivial
`distance” and that there is no “transmission of signals,
`data, or power” over those lines. Neither argument is
`persuasive. As to the first, the Board cited testimony
`from both Samsung’s and Elbrus’s experts that a wire of
`some length would be needed to connect the transistors
`and the inverters, even if a person of ordinary skill would
`have been motivated to minimize the length of the wire.
`Id. at *6—7. Elbrus’s argument that a “bus” must span a
`“non-trivial distance” is new on appeal; in any event, it is
`unpersuasive, as there is nothing in the patent to suggest
`that the claim language is limited to a bus of a certain
`minimum length. As to the second argument, Sukegawa’s
`circuit 4, of which those identified lines are part,
`is a
`receiver that plays a role in signal
`transmission,
`see
`Sukegawa, col. 8, l. 49 to col. 9, l. 29, and that those lines
`therefore carry “signals, data, or power.”
`
`In sum, because Sukegawa discloses a “bus” under ei-
`ther Samsung’s or Elbrus’s construction, we affirm the
`Board’s conclusion and need not reach Elbrus’s other
`
`claim construction arguments.
`
`II
`
`Elbrus next challenges the Board’s conclusion that
`claim 1’s limitation of buses that are “precharge[d] to a
`
`

`

`Case: 17-1855
`
`Document146-1
`
`Page:6
`
`Filed:06/27/2018
`
`(6 of 15)
`
`6
`
`ELBRUS INT'L LTD. V. SAMSUNG ELECS. CO., LTD.
`
`voltage Vpr between Vdd and ground” would have been
`obvious in light of Sukegawa and a 1984 article in the
`IEEE Journal of Solid State Circuits by Nicky Chau-
`Chun Lu & Hu H. Chao (“Lu”). The article, entitled
`“Half-V131) Bit-Line Sensing Scheme in CMOS DRAM’s,”
`describes a sensing scheme in which the bit line is pre-
`charged to half VDD, The article teaches that “the half-V1313
`bit-line sensing scheme has several unique advantages,
`especially for high-performance high-density” CMOS
`Dynamic Random Access Memory (“DRAM”), “compared
`to the full-V131) bit-line sensing scheme used for” N-type
`metal-oxide-semiconductor (“NMOS”) memory arrays or
`“the grounded bit-line sensing scheme for” P-type metal-
`oxide-semiconductor (“PMOS”) arrays in CMOS DRAM’s.
`
`Elbrus raises two arguments on appeal. First, Elbrus
`argues that Sukegawa teaches away from precharging the
`bus to half of the supply voltage, as taught in Lu. Elbrus
`argues that because Sukegawa used Vdd/2 precharging on
`a portion of his circuit but not on the differential data bus,
`this “strongly taught away from Vdd/2 precharging of the
`‘differential data bus.”
`
`The Board found that Sukegawa does not teach away
`from precharging the differential data bus to Vdd/2.
`Samsung Elecs. Co., 2017 WL 379208, at *9. The Board
`noted that Elbrus “does not direct us to anything in
`Sukegawa that can be said to discourage a person of
`ordinary skill in the art from pre-charging to Vdd/2,” and,
`to the contrary, “the record is replete with evidence
`demonstrating the advantages of precharging to a value
`below Vdd, as set forth in Lu, and those advantages would
`apply equally in the context of precharging the differen-
`tial data bus.” Id.
`
`Whether a reference teaches away from the claimed
`invention is a question of fact, which is reviewed for
`substantial evidence. Meiresonne v. Google, Inc., 849 F.3d
`1379, 1382 (Fed. Cir. 2017). A reference “that ‘merely
`
`

`

`Case: 17-1855
`
`Document: 46-1
`
`Page:7
`
`Filed206/27/2018
`
`(7 of 15)
`
`ELBRUS INT’L LTD. V. SAMSUNG ELECS. CO., LTD.
`
`7
`
`expresses a general preference for an alternative inven-
`tion but does not criticize, discredit, or otherwise discour-
`age investigation into’
`the claimed invention does not
`teach away.” ‘Id. (quoting Galderma Labs., LP. 1). Tol-
`mar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)).
`
`We conclude that substantial evidence supports the
`Board’s factfinding that Sukegawa does not teach away
`from applying the teachings of Lu. As the Board found,
`nothing in Sukegawa discourages precharging a differen-
`tial data bus to Vdd/2. At the oral hearing before the
`Board, when asked “is there anything in the disclosure of
`Sukegawa that we can look to to determine why he
`charged to Vdd as opposed to some intermediate charge,”
`Elbrus’s counsel responded, “I have not found anything
`that says exactly why he did that.” Counsel then elabo-
`rated, saying that Sukegawa “doesn’t say exactly why he’s
`doing it. So we can only infer that he must have had a
`reason .
`.
`'.
`. But it’s not in Sukegawa.
`I admit that.”
`Given that “a particular reference’s mere silence about a
`particular feature does not tend to teach away from it,” In
`re Haase, 542 F. App’x 962, 967 (Fed. Cir. 2013),
`the
`Board’s conclusion that Sukegawa does not teach away
`from precharging a differential data bus to Vdd/2 is
`supported by substantial evidence. 1
`
`Elbrus’s reliance on In re Urbanski, 809 F.3d 1237
`1
`(Fed. Cir. 2016), and McGinley U. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001), is misplaced. As stated in
`Urbanski, “[i]f references taken in combination would
`produce a seemingly inoperative device,
`.
`.
`. such refer-
`ences teach away from the combination and thus cannot
`serve as predicates for a prima facie case of obviousness.”
`809 F.3d at 1243 (quoting McGinley, 262 F.3d at 1354).
`However,
`the Board rejected Elbrus’s argument
`that
`combining Sukegawa and Lu would lead to an unworka-
`ble circuit.
`Instead, the Board credited Samsung’s ex-
`
`

`

`Case: 17-1855
`
`Document: 46-1
`
`Page:8
`
`Filed: 06/27/2018
`
`(8 of 15)
`
`8
`
`ELBRUS INT’L LTD. V. SAMSUNG ELECS. CO., LTD.
`
`that combining Lu with
`Second, Elbrus argues
`Sukegawa would lead to an inoperable circuit absent
`significant additional design work. However, “it is not
`necessary that [Sukegawa and Lu] be physically combin-
`able to render [a claim] obvious.” Allied Erecting &
`Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d
`1373, 1381 (Fed. Cir. 2016) (quoting In re Sneed, 710 F.2d
`1544, 1550 (Fed. Cir. 1983)). That is so because “‘[t]he
`test for obviousness is not whether the features of a
`
`secondary reference may be bodily incorporated into the
`structure of the primary reference,’ but rather whether ‘a
`skilled artisan would have been motivated to combine the
`
`references to achieve the
`teachings of the prior art
`claimed invention.”’
`Id. (quoting In re Keller, 642 F.2d
`413, 425 (CCPA 1981), and Pfizer, Inc. v. Apotex, Inc., 480
`F.3d 1348, 1361 (Fed. Cir. 2007)). Therefore, Elbrus’s
`argument that combining Sukegawa and Lu could lead to
`an unworkable circuit
`is “basically irrelevant.”
`In re
`Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc).
`
`In any event, the Board’s conclusion that any opera-
`bility hurdles in modifying Sukegawa’s circuit in view of
`Lu’s teachings would be overcome by a person of ordinary
`skill is supported by substantial evidence. The Board,
`crediting Samsung’s expert and discounting the testimony
`of Elbrus’s expert, found that operability issues would
`arise only if “the modified Sukegawa system was designed
`poorly,” and that a person of ordinary skill would have
`been able to make “simple adjustments” to the circuit to
`
`pert’s testimony that only “simple adjustments” were
`necessary to ensure that “the circuit worked and didn’t
`fail.” Samsung Elecs. Co., 2017 WL 379208, at *10. As
`discussed below,
`substantial
`evidence
`supports
`the
`Board’s conclusion.
`Inoperability therefore is not a basis
`for finding that Sukegawa teaches away from applying Lu
`to obtain the claimed invention.
`
`

`

`Case: 17-1855
`
`Document: 46-1
`
`Page:9
`
`Filed: 06/27/2018
`
`(9 of 15)
`
`ELBRUS INT’L LTD. v. SAMSUNG ELECS. CO., LTD.
`
`9
`
`make it work.2 Samsung Elecs. Co., 2017 WL 379208, at
`*10. Elbrus’s arguments on appeal do not provide a basis
`to disturb the Board’s weighing of the expert evidence on
`that point, and we therefore affirm.
`
`III
`
`Finally, Elbrus argues that the Board erred in finding
`that claim 7 would have been obvious in light of the
`combination of Sukegawa with Lu and US. Patent No.
`6,249,469 B1 (“Hardee”). Claim 7 depends from claims 1
`and 2. Claim 2 adds to claim 1 that “the bus drivers
`
`comprise active pull-up and active pull-down bus drivers.”
`Claim 7 then adds that “the active pull up and pull down
`bus drivers are NMOS transistors.” According to the
`petition, Sukegawa discloses active pull down drivers that
`are NMOS transistors, but discloses PMOS transistors for
`the pull up drivers. As a result, Samsung relies on Hard-
`ee to show NMOS transistors as pull up and pull down
`drivers.
`
`The Hardee patent, entitled “Sense Amplifier with
`Local Sense Drivers and Local Read Amplifiers,” is di-
`rected to “a CMOS sense amplifier with local write driver
`transistors to eliminate the pattern sensitivities and
`delays of the prior art.” Hardee, col. 4, 11. 58—60. The
`
`Elbrus complains that the Board misapprehended
`2
`the testimony of its expert, Dr. Huber, when the Board
`stated: “We have considered Dr. Huber’s testimony that
`modifying Sukegawa in View of Lu may lead to ‘power-
`wasting current paths.”’ Samsung Elecs. Co., 2017 WL
`379208, at *10. Elbrus argues that Dr. Huber testified
`that the modification would lead to power-wasting cur-
`rent paths.
`In light of the fact that the Board credited
`Samsung’s expert’s opinion that simple modifications
`avoid this issue, any imprecision in the Board’s para-
`phrase of Dr. Huber’s testimony is inconsequential.
`
`

`

`Case: 17-1855
`
`Document: 46-1
`
`Page: 10
`
`Filed: 06/27/2018
`
`(10 of 15)
`
`10
`
`ELBRUS INT’L LTD. V. SAMSUNG ELECS. CO., LTD.
`
`parties do not dispute that Hardee discloses NMOS pull
`up and pull down transistors. See id. at col. 6, 11. 28—46;
`id. at fig. 5.
`
`The Board credited Samsung’s argument that a per-
`son of ordinary skill would have been motivated to com-
`bine the teachings of Hardee with those of Sukegawa.
`Samsung Elecs. Co., 2017 WL 379208, at *14—16. The
`Board agreed with Samsung that “substituting Hardee’s
`NMOS pull up transistors for Sukegawa’s PMOS pull up
`transistors would result in some area savings” on the
`circuit.
`Id. at *15. The Board noted that the parties
`disputed the magnitude of the space savings—Elbrus
`argued that the savings would be only 0.8%; Samsung
`argued that it would be 9%—but because it was “undis-
`puted that modifying Sukegawa in View of Hardee would
`result in some reduction in layout size,” the space-saving
`feature would have been a motivation to combine the two
`
`In addition, the Board was persuaded by
`Id.
`references.
`Samsung’s argument that the combination would avoid
`latch-up, which is a type of short circuit.
`Id. at *16.
`Although Elbrus argued that “latch-up would not be a
`problem in Sukegawa’s circuits” because the transistors
`“do not receive or drive off-chip signals,” the Board credit-
`ed Samsung’s evidence that latch-up is “not limited to
`transistor circuits that drive external circuits.” Id.
`
`Elbrus makes three arguments on appeal. First, El-
`brus argues that the space savings offered by combining
`Hardee with Sukegawa would be “trivial at best” and
`would “not provide a meaningful incentive to make the
`combination.”
`The Board’s conclusion that
`the space
`savings—whether 0.8% or 9%—would motivate a person
`of ordinary skill to combine the references is supported by
`substantial evidence.
`In particular,
`the Board found
`persuasive Samsung’s expert’s testimony that a reduction
`in layout size can be an important consideration in circuit
`design. Id. at *15.
`
`

`

`Case: 17-1855
`
`Document: 46-1
`
`Page: 11
`
`Filed: 06/27/2018
`
`(11 of 15)
`
`ELBRUS INT’L LTD. v. SAMSUNG ELECS. CO., LTD.
`
`1 1
`
`Second, Elbrus contends that Sukegawa does not ac-
`tually exhibit
`latch-up,
`so the asserted motivation to
`combine is illusory. Elbrus argues, as it did before the
`Board, that Sukegawa does not have a latch-up problem
`because all of the signals and transistors are on-chip.
`However,
`the Board found credible the testimony of
`Samsung’s expert testimony and Samsung’s other evi-
`dence that latch-up can occur in transistor circuits that
`drive internal circuits. That evidence included a 1998
`
`article entitled “Understanding Latch-up in Advanced
`CMOS Logic,” which explained that “[t]he cause of the
`latch-up exists in all
`junction-isolated or bulk CMOS
`processes.” The Board’s conclusion is therefore supported
`by substantial evidence.
`
`Finally, Elbrus argues that the Board relied on a mis-
`apprehension of Dr. Huber’s testimony. The “misappre-
`hension” appears to have originated in Elbrus’s own
`patent owner’s response brief, in which Elbrus stated: “It
`would not have been obvious to combine Hardee with
`
`Sukegawa, since the alleged advantages are non-existent,
`and such a substitution could require boosting voltages
`above Vdd.” The Board quoted that sentence in its opin-
`ion but concluded that it agreed with Samsung that “the
`mere possibility of having to boost voltages above Vdd
`does not detract from the aforementioned advantages
`associated with modifying Sukegawa in view of Hardee’s
`teachings.” Samsung Elecs. Co., 2017 WL 379208, at *16.
`Elbrus now complains that the Board misunderstood the
`evidence because Elbrus’s expert had stated that
`the
`signals “would have to be boosted above VDD to pull the
`driver outputs all the way to VDD.” However, Elbrus’s
`expert explained that the voltage boost would have to
`occur only if needed to achieve the “desirable (for both
`speed and noise immunity)” condition that the outputs
`“swing all the way to VDD or all the way to ground when
`activated.” The Board therefore did not err in referring to
`
`

`

`Case: 17—1855
`
`Document: 46-1
`
`Page: 12
`
`Filed: 06/27/2018
`
`(12 of 15)
`
`12
`
`ELBRUS INT’L LTD. V. SAMSUNG ELECS. CO., LTD.
`
`Elbrus’s response that boosting voltage above Vdd could
`occur, but is not required to.
`
`Because substantial evidence supports the Board’s
`finding that a person of ordinary skill would have been
`motivated to combine Sukegawa with Hardee, we affirm
`the Board’s conclusion that claim 7 would have been
`
`obvious.
`
`AFFIRMED
`
`

`

`Case: 17-1855
`
`Document: 46-2
`
`Page: 1
`
`Filed: 06/27/2018
`
`(13 of 15)
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`NOTICE OF ENTRY OF
`
`JUDGMENT ACCOMPANIED BY OPINION
`
`OPINION FILED AND JUDGMENT ENTERED: 06/27/2018
`
`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 othenNise. Sanctions should be paid in the same way as costs.
`
`Regarding exhibits and visual aids: Your attention is directed Fed. R. App. P. 34(9) 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/ Peter R. Marksteiner
`
`Peter R. Marksteiner
`Clerk of Court
`
`17-1855 - Elbrus International Limited v. Samsung Electronics Co, Ltd.
`United States Patent and Trademark Office, Case No. IPR2015-O1524
`
`

`

`Case: 17-1855
`
`Document: 46-3
`
`Page: 1
`
`Filed: 06/27/2018
`
`(14 of 15)
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`717 MADISON PLACE, N.W.
`WASHINGTON, DC. 20439
`
`PETER R. MARKSTEINER
`CLERK OF COURT
`
`202-275-8000
`
`Information Sheet
`
`Petitions for Rehearing and Petitions for Hearing and Rehearing En Banc
`
`1. When is a petition for rehearing appropriate?
`
`The Federal Circuit grants few petitions for rehearing each year. These petitions for
`
`rehearing are rarely successful because they typically fail to articulate sufficient
`
`grounds upon which to grant them. Of note, petitions for rehearing should not be used
`
`to reargue issues previously presented that were not accepted by the merits panel
`
`during initial consideration of the appeal. This is especially so when the court has
`
`entered a judgment of affirmance without opinion under Fed. Cir. R. 36. Such
`
`dispositions are entered if 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.
`
`2. When is a petition for hearing/rehearing en banc appropriate?
`
`En banc consideration is rare. Each three-judge merits panel is charged with deciding
`
`individual appeals under existing Federal Circuit law as established in precedential
`
`opinions. Because each merits panel may enter precedential opinions, a party seeking
`
`en banc consideration must typically show that either the merits panel has (1) failed to
`
`follow existing decisions of the US. 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. Federal Circuit Internal Operating Procedure #13
`
`identifies several reasons when the Federal Circuit may opt to hear a matter en banc.
`
`3. Is it necessary to file either of these petitions before filing a petition for
`
`a writ certiorari in the US. Supreme Court?
`
`No. A petition for a writ of certiorari may be filed once the court has issued a final
`
`judgment in a case.
`
`For additional information and filing requirements, please refer to Fed.
`
`Cir. R. 40 (Petitions for Rehearing) and Fed. Cir. R. 35 (Petitions for Hearing or Rehearing En Banc).
`
`Revised May 10, 2018
`
`

`

`Case217-1855
`
`Document: 46-4
`
`Pagezl
`
`Filed: 06/27/2018
`
`(15 of 15)
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`717 MADISON PLACE, N.W.
`WASHINGTON, DC. 20439
`
`PETER R. MARKSTEINER
`CLERK OF COURT
`
`202-275-8000
`
`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. Instead, a party must file a petition for a writ of
`
`certiorari which the Supreme Court will grant only when there are compelling reasons. See
`
`Supreme Court Rule 10.
`
`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. See Supreme Court
`Rule 13.
`
`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 Supreme Court 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 as a self-represented individual.
`
`Format of a Petition. The Supreme Court Rules are very specific about the content and
`
`formatting of petitions. See Supreme Court Rules 14, 33, 34. Additional information is
`
`available at httpszl/www.supremecourt.gov/filingandrules/rules guidanceaspx.
`
`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 both the petition
`
`for writ of certiorari and the motion for leave to proceed in forma pauperis must be filed.
`
`See Supreme Court Rule 12.
`
`Filing. Petitions are filed in paper at Clerk, Supreme Court of the United States, 1 First
`Street, NE, Washington, DC 20543.
`
`Effective November 13, 2017, electronic filing is also required for filings submitted by
`
`parties represented by counsel. See Supreme Court Rule 29.7. Additional information
`about electronic filing at the Supreme Court is available at
`
`https://www.supremecourt.gov/filingandrules/electronicfiling.aspx.
`
`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.
`
`Revised May 10, 2018
`
`