Sitting en banc, the US Court of Appeals for the Federal Circuit issued an unusual opinion overturning a panel decision for the purpose of reiterating the Court’s limited appellate role and the need to give appropriate deference to district court and jury fact findings. Apple Inc. v. Samsung Elecs. Co., Ltd. et al., Case Nos. 15-1171; -1195; -1994 (Fed. Cir., Oct. 7, 2016) (Moore, J) (Prost, CJ, dissenting) (Dyk, J, dissenting) (Reyna, J, dissenting). Each of the three judges from the earlier panel decision filed separate dissents. The eight remaining judges joined in or concurred with the majority opinion.


This appeal arose from a district court case in the worldwide patent battle between Apple and Samsung in the smartphone, tablet and laptop market. Five Apple patents and two Samsung patents made it to trial in the district court in 2014. Three of Apple’s patents were found valid and infringed, while one Samsung patent was found valid and infringed. Both parties appealed.

The Panel Opinion

In a panel opinion issued earlier in 2016 (IP Update, Vol. 19, No. 3), the Federal Circuit reversed the validity findings regarding two of Apple’s patents and reversed the infringement finding as to the remaining Apple patent. The panel affirmed the district court opinion finding infringement of Samsung’s patent. Apple petitioned for en banc review, objecting to the panel’s reliance on extra-record evidence for claim construction and its reversal of nearly a dozen jury factual findings.

The En Banc Opinion

Without seeking the benefit of additional briefing, the Federal Circuit granted Apple’s en banc petition for the stated purpose of “affirming our understanding of the appellate function” as being limited to only deciding issues raised by the parties, only relying on record evidence and providing the appropriate deference to district court fact findings. The court then issued its en banc decision, written by Judge Moore, reinstating the district court judgment on every issue where it had been overturned by the original panel, while maintaining the panel’s judgment on those issues where it had affirmed the district court.

The three dissenters, members of the original panel, strongly disagreed regarding the grant of en banc review, as well as the Court’s issuance of its en banc ruling without the benefit of en banc briefing. Judge Reyna’s dissent argued that en banc review is limited to maintaining uniformity among panel decisions or addressing important legal issues, and characterized the majority as instead merely objecting to the panel’s judgment calls.

The prime takeaway from the en banc review is the majority’s pronouncement that the Federal Circuit’s role as a reviewing court is “limited to deciding issues raised in the appeal by the parties, deciding these issues only on the basis of the record below, and as requiring appropriate deference be applied to review of fact finding.” The en banc majority was particularly concerned about the original panel’s use of dictionary definitions not of record, which it explained amounted to improper “extra-record extrinsic evidence [used] to construe a patent term.”

This case is likely to be the subject of a petition for certiorari to the Supreme Court of the United States. Indeed, in his dissent, Judge Dyk wondered aloud why the Court took on important issues of obviousness en banc without further briefing and argued that the majority had made “significant changes to the law [of obviousness] as articulated by the Supreme Court.”

Practice Note: Going forward, future panels will be very unlikely to reverse fact findings not put in issue by a party and more likely to strictly apply the “substantial evidence” test when reviewing fact finding by a jury.