Deleting Cybor: En Banc Opportunity

by Dennis Crouch

Hal Wegner recently sent around an interesting note regarding the Federal Circuit and the fact that there are only nine regular judges on the court (excluding senior judges). This number is down from the court's usual contingent of twelve judges. Notably absent are Retired Chief Judge Michel, Senior Judge Linn, and Senior Judge Bryson. Richard Taranto has been nominated to fill Chief Judge Michel's position that has been vacant since 2010. No nominees have been put forward yet to replace either Judge Linn or Judge Bryson who took senior status in November 2012 and January 2013 respectively.

The current nine-member circuit is important in the context of petitions for en banc (re)hearing. The court's normal operating procedure is that a case will only be heard en banc if a majority of judges favor an en banc hearing. With the current slate of nine regular members, a majority requires only five votes.

This is particularly relevant to claim construction because a majority of current member have suggested that Cybor should be reviewed and have thus implied that judges should be given some amount of deference – at least for the factual conclusions that lead to the claim construction.

The most recent en banc vote on revisiting Cybor case was the 2012 Highmark petition that lost on a 6-5 vote. Since that vote, two judges from the majority have left the court. Wegner writes:

En banc review was denied by a 6-5 vote in Highmark, Inc. v. Allcare Health Management Systems, Inc., 701 F.3d 1351 (Fed. Cir. 2012). Two voices from the per curiam majority opinion have since taken senior status and thus will not vote on en banc review, Linn, Bryson, JJ. The Highmark dissent by five votes in a minority thus could translate into a five vote majority in any new en banc vote: The five votes of Rader, C.J., Moore, O'Malley, Reyna, Wallach, JJ., create the necessary majority for en banc review.

Once Richard Taranto is confirmed, a majority will immediately require six votes – a much less likely outcome.

Next step: Finding the right case, right away. One potential suggestion is Lighting Ballast Control LLC v. Phillips Electronics North America Corp. et al.

16 thoughts on “Deleting Cybor: En Banc Opportunity

  1. However, they don’t do so for two reasons. First, because a single court-appointed expert is still going to have some kind of bias – maybe less than the parties’ experts, but they may be far from neutral. And secondly, under Cybor, the de novo standard deters district courts from relying on any experts because the Federal Circuit will ignore it all and review de novo.

  2. …and filed without a specification
    draws to mind the analogy that MM’s QQ island is the Australia of islands.

    Because patents are the worst thing evah.

  3. Otherwise, we are in the land of the indefinite.

    Except that the CAFC has reduced the “land of the indefinite” to a tiny, tiny island inhabited by claims that were, effectively, written in a foreign or imaginary language and filed without a specification. It’s highly unlikely that you’re on that land. Inconsistent use of a term in the specification? Not a problem. Just pick the “likeliest” of the two (or three) different meanings of the term based on whatever criteria you need to get to the result you want (which is not “indefiniteness”).

  4. OK, yes, I didn’t see the vote breakdown. Newman is likely yes vote on the merits. I’m surprised she was a no on the petition.

  5. TJ’s basic logic then still applies – just to the opposite outcome.

    Right now you are sitting 5-4 one way or the other.

    Adding one still gets you either the majority you already have or deadlocks.

    Of course, if the deadlock is not what you want, and the majority is what you want, then it may make sense to hurry.

  6. So then the “railroad option” won’t work. If Taranto is pro-Cybor, the en banc case will be tied 5-5. If Taranto is anti-Cybor, there will be a 6-4 anti-Cybor majority on the court after he is confirmed and there is no reason to hurry.

  7. Yes – traditionally new CAFC judges have helped decide en banc cases as long as they arrived prior to the decision's release.  In Tivo v. Echostar, O'Malley and Reyna joined the bench well after briefing and oral argument had completed, but still took part in the actual decision.  They pushed the 7-5 majority over-the top.

  8. What does a claim term mean to one of ordinary skill in the art in light of the specification — that is the question according to Phillips.

    Stated thus, it does seem that the question is fact based.

    But, is this right? Should not the question of what claim term means be resolvable on the record? If the claim term is not defined, or used in the specification in a consistent fashion, the “generic” meaning should be so well understood that it has a definition. Otherwise, we are in the land of the indefinite.

    I don’t mind using experts to help the court on background technology. But there should be no fricken dispute as to what this is. The court should appoint the expert if he or she needs help.

  9. I actually don’t know the answer to this: Does a new judge get to sit on an en banc case if the petition is granted before the judge is commissioned. I.e. suppose that tomorrow, the Federal Circuit takes a case en banc, next week Taranto is confirmed and commissioned, and oral argument is held in four months from now. Does Taranto get to vote on the merits?

    If so, then all you will get is an en banc hearing where they split 5-5 and Cybor remains good law. So the trick wouldn’t work.

  10. In other words, unless one of the five YES judges changes his/her mind or finds the case improper/inadequate, there is a 100% chance of an en banc rehearing to revisit Cybor if the vote is taken before Taranto is confirmed.

  11. That's right. The problem is that we currently have five judges that say "YES" and once Mr.Taranto is confirmed then we'll need one more. The other four judges have previously said "No" and Mr. Taranto's POV is not known. Taken as a whole, I think it is a reasonable conclusion to say that getting six votes is significantly less likely than getting five votes. 

  12. Once Richard Taranto is confirmed, a majority will immediately require six votes – a much less likely outcome.

    His confirmation won’t change how anybody else votes, so it’s not a question of how many total votes are needed but rather a question of whether he’d be likely to side with the current (presumed) majority.

  13. Actually, it is cited. Read the opinion. Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 2013 U.S. App. LEXIS 6, *9-10 (Fed. Cir. Jan. 2, 2013).

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