Predicting En Banc Issues

By Jason Rantanen

Dissenting opinions are generally considered to be good predictors of en banc review.  On one level, this is largely indisputable: most appeals that the Federal Circuit takes en banc involve a divided panel decision, and appellate practitioners are well aware that the chances of getting en banc review of an opinion that contains a dissent are much better than persuading the full court to review a unanimous opinion.  Of course, knowing that dissenting opinions are the more likely candidates for en banc review isn't particularly helpful by itself, since Federal Circuit judges pen more than thirty patent-related dissents each year. 

There's an extension of this theory, however, based on the idea that a high number of dissents on a particular patent law issue is a signal that the court may take that issue en banc in the near future.  There are several reasons why this extended theory is plausible: dissents may indicate that the court is cognizant of the importance of a particular legal issue; they may demonstrate awareness by the court of an intra-circuit split that it needs to resolve; they may also represent a pre-en banc dialogue between the judges.  Dissents are not costless, after all – sometimes they can be as much work or more as writing the majority opinion, and most judges do not write them as a matter of course. 

Empirical observations support this theory, at least for some grants of en banc review.  In the two years prior to the Federal Circuit's grant of en banc review of inequitable conduct in Therasense v. Becton Dickinson, for example, there were four dissents on the issue of inequitable conduct.  On the other hand, in the two years prior to the grant of en banc review in In re Seagate there were no dissenting opinions on the issue of willful infringement.  Thus while there may be value in keeping an eye on areas where dissents are common, it's by no means a perfect predictor.

With that caveat, I read through the patent-related dissents for the past two years to assemble a picture of recent Federal Circuit dissents.  All together, there were 64 of these dissents in panel opinions.  The following chart depicts the authors of those dissents.

Dissents by Judge
The next chart depicts the issues addressed by those dissents that arose with a frequency of greater than 1.  Note that there were four dissents that involved two issues.  In order to prepare the chart below based on dissenting opinions, I included only the first issue, but the second issue would also be relevant.  Those second issues were joint infringement(1), infringement(3), inequitable conduct(2), and doctrine of equivalents(2) (totals dissents addressing this issue in parentheses).

Dissents by Subject Matter

One nuance that is not conveyed by this chart is the degree to which the judges dissent on specific issues.  Two are noteworthy: Judge Dyk wrote four of the dissents on claim construction, while four separate judges (Bryson, Moore, Plager and Mayer) wrote the dissents on the issue of subject matter patentability.  Judge Newman wrote on a variety of issues.

The final chart depicts the issues that the Federal Circuit declined to consider en banc with at least one judge dissenting from that decision.  Note that for several of the issues included in the previous chart (state law malpractice claims, assignment, claim construction, and preliminary injunctions), the court has also declined to consider those issues en banc over the views of at least one judge.

Petitions with Dissents
These statistics hardly tell the whole story, of course.  Both litigation and appeals – let alone en banc review – are rare events, and thus attempting to divine highly predictive information is difficult.  Furthermore, two judges (Judges Newman and Dyk) together wrote almost half of the dissents.  Nevertheless, when combined with other insights, the above data may be helpful.  Claim construction and obviousness are hot topics (although last fall the CAFC declined to take claim construction en banc).  There is also significant disagreement among the judges on subject matter patentability, although they may not be willing address that issue through an en banc court given the Supreme Court's substantial interest in the topic.  In addition, my own sense is that there is more disagreement among the judges on the issue of the standard for preliminary injunctions than is apparent from the statistics alone.  It would not surprise me if the court were to grant en banc review on this issue – although admittedly it declined to do so recently.

What are your views on the next issue that the Federal Circuit reviews en banc?

For more on predicting en banc review generally, see Tracey E. George, The Dynamics and Determinants of the Decision to Grant En Banc Review, 74 Wash. L. Rev. 213 (1999).  For a discussion of Federal Circuit en banc practice, see Christopher A. Cotropia, Determining Uniformity within the Federal Circuit by Measuring Dissent and En Banc Review, 73 Loyola Los Angeles L. Rev. 801 (2010) (available at

Edit: minor correction to charts. 

58 thoughts on “Predicting En Banc Issues

  1. 57

    Mr. anon, generally I do not agree with Judge Rich.  However even he in In re Bergy noted the confusion caused by the use of the term "eligible."  It is quite clear to me, and I hope to you, that the term eligible is being used in a very confusing sense when discussing patentable subject matter.  I think Rich was well aware that the term was being used both in a specific sense and in a general sense in cases and that this was causing confusion.

    I take this clue from Judge Rich that cases were not consistent.

    Therefore, and relying upon Judge Rich's views in this matter to be accurate, I will concede the point that the term eligible has been used in the case law in an inconsistent way such that it has no one specific meaning.

    That being said, may I politely suggest that we begin to use eligible in a specific sense, and that is to mean that a claim or category of claims are statutory under section 101 leaving open only the questions of patentability under sections 102/103/112?

  2. 56

    The reason Ned I disagreed with you is because you have merely responded to my questions and have not answered them.

    You still have not answered them.

    My response was clear on this point. Instead you continue to play word games, giving me empty rhetoric instead of answers.

    I note that somewhere you comment that I am not taking the legal meaning of the word eligibility into accord when I discuss a group, a category above a singular claim. Nothing could be further from the truth. About a month ago now I clearly explained to you that there is more than one legal meaning to that word. I clearly explained that context was critical when discussing the legal meaning and clearly pointed out that you were the one obfuscating the legal meaning by your – and still continuing – insistence on conflating the singular claim context with a group or category context. It is not acceptable for you to blatantly take things out of their proper context. I have repeatedly aske dyou to stop this malfeasance.

    I also read somewhere where you put forth the absolutely unbelieveable view that the Court has only ever used eligibility in the singular case sense. I am astounded that you would type such a clear misstatement. A retraction of that view is a neccesary first step for anythin you say to have any credence.

    There is no legal justifiable rational for the clear games you are playing with the multipl meanings of eligibility, with the insertion of “per se” where that phrase does not belong and with your – seemingly perpetual – abuse of the word “categorically’ as opposed to as a category.

    I have been more than clear on dismantling your perversions of these words when it comes to discussions of patent eligibility. You ignore my clear reasoning with no legal reasoning of your own to combat the positions I have put forth. You merely engage in the same tired rheotic and you have not answered any of my questions.

    I have been busy of late – a very good thing – but do not take my otherwise spares replies as my agreeing with anything you have said. The ball is still very much in your court to provide clear, simple and honest answers to the questions I have actually asked. Your rhetoric as response is not enough.

    I demanded simple straight forward answers to the questions I akased. My questions of “why,” and not your percieved questions of “whether.”

    You have failed to give me answers. Responses are not answers. Games and word play are not answers.

    I have been clear and respectful, and will attempt to remain so. There are plenty that will not be, and further, your absence of truth and honesty speaks so loudly, that the s_ckpuppet chorus and even your dissembling responses are drowned out by what you do not say and when you do not say it. I merely need to point to that absence to win – and to continue to win – the debate on patent eligibility.

  3. 54

    Mr. L I A R, I answered every it one of his questions, point by point, quoting his questions beforehand and then answering them.  Why don't you check his post and my answer to it.  (Hint, his post is not in this thread.)  I have received a reply from Mr. anon acknowledging my reply, even though he disagrees with.

  4. 53

    Mr. Casual, did you read that I would reply to Anon’s long post? Where do you think that post was? Here? Or where anon’s post occurred?

    Mr. Casual, you have joined the long list of buffoons that disgrace this forum.

  5. 51

    I have not seen any answers from Ned either.

    He seems to have no respect for Anon, and a total disregard for the truth.

  6. 50

    answered each and every one of his questions separately

    L I A R

    You answered none of his questions.

    Will we ever see an honest, non-agenda driven actual honest to goodness answer from Ned?

  7. 49

    If the copyright owner registered their work, then the government has a copy already.

    Likewise if the copyright owner followed the law according to mandatory submissions.

  8. 47


    Perhaps that earlier memo being a piece of shtt is a good thing for government intervention.

    Had the memo been drafted better, or have been more convincing, the government would have difficulty making a case for any viable interest, at least to the level of standing (albeit there is some debate on the requirement of standing being required).

    Keep in mind that if the government does achieve its goal of intervening, it will be bound by the court’s decision.

  9. 45


    Your grasp of logic in rebuttal to Sgic is weak.

    One, your coverage of being aware fails to meet the point raised.

    Two, the person who has downloaded can submit their copy. The version you have in your possession can be passed on and you only get in trouble if you retain or make yet another copy for yourself.

    Three, in essense you did say the limited times ws violated by your inference to “apparently forever.”

    Four, the opinion that the USPTO memo is “a piece of shtt too” would not be used of its own accord, but the reasons why that earlier memo is “a piece of shtt too” can be used.

    Altogethr, your posts on this subject lack any strength.

  10. 44

    The point is not “they don’t need to rely on.” The point is that they put forth the position in the first place.

    Sharpen your focus, plurality.

  11. 43

    “Two, the USPTO may not be able to download it, if the publisher takes the document down later or IP-blocks the site, for instance. ”

    Yet another reason for us to take art or a subscription by force of arms.

  12. 42

    “They provide a website where all their competitors can download copies of the document, but they’re very clear that the licensing terms of the download don’t include redistribution rights. ”

    They could just send the PTO a url…

  13. 41

    With the (not so slight) difference that invalidity attaches to the patent against all and fair use attaches to the “infringer,” leaving the copyright otherwise intact.

  14. 38

    I do not agree with the PTO position. 
    However, fair use is statutory in copyrights.  And, we should consider that when the government regulations authorize acts of infringment, the laws also provide the copyright owner an action against the government in the court of claims.   
    From 28 USC 1498:
    "….[W]henever the copyright in any work protected under the copyright laws of the United States shall be infringed by the United States …
    or any person, firm … acting … with consent of the Government …"
    What is this brief by the government but consent?

  15. 37

    6, it's like saying that one cannot infringe an invalid patent.   Invalidity is a defense.  So is fair use.  But one it is proved, the acts of copying, etc., are not infringement by statute.  See 35 USC 107.

  16. 36

    One, I already covered being aware of the work, via the website, and I mentioned it as a caveat when I discussed the result of the scenario.

    Two, the USPTO may not be able to download it, if the publisher takes the document down later or IP-blocks the site, for instance. What constitutes awareness of prior art hasn’t been fully fleshed out yet, and it’s not clear whether a corporate assignee would be burdened to cite prior art it was made aware of a century ago, for instance.

    Three, I didn’t say that extensions violate the limited times clause. In fact, I vividly remember cringing at the SCOTUS case that said otherwise. I just said that, given recent trends, it’s likely that there will be further extensions, especially given the SCOTUS decision.

    Your opinion on the USPTO memo is duly noted, but I don’t think Wiley will be using that argument in court.

  17. 35

    There’s nothing saying that Wiley (or any other copyright holder) has to license a printed work for distribution. This could potentially lead to a perversion of the patent law via copyright law.

    Another error in logic.

    If the work was not distributed to the party in question, then the party in question cannot be aware of the work and there is no duty to report it.

    They provide a website where all their competitors can download copies of the document

    Another error in logic – the USPTO could also download it.

    for as long as the copyright persists, which, according to recent trends, is apparently forever.

    Yet another error in logic. Extension do not vioalte the limited times clause.

    did discuss those factors in their memo from several months back

    That memo was a piece of shtt too.

  18. 34

    They don’t need to rely on the “common question of law or fact” bit. See FRCP 24(b)(2).

  19. 33

    There’s nothing saying that Wiley (or any other copyright holder) has to license a printed work for distribution. This could potentially lead to a perversion of the patent law via copyright law.

    Suppose a publishing company publishes a document describing a very useful technique of some sort. They provide a website where all their competitors can download copies of the document, but they’re very clear that the licensing terms of the download don’t include redistribution rights. The technique turns out to be the cornerstone for a huge array of related techniques, none of which the publisher invents.

    The result, if submitting that document to the USPTO isn’t fair use, is that nobody who was aware of the document would be able to file for a patent on any of those related techniques, because they would never be able to fulfill the regulatory requirements. (Okay, technically, they still could, but they’d be rolling the dice on the validity of the result.) And this problem would last for as long as the copyright persists, which, according to recent trends, is apparently forever.

    Of course, that really only serves as part of the evidence weighed in the fair use factors described in 17 USC 107, and the Government didn’t really outline those factors in their answer and counterclaim, but they did discuss those factors in their memo from several months back on the same topic.

  20. 31

    Another example is the permissive prong wherein the government says it has a claim or defense that shares with the main action a common question of law or fact.

    The government has no such position because the government is not involved in any other litigation that would create such a claim or defense. The government would need to be involved in a suit itself to avail itself of this section of the federal rules of civil procedure. Contrary to the government’s wishes, this permissive section does not allow just anyone who prospectively might have a claim or defense, if sued, to join in without there actually being such a claim or defense in existence.

    Such sloppy treatment of the law should be sanctioned.

  21. 30

    The government’s mandatory prong is built on a false premise.

    The government’s postion holds based on the supposition that if Wiley wins, then those seeking patents will break the law and not submit relevant art. The government assumes that Wiley’s rights (if upheld) mean that patent applicants cannot meet their duty.

    This is just not so. If Wiley wins, it just means that applicants must pay a rightful owner the stipulated price for obtaining a copy in the first place for any additional copy, or failing that, must surrender their copy.

    There are many such false premises in the Government’s position (another example is that the government implies that the public is an entity that engages in examination). Oh how would I enjoy being on the team that gets to write the opposing motion.

  22. 29

    One other thing I don’t understand. If the copying of references for use in submitting them TO the PTO is fair use, then how in the world is the PTO CITING references not always fair use? And if us CITING them is always fair use then why are we paying outlandish sums of money to the journals for a subscription? Why do we not simply mandate that we get a sub to all journals and take a sub by force of arms?

  23. 28

    Perhaps a copyright lawlyer can help me out on understanding this better, but I thought that “fair use” was a defense to copyright infringement, not a determination that you never in fact infringed. In the PTO’s filing they seem to be stating that copying the NPL in association with a filing of a patent or prosecution thereof is simply not even copyright infringement right after they just got through saying that it was a fair use of the copyrighted work. I mean, either it is not infringement in the first place OR it is fair use, right? The OR is exclusive right?

  24. 27

    I agree. Judge Plager concurrence in Retractable should be noted, if not by the Federal Circuit, then by the Supreme Court. Philips settled nothing it seems.

    “PLAGER, Circuit Judge, concurring.
    I join the thorough and well-reasoned opinion of
    Judge Lourie. I write because, in the welter of all the
    claims in this case (both patent and litigation), the multiple patents at issue, the number of issues the parties have
    chosen to argue about (including the important claim
    construction issue), it would be easy to lose sight of a
    fundamental point so well made in the majority opinion:
    “In reviewing the intrinsic record to construe the claims,
    we strive to capture the scope of the actual invention,
    rather than . . . allow the claim language to become divorced from what the specification conveys is the invention.”

    link to

    According to Andrew, above, the Supremes will consider the petition for cert. on June 21.

  25. 26

    I suspect that Dennis will post this in due course, but the AIPLA reports that the USPTO has moved to intervene as a defendant in one of the copyright infringement cases against law firms that make copies of copyrighted publications for IDS purposes.

    link to

  26. 24

    So says the dude who went ape-shtt over the term “Nancy.”

    You want to share your pills, buddy?

  27. 22


    It would be interesting to see whether certain concurrences also predict en banc review, especially where judges concur due to stare decisis principles. I suspect that some dissent averse judges would prefer to concur rather than dissent. Perhaps adding concurrences into your statistics might add some predictive power.

  28. 21

    Mr. A Hole, I did respond. It just wasn’t posted here on Patently O. I reposted earlier today.

    However, Anon asked for a more detailed response. Out of respect for Anon, I have gone back, and as he asked, answered each and every one of his questions separately. My detailed answer is now posted in the Survey thread, circa 06:47 pm Patently O time.

  29. 19

    If anyone should be mad, it should be Anon.

    No one should have to try so hard to get a straight answer.

  30. 18

    Mr. A Hole, I will not give your post any consideration beyond the opening sentence.

    My post references my own reply to Anon’s referenced series of post. My reply was three minutes later, from the previous reply to anon. 12:58 vs. 12:55.

  31. 17

    Criminy Ned,

    You said you had already done that. Have you been caught LIEING again?

  32. 16

    Criminy Ned, “Three minutes later” Why are you looking three minutes later? Anon’s questions are not there. You should be looking at one thing and one thing only.

    Besides, you were schooled on the right answer to that question.

    Did you ignore that as well?

    Here, let me repeat it for you:

    “why do you think…”

    1) Because they are not patent law experts.

    2) Because ideological (philosophical) factions were involved. Ignoring the reality of who sits on the bench, and thinking that law is pure and chaste because it comes from the Bench is the worst kind of naiveté.

    3) Holdings have been quoted accurately. You are getting lost in the weeds of dicta. Benson did not have a holding on programmed computers. Benson was explicit about what it’s holding in relation to programmed computers was:

    It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.

    It’s about time you stopped the farcial reading of law.

    Chrissakes, just look at Prometheus.

    And for Chrissakes, stop dawdling on periphery issues and answer Anon’s questions.

  33. 15

    anon, per your request, I will take your long post, repeated in your reply to me at 08:31 this morning, and address each question you ask individually.

  34. 14

    Criminy Ned,

    Anon has given you the explicit time stamp: Reply May 24, 2012 at 07:49 AM like a bajizillion times now.

    He even fricken reposted the whole thing today.

    You are AVOIDING the post and wasting everyone’s time.

  35. 13

    Criminy Ned.

    You want Anon to respond to a post that is six days old when you have answers still not given to a post that is twenty-one days old?

    Anon should tell you to pound s_alt.

  36. 12

    Three minutes later, at 12:58:

    “anon, regarding you post at 7:49, why is it that you refuse to even acknowledge the holding of the court in Bilski regarding the categorical exclusion of business methods? The majority decided they were not categorically excluded.

    Again, why not use the words of the Court in describing what the court held?”

  37. 11

    This post was sent by me to the Patent of the Day thread on June 11, 12:55 pm my time, 3:55, I believe, Patently-O time. It was not posted.

    Anon, I have now reviewed the posts cited below. They contain no “questions.” They, however, contain your demand that I answer your questions. Again, I respond, what questions?

    From your post at 11:18,

    “You said “I remain your humble servant. What questions do you want to ask?”
    I take the time to put the questions in context and address you directly so that you cannot claim you did not see them and to reduce the chance that you take things out of context.

    I receive indignation from you. I receive no answers from you.”

    Your post to me:

    “anon has replied to your comment:

    For at least the FOURTH time:
    See the thread at link to
    from May 23, 2012 at 04:59 PM to May 24, 2012 at 11:18 AM.”

  38. 8

    Agreed. As a recent claim construction hearing opened, well attended by a local law school, Chief Judge Ware of the N.D. of California made a remark about this issue. He was well aware that he had to get the construction right, or he was going to be overturned.

    Part of the uncertainty in claim construction appears be caused by uncertainty in the rules. How else can we explain the courts 5-5 split in the recent Hemcon case.

    Claim construction needs fixing.

  39. 7

    Respectfully Ned, you have other tasks that demand your time. Please see my post today on the Survey Response thread, as your alleged response from Monnday never made it to these boards, nor to your typepad account.

  40. 6

    I suspect Dennis will post on this shortly, but the Feds have again addressed the Bard v. W.L.Gore case, this time holding, after en banc review of the prior panel decision, that the objective prong of the Seagate willfulness standard is one of law.

    BARD PERIPHERAL VASCULAR v. W.L. GORE & ASSOCIATES, INC., Fed. Cir. 2012 ( 2010-1510)

    “Seagate established a two-pronged test for establishing the requisite recklessness. Id. Thus, to establish willful infringement, “a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” Id. Once the “threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk . . . was either known or so obvious that it should have been known to the accused infringer.””

    “In considering the objective prong of Seagate, the judge may when the defense is a question of fact or a mixed question of law and fact allow the jury to determine the underlying facts relevant to the defense in the first instance, for example, the questions of anticipation or obviousness. But, consistent with this court’s holding today, the ultimate legal question of whether a reasonable person would have considered there to be a high likeli-hood of infringement of a valid patent should always be decided as a matter of law by the judge. See DePuy, 567 F.3d at 1324.”

    The court vacated and remanded. Judge Newman dissented from the remand. She obviously considers that Gore belief in the patent’s invalidity to be reasonable:

    “Gore’s actions involve a host of potentially relevant facts that Gore could reasonably have believed would invalidate the Goldfarb patent or support Gore’s right to continue to produce the Gore-Tex® grafts as it had for the 28 years of patent pendency; including (1) the ruling of the Patent and Trademark Office, affirmed by the Federal Circuit, that Gore’s employee Cooper was the first to conceive of the invention that was patented by Goldfarb; (2) the fact that Cooper provided Goldfarb with the Gore-Tex® tubes that Goldfarb patented; (3) the fact that Goldfarb tested the tubes in dogs at Cooper’s request; (4) the fact that others had previously tested the Gore-Tex® tubes in dogs and sheep, and had reported and published the same results that Goldfarb later patented; (4) the fact that the Goldfarb application was pending for 28 years, leaving doubt as to the outcome in the Patent Office. It is not irrelevant that the eventual allowance of the Goldfarb application included the admitted perjured affidavit of Denton, an affidavit that Denton asked Goldfarb to withdraw, and was refused.”

  41. 5

    I’m curious if there is a similar correlation between the number of dissents on an issue [or, more accurately, the pecentage of total decisions on the issue containing a dissent] with the odds of the Sup. Ct. taking it up – both with, and without, an en banc Fed. Cir. decison?

  42. 4

    Bang on with that, 6. One version of Sod’s famous Law is that the better adapted the case is, for en banc review, the more likely it is to (very annoyingly) settle. Sigh.

  43. 3

    “I suppose that not every case has the matrix of fact to tee up nicely the precise issue for en banc review”

    I suppose that more than you guess do but people wuss out from addressing legal issues squarely. It takes a pair of balls, or a huge potential liability, to take an issue all the way.

  44. 2

    I suppose that not every case has the matrix of fact to tee up nicely the precise issue for en banc review. I imagine they will wait till the right case comes along.

    I imagine that not every case perfect for dissent is necessarily good material for a satisfying and useful en banc review outcome.

    I imagine the stats are useful to confirm gut feelings, that claim construction and obviousness are ripe for review, when the right case comes along.

    Fascinating, the parallel with how law is made at DG3 of the EPO (its judges being the ultimate interpreter of the substantive law of patent validity under the European Patent Convention).

  45. 1

    In my view, the most compelling en banc issue is the standard of appellate review of claim constructions. CJ Rader and Judges Linn, Dyk, Moore and O’Malley are all on record as ready to revisit Cybor. Given the current vacancy (Richard Taranto’s nomination is moving at a glacial pace due to the typical partisan bickering), all it takes is one more judge to grant an en banc petition challenging Cybor and overrule it in favor of a more deferential standard of review — probably “clear error”.

    This would all be moot next week if the Supreme Court grants the cert petition in Retractable Technologies v. Becton, Dickinson. That has been set for the June 19th conference. We’ll probably know the following day whether it’s a grant, deny or call for the views of the Solicitor General.

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