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En Banc Order Shows a Schism at the Federal Circuit on Claim Construction and Deference to District Courts

October 31, 2011

The Federal Circuit in a per curiam opinion Oct. 31 refused to rehear en banc a case that centers on how the court’s judges construe patent claims and, in doing so, reignited the debate on the role of the specification in claim construction and the deference that the court gives to district court claim construction rulings (Retractable Technologies Inc. v. Becton, Dickinson and Co., Fed. Cir., No. 2010-1402, 10/31).

Dissenting from the denial of the petition for rehearing en banc, Judge Kimberly Moore was joined by Chief Judge Randall R. Rader in arguing that this case is the right vehicle to address these issues because the panel majority here used the specification to narrow claim scope, and did so despite a contrary claim construction and infringement ruling by the district court.

While Moore questioned the legal analysis of the panel decision, Judge Kathleen O’Malley dissented from the denial of rehearing en banc by arguing that now is the time “to revisit and reverse our decision” in Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998), that claim construction is a matter of law reviewed without deference to a district court’s conclusions. “It is time we stop talking about whether we should reconsider the standard of review we employ when reviewing claim construction decisions from district courts; it is time we do so,” O’Malley wrote.

Lourie and Plager in Panel Decision: The Specification Controls.

In the panel decision in this case, Judge Alan D. Lourie ruled that the  specifications of two retractable syringe patents (6,090,077; and 7,351,224) require a one-piece “body,” and thus could not be infringed by Becton, Dickinson and Co’s two-piece 3 mL Integra syringe. Retractable Technologies Inc. v. Becton, Dickinson and Co., 653 F.3d 1296 (Fed. Cir. 2011).

Lourie reasoned as follows:

In this case, while the claims leave open the possibility that the recited “body” may encompass a syringe body composed of more than one piece, the specifications tell us otherwise. They expressly recite that “the invention” has a body constructed as a single structure, expressly distinguish the invention from the prior art based on this feature, and only disclose embodiments that are expressly limited to having a body that is a single piece. Thus, a construction of “body” that limits the term to a one-piece body is required to tether the claims to what the specifications indicate the inventor actually invented. Accordingly, the district court erred when it construed “body” as encompassing bodies composed of multiple pieces.

In a concurring opinion, Senior Judge S. Jay Plager praised Lourie’s analysis here and quoted his following statement in Arlington Industries Inc. v. Bridgeport Fittings Inc., 632 F.3d 1246 (Fed. Cir. 2011): “[T]he basic mandate is for claims to be interpreted in light of the specification of which they are a part because the specification describes what the inventors invented. The specification is the heart of the patent. In colloquial terms, ‘you should get what you disclose.’” Plager said that he understands how a competent judge can be persuaded by litigation counsel’s “siren song” to give the jury wide scope as to what is claimed. “But it is a song to which courts should turn a deaf ear if patents are to serve the purposes for which they exist, including the obligation to make full disclosure of what is actually invented, and to claim that and nothing more,” Plager wrote.

Dissenters Want En Banc Review of Specification’s Role, Deference.

Dissenting in the panel decision, Chief Judge Randall R. Rader cited the en banc ruling in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), for the “bedrock principle of patent law” that the claims themselves, not the written description portion of the specification, define the patented invention. He said that “[i]t is improper to import limitations from the specification into the claims, and this court has expressly and repeatedly warned against confining claims to specific embodiments of the invention set forth in the specification.” Finding no clear disavowal of claim scope here, Rader said that “[w]hen the inventor intended to impose a one-piece structural limitation, he did so explicitly” in dependent claims in the ‘224 patent.

After an en banc rehearing poll failed, Rader joined the dissenting opinion of Moore, who argued that the “specification may shed light on the plain and ordinary meaning,” but it “cannot be used to narrow a claim term – to deviate from the plain and ordinary meaning – unless the inventor acted as his own lexicographer or intentionally disclaimed or disavowed claim scope.” That claim terms are to be given their plain and ordinary meaning to one of skill in the art is a principle that, “[q]uite frankly, I thought we resolved” in Phillips, Moore said.

Moore continued:

The circumstances in which the written description causes one of skill in the art to reject the plain meaning of a term are quite narrow. If the inventor has chosen a broad claim term that is not supported by his specification, the patent’s validity may be in jeopardy. But we cannot, as the court does in Retractable, redefine a claim term to match our view of the scope of the invention as disclosed in the specification. We are not the lexicographers.…

Changing the plain meaning of a claim term to tailor its scope to what the panel believes was the “actual invention” is not supported by Phillips. The majority uses the specification to discern “the scope of the actual invention,” … and then limits the claim terms accordingly. The concurrence is even clearer on what it views as the proper approach, explaining that “the claims cannot go beyond the actual invention,” and suggesting an “obligation to make full disclosure of what is actually invented, and to claim that and nothing more.” ... While this principle is certainly correct – § 112 requires that the inventor disclose and enable that which he claimed – we do not rewrite claims. This is not a case where the majority is choosing between two equally plausible plain meanings and adopting the one that comports with the disclosure in the specification. The plain meaning of body is not “one piece body.” Absent clear lexicography or disclaimer in the specification, we cannot import that limitation into the claims. We simply cannot rewrite the claims, not even to save their validity.

Finding that this case represents a “fundamental split” in the court on the role of the specification in claim construction, Moore said that the court should now revisit this issue en banc. Further noting that the majority here “gave no deference, rejected the district court’s construction and overturned a jury verdict of infringement,” Moore said that it is also “time to rethink the deference we give to district court claim constructions and the fallacy that the entire process is one of law.”

O’Malley’s dissenting opinion insisted that Cybor’s en banc holding that claim constructions are pure questions of law, reviewable with zero deference, was “ill considered.” She noted that Cybor was based on the Supreme Court’s decision to place claim construction in the hands of judges rather than juries. Markman v. Westview Instruments Inc., 517 U.S. 370 (1996). However, Markman “did not assign the task of claim construction to trial judges because it believed the meaning of patent claims is a pure question of law,” O’Malley clarified. Rather, she noted that Markman simply found that the Seventh Amendment of the U.S. Constitution did not require that the issue be decided by a jury and that judges were better equipped to resolve it. Further, O’Malley pointed out the Supreme Court in that case referred to claim construction as a “mongrel” practice, one involving both legal and factual inquiries.

“Post-Markman, district judges have been trained to—and do—engage in detailed and thoughtful analysis of the claim construction issues presented to them” and conduct live hearings with argument and testimony, O’Malley continued. In this case, two district court judges found “body” to allow for multiple pieces, yet the panel decision “upended the jury verdict and set aside the product of years of litigation,” she said. “[T]he decision here did not promote the consistency and uniformity in patent law that Cybor was intended to foster; the decision here accomplished the opposite.”

“Reasonable minds can—and do—differ over the correct interpretation of the term ‘body’ as used in the patent in suit. These are not the circumstances under which we should be reversing carefully reasoned claim constructions and putting aside years of litigation in the process,” O’Malley continued. She noted that five active judges expressed a desire to revisit Cybor in Amgen Inc. v. Hoechst Marion Rousell, Inc., 469 F.3d 1039 (Fed. Cir. 2006), and that Lourie himself argued in his Phillips dissent that “we ought to lean toward affirmance of a claim construction in the absence of a strong conviction of error.” Agreeing with that sentiment, O’Malley said that now is the “time we stop talking about whether we should reconsider the standard of review we employ when reviewing claim construction decisions from district courts; it is time we do so.”

If, as Moore noted, the Federal Circuit continues to decline resolving its divisions on these fundamental issues, litigants, the patent bar, and others will find that “our rules are still ill-defined and inconsistently applied, even by us,” and view claim construction appeals as risky and unpredictable.

On the per curiam decision were Rader, Lourie, Moore, O’Malley, and Judges Pauline Newman, Timothy Dyk, William Bryson, Richard Linn, Sharon Prost, and Jimmie Reyna. Plager participated in the denial of the petition for panel rehearing.

Retractable Technologies was represented by Roy W. Hardin of Locke, Lord, Bissell & Liddell, Dallas.

Becton, Dickinson was represented by William F. Lee of Wilmer, Cutler, Pickering, Hale, and Dorr, Boston.


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