Earlier today the United States Court of Appeals for the Federal Circuit decided not grant a petition for en banc rehearing in Retractable Technologies Inc. v. Becton, Dickinson and Company. See Order and dissents. While a failure to order rehearing en banc is typically not newsworthy, this one was because there were two separate and passionate dissents. Judge Moore wrote the first dissent and was joined by Chief Judge Rader (who was on the original panel along with Judge Lourie and Judge Plager). The second dissent was written by Judge O’Malley. Both dissents make compelling cases for this case to have been reheard en banc to once and for all address the split among the Federal Circuit relative to claim interpretation.
Judge Moore started her dissent by saying: “Claim construction is the single most important event in the course of a patent litigation.” She would then go on to explain what we all know to be true: “claim construction appeals are “panel dependent” which leads to frustrating and unpredictable results for both the litigants and the trial court.” Bravo to Judge Moore for saying what patent attorneys whisper to each other at cocktail parties out of earshot of one or another Federal Circuit Judge.
I have wondered out loud whether the Judges of the Federal Circuit realize that the outcome is unpredictable until the panel has been announced. It seems that at least some do. How is that defensible? How do others not on the Court not see a problem? The law needs to be certain and predictable and at the Federal Circuit far too many times it is neither. Claims construction is but one of the areas as clear as mud. The Federal Circuit was created to bring certainty to the law, but what has transpired over the course of the last 10 years or so seems to be anything but certainty and stability. For crying out loud a patent is a property right and for any property rights regime to flourish it must be stable and certain! In the words of this generation: OMG!
Judge Moore was concerned with the use of the specification to interpret claim language. There is indeed “a fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims,” as the original panel decision noted. Nevertheless, Moore saw no way to reconcile the panel decision with the seminal claims interpretation case of he last decade — Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) .
Retractable simply cannot be reconciled with our en banc decision in Phillips. In Phillips after generalizing about these very concepts – the primacy of the claims and the role of the specification – this court applied those principles to the term “baffles.” The en banc court held that “baffles” could be placed at any angle including at right angles. Phillips, 415 F.3d at 1324-27. The court explained that there is nothing in the plain and ordinary meaning of baffles which prevents them from being at right angles. Id. The court then pointed to the fact that dependent claims limit the placement of the baffles to angles that will deflect projectiles. Id. The court reasoned that since the dependent claims restricted the angles at which the baffles should be placed, the independent claim, without that limitation, did not. Id. The dissent in the en banc Phillips case believed that the term baffles, should be limited to “angled baffles” because “the specification contained no disclosure of baffles at right angles” and “only angled baffles” can deflect bullets (the primary objective of the baffles). Id. at 1329. The dissent explained that every figure, embodiment, and disclosure of baffles is of angled baffles (not 90 degrees). Id. at 1329- 30.
The dissent made a compelling case – the specification is replete with angled baffles – and angling is necessary to achieve the stated objective of deflection. Nonetheless, the majority of the en banc court held that baffles do not have to be angled.
Judge Moore, however, goes on to conclude:
The error in Retractable is the majority’s attempt to rewrite the claims to better conform to what it discerns is the “invention” of the patent instead of construing the language of the claim. Indeed, the majority candidly explained that its construction, limiting “body” to a one- piece body, “is required to tether the claims to what the specifications indicate the inventor actually invented. Retractable, 653 F.3d at 1305. The majority reaches this conclusion based on the examples disclosed in the specifi- cation that have a “one piece” body, an indication in the specification that the invention “features a one piece” body, and the disclosure that the syringe “can be molded as one piece.” Id. Yet none of these statements in the specification suggest that “body” actually means “one-piece body”; to the contrary, the use of the modifier “one piece” strongly implies that the term “body” does not inherently mean objects made solely of one piece. Phillips, 415 F.3d at 1314.
Confused? Well here is what Judge Lourie wrote in the original panel decision:
We agree with BD that the claimed “body” is limited to a one-piece structure in light of the specifications. While the patents contain an independent claim that recites a “body,” ’224 Patent, claim 25, with a dependent claim that limits the “body” to a “one-piece body,” ’224 Patent, claim 31, none of the claims expressly recite a body that contains multiple pieces. Thus, while the claims can be read to imply that a “body” is not limited to a one-piece structure, that implication is not a strong one.
Hopefully now you can see why Judge Moore was of the believe that this case cannot be reconciled with Phillips. In Phillips the term “baffles” interpreted in light of “angled baffles” in dependent claims. If the baffles could be angled in the dependent claims, which have to narrow by rule, then they wouldn’t have to be angled in the independent claim. The same reasoning was not employed in Retractable Technologies. Following the logic of Phillips the term “body” followed by narrowing claims that specifically recite “one-piece body” should be interpreted to mean more than a one piece body. Hence, Moore’s conclusion that the term “body” has to include both single and multi-piece bodies.
Frankly, this is all just one big mess. The only thing everyone seems to agree on is the problem, namely that there is a fine line between relying on the specification and impermissibly importing meaning from the specification into the claims. What does that even really mean though? If you get to be your own lexicographer and define terms in the specification, which you can, then of course you import meaning from the specification into the claims. So the question has to be this: When is it permissible to import from the specification and when it is impermissible to import from the specification? It would REALLY be great to get an answer to that question, and for that reason alone the Federal Circuit should have granted the petition to rehear the case en banc. What is needed is an answer, and honestly any answer will do as long as it is actually precedential (i.e., followed by future panels, which I know is certainly not guaranteed).
Judge O’Malley, writing separately, was not concerned with importing limitations from the specification into the claims. O’Malley focused on the fact that district court Judges are not given any deference at all in claim construction despite the fact that the United States Supreme Court has recognized that claim construction is a mixed question of fact and law. She wrote:
We decided Cybor in the wake of 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, 372 (1996) (“Markman II”). The Supreme Court, however, 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. Rather, the Supreme Court classi- fied the exercise of claim construction as a “mongrel” practice, involving both legal and factual inquiries. Id. at 378. The Court simply concluded that, because the Sev- enth Amendment to the U.S. Constitution did not demand that the issue be decided by a jury and judges were better equipped to address it, claim construction should be placed in the hands of trial judges. Id. at 388-89. Impor- tantly, the Supreme Court did not affirm this court’s earlier conclusion that resort to a jury was unnecessary because claim construction is a pure question of law. Compare id. at 378, with Markman v. Westview Instru- ments Inc., 52 F.3d 967, 977-79 (Fed. Cir. 1995) (en banc) (“Markman I”). The Supreme Court instead engaged in a detailed historical analysis to determine whether the Seventh Amendment compelled resort to a jury on the unique question of claim construction—an analysis which would have been wholly unnecessary if the Supreme Court agreed with our description of claim construction as a purely legal one. Markman II, 517 U.S. at 378-84.
Despite this seemingly clear guidance from the Supreme Court, we reiterated in Cybor that our court will treat all claim construction determinations as pure questions of law, reviewable with zero deference. 138 F.3d at 1455-56. That decision was ill considered thirteen years ago and has not proven “beneficial” to patent jurispru- dence “in the long run.”
Judge Moore and Chief Judge Rader also mentioned Cybor and their desire to revisit the deference issue. In fact, Moore wrote:
We have waited five years (since Amgen Inc. v. Hoechst Marion Roussel, Inc., 469 F.3d 1039 (Fed. Cir. 2006), where six judges claimed a willingness to review Cybor) for that ever-elusive perfect vehicle to review the issue of deference to the district court’s claim construction.
The wait continues! In the meantime the Federal Circuit, or at least some of the Federal Circuit, seems unwilling to grant any deference to district court Judges on claim construction.
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3 comments so far.
EGNovember 2, 2011 10:07 am
Very funny, SB! May be we come with some more appropriate “parodies.”
step backNovember 1, 2011 11:52 pm
Watch it EG.
That’s a trademarked phrase and you might be disparaging it by mentioning it in the same breath with the Abhorrent Insanity Act (AIA) of 2011.
What’s in your Prior User Rights wallet?
EGNovember 1, 2011 03:56 pm
As I said in my article you cite to, the dissent (Chief Judge Rader) got in right in the panel decision, and the dissent (Chief Judge Rader, Judge Moore and Judge O’Malley) from the denial of the rehearing en banc got it right too. Claim construction is now an utter mess, just like the law is now in determining patent-eligibility under 35 USC 101. The Federal Circuit better get a grip on these fundamental areas, and soon, or hell will truly descend on all of us. (And the thought of what the Federal Circuit might do in construing the Abominable Inane Act now gives me an Excedrin Plus headache.)