By Kevin E. Noonan —
"The
name of the game is the claim." — Judge Giles Sutherland Rich
Much has and will continue to be written
about the Federal Circuit's en banc decision in CLS Bank Int'l v. Alice Corp. last week, and most of the commentary has
and will be critical of the path the court took in arriving at its per curiam decision affirming the District Court's determination that the system, method, and computer-readable
media claims fall within a judicially created exception to the broad scope of
patent-eligible subject matter under Section 101. The decision establishes without doubt that
Section 101 jurisprudence has been broken by the Supreme Court's return to its
subjective, non-statutory approach exemplified in Benson v. Gottschalk and Parker v. Flook, first in Bilski v. Kappos
and then in full flower in Mayo v.
Prometheus. These decisions swing
the pendulum from Congressional determinations of patent-eligibility to the
Court's "we know it when we see it" standard that is not only
directly contrary to the Congressional mandate that created the Federal Circuit
but also contrary to the Constitutional basis for the Court's review of actions
by Congress regarding patents. Specifically, no one with any knowledge of patent law can seriously
argue that the Court's recent forays in finding exceptions to patent
eligibility in any way "promote[s] the Progress . . . of the useful Arts."
But the decision also illustrates another
fracture among the Federal Circuit judges that cannot be laid at the Supreme
Court's doorstep and that in its own way is just as contrary to the statutory
scheme and to almost two centuries of U.S. patent law. That is the practice of
not limiting the inquiry to the language of the claims, but to disregard or
ignore express claim language in an effort to ascertain "what the inventor
has invented." While this tendency
has many antecedents — including the Supreme Court's Section 101 meanderings
but also in the Federal Circuit's application of the written description
requirement and the rubric that the claims should be interpreted in view of the
specification — it has surfaced frankly in other Federal Circuit decisions, most
notably in Retractable Techs., Inc. v. Becton, Dickinson & Co., and in the opinions expressed concurrent with the Court's decision
not to rehear the case en banc.
In the Retractable
Technologies case, Retractable Technologies sued Becton Dickinson for
infringing claims of U.S. Patent Nos. 5,632,733;
6,090,077;
and 7,351,224. These patent claims were directed to syringes configured to retract the needle
into the body of the syringe after use, to reduce the likelihood of
needle-stick injury. The claim term at issue was "body,"
specifically whether the term should be construed to be limited to single-piece
versus multiple piece embodiments. The District Court construed "body"
as "a hollow outer structure that houses the syringe's components,"
and concluded that the term "body" was not limited to a one-piece
structure.
The Federal Circuit reversed, in a
decision by Judge Lourie joined by Judge Plager and (in part) by Chief Judge
Rader. The panel reversed the District Court with regard to meaning of "body,"
finding that the term should be limited to a one-piece structure. The
panel found that the claim language was not
determinative, and disclosure in the specification supported its one-piece body
construction. Specifically, the majority based its decision on the specification,
which described the claimed invention as comprising a one-piece body. In addition, all the figures illustrated
syringes comprising a one-piece body, and the specification disparaged prior
art syringes made of multiple piece bodies. Moreover, there was no
disclosure of a multiple piece syringe body in specification. In
reversing the District Court's construction, the majority said:
There is a fine line between construing
the claims in light of the specification and improperly importing a limitation
from the specification into the claims. In reviewing the intrinsic record
to construe the claims, we strive to capture the scope of the actual invention, rather than strictly limit the
scope of claims to disclosed embodiments or allow the claim language to become
divorced from what the specification conveys is the invention.
(citations omitted, emphasis added)
Judge Plager filed a concurring opinion
expanding on this theme, saying that "the claims cannot go beyond the actual invention that entitles the
inventor to a patent" and that "the [patentee's] obligation [was]
to make full disclosure of what is actually
invented, and to claim that and nothing more" (emphasis added). Chief Judge Rader, dissenting-in-part, argued
the primacy of the claim language, and that it is impermissible to read
limitations from the specification into the claims.
These disagreements regarding both the
proper claim construction here and the proper method for performing claim
construction generally also arose in the Federal Circuit's decision not to
grant en banc review. Two dissents were filed in the Court's
decision not to hear the claim construction decision en banc: one
by Judge Moore, joined by Chief Judge Rader, and another by Judge O'Malley.
Judge Moore's dissent characterized claim construction as "the single most
important event in the course of a patent litigation." However, the
Federal Circuit's rules for making claim construction determinations remain "ill-defined
and inconsistently applied," even by the Court in her view. While
citing commentators to support this conclusion, this dissent focused on the
question at issue in Retractable Technologies and, according to Judge
Moore, a question that arose generally from a deficiency in the Court's
application of the law: where to draw the "fine line" between "construing
the claims in light of the specification and improperly importing a limitation
from the specification into the claims." Her dissent contended that
this was the case to consider the issues of "the role of the
specification in construing the claims and whether deference should be given to
the district court in the claim construction process."
Judge Moore relied principally on Phillips v. AWH Corp.,
415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc), and the "bedrock
principle" that "the claims of a patent define the invention to which
the patentee is entitled the right to exclude." She discounted the
concerns voiced by the Retractable Technologies majority, including that
"the metes and bounds of what the inventor claims extend beyond what he
has invented or disclosed in the specification." In that case, the
question would be one of validity rather than claim construction, she stated,
and it is not the role of the court to "tailor the claim language to the
invention disclosed." Citing Phillips, her dissent relied on
the mantra that the "plain meaning" of the clams controls (and the
dissent voiced surprise that this question was not resolved in Phillips).
Judge Moore stated her (stringent) standard for the relationship between the
claims and the specification: "the specification 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,"
citing Phillips and Teleflex, Inc. v. Ficosa N. Am. Corp.,
299 F.3d 1313, 1327 (Fed. Cir. 2002)(emphasis added). Any
deviation from this procedure should be applied narrowly, in her opinion, and
specifically, her dissent opined that the choice of an overbroad term may
affect validity but should not be considered for claim construction.
Following a detailed recitation of the facts and legal principles enunciated in
Phillips, the dissent contrasted the majority decision in Phillips
with the panel decision here: in the absence of "disclaimer or
special lexicography," the plain meaning standard must be applied.
And the evidence, according to this dissent, failed to support a claim limited
to single-body embodiments.
Judge Moore identified the problem with
the panel decision with particularity:
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."
(emphasis in
original)
While agreeing that the specification and
claims must comply with the requirements of 35 U.S.C. § 112, her dissent stated
simply that the Court "does not rewrite claims"; Retractable
Technologies was not a
case, Judge Moore contended, where "the majority is choosing between two
equally plausible plain meanings and adopting the one that comports with the
disclosure in the specification." Rather, that case was illustrative
that there is "a fundamental split within the court as to the meaning of Phillips
and Markman as well as the proper approach to claim interpretation."
That was enough to convince Judge Moore and Chief Judge Rader that claim
construction required reconsideration by the court en banc. Judge
Moore also wrote that the Retractable Technologies case had a procedural
posture that would permit the court to set forth the extent to which the "mongrel
practice" of claim construction would permit or require deference to a
district court's factual determinations under Markman v.Westview Instruments, Inc.,
517 U.S. 370, 378 (1996).
When considered in this light, some of the
sentiments expressed by Judge Lourie's "concurring" opinion in CLS Bank Int'l can be
appreciated as more than just acquiescence to a perceived Supreme Court mandate
to reign in a "patent-happy" USPTO. Examples of the propensity to focus on what
was "invented," rather than what is claimed, include the "description"
of the invention as:
[A] computerized trading platform
used for conducting financial transactions in which a third party settles
obligations between a first and a second party so as to eliminate "counterparty"
or "settlement" risk . . . . Settlement risk refers to the risk
to each party in an exchange that only one of the two parties will actually pay
its obligation, leaving the paying party without its principal or the benefit
of the counterparty's performance. Alice's patents address that risk by
relying on a trusted third party to ensure the exchange of either both parties'
obligations or neither obligation.
As well as the opinion's discussion of the
relevant Supreme Court rubrics:
Where bona fide § 101 concerns
arise, however, it is important at the outset to identify and define whatever
fundamental concept appears wrapped up in the claim so that the subsequent
analytical steps can proceed on a consistent footing. . . . In short, one cannot meaningfully
evaluate whether a claim preempts an abstract idea until the idea supposedly at
risk of preemption has been unambiguously identified.
With the pertinent abstract idea
identified, the balance of the claim can be evaluated to determine whether it
contains additional substantive limitations that narrow, confine, or otherwise
tie down the claim so that, in practical terms, it does not cover the full
abstract idea itself.
Even computer-readable medium claims
cannot stand under this analysis ("under § 101 we must look past drafting
formalities and let the true substance of
the claim guide our analysis").
This approach, which Judge Lourie terms
the "inventive concept" approach, may be consistent with recent
musings by the Supreme Court on the philosophical bases for patent eligibility,
but it is in stark contrast with what Judge Moore in Retractable Technologies
recognized was a "bedrock principle," i.e., first interpreting the
claims consistent with the specification and prosecution history, because only
then can the particular questions mandated by the Supreme Court — whether the
claims implicate a law of nature, natural phenomenon or abstract idea, whether
the claims completely preempt any implicated law of nature, natural phenomenon
or abstract idea, or whether the claims "merely embody, use, reflect, rest
upon, or apply those fundamental tools" be answered.
The application of these principles is not
lost on the dissenting members of the Court, including Chief Judge Rader who
writes directly to this point in his "additional observations" as
well as in his concurring-in-part, dissenting-in-part opinion where he was
joined by Judges Linn, Moore, and O'Malley. The Chief Judge, as a former Congressional staffer to Senator Orin
Hatch, has written before about the importance of courts relying on the
language of the statute in rendering their opinions (such as in Merck v. Integra and the Hatch-Waxman
Act) and he does so again here, explicating the legislative history and
interdependence of Sections 101, 102, and 103 of the 1952 Patent Act (in the
process emphasizing that Congress had relegated the "inventiveness"
question, fruit of prior Supreme Court decisions, to Section 103; indeed, even
the Court itself has recognized that Congress was "merely" codifying this
requirement, as noted, inter alia, in
Graham v. John Deere). In doing so, he rebuts Judge Lourie's
concurring opinion but also the "less than pellucidly clear" language
in Bilski and the outright inapt
language in Mayo, which most clearly
introduces these concepts back into the Section 101 analysis contrary to
Congressional intent. Indeed, Chief Judge
Rader recognizes the danger in the application of judicial subjectivity in
Judge Lourie's (and the Mayo)
approach:
Any claim can be stripped down,
simplified, generalized, or paraphrased to remove all of its concrete
limitations, until at its core, something that could be characterized as an
abstract idea is revealed . . . . A court cannot go hunting for
abstractions by ignoring the concrete, palpable, tangible limitations of the
invention the patentee actually claims.
The Chief Judge states his case succinctly
in his "Additional Reflections" to the court's en banc decision:
When all else fails, consult the
statute!
And for evidence that all else
has failed, I need only recite Bilski v.
Kappos, 130 S. Ct. 3218 (2010), Mayo
Collaborative Servs. Inc. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012), Ass'n for Molecular Pathology v.
U.S. Patent & Trademark Off., 689 F.3d 1303 (Fed. Cir. 2012), cert
granted in part, 133 S. Ct. 694 (2012), MySpace,
Inc. v. GraphOn Corp., 672 F.3d 1250 (Fed. Cir. 2012), Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012), and Classen Immunotherapies, Inc. v. Biogen IDEC,
659 F.3d 1057 (Fed. Cir. 2011), and this list can and will go on and grow.
And the remedy is the same: consult the
statute!
And more specifically (and invoking Giles
Sutherland Rich, the only patent jurist the Supreme Court deigns to consider
worthy of its recognition), the Chief Judge writes:
And what about "exceptions"
like natural laws and natural phenomena? Of course, these are universal
constants created, if at all, only by God, Vishnu, or Allah. But, for
perspective, even gravity is not a natural law in Einsteinian theory, but a
symptom of a curved universe. Einstein posited the speed of light as the only
true natural constant. Thus, in context, equating the personalized medicinal
effect of a human-created pharmaceutical in patients of different metabolic
rates and genetic makeups with the speed of light (or even gravity) is only
possible in a netherworld of undefined judicial insights. Moreover, to inject
the patentability test of "inventiveness" into the separate statutory
concept of subject matter eligibility makes this doctrine again "the
plaything of the judges who, as they became initiated into its mysteries,
delighted to devise and expound their own ideas of what it meant; some very
lovely prose resulting." Giles S. Rich, Principles of Patentability, 28
Geo. Wash. L. Rev. 393, 404 (1960).
Among other things, Judge Rich was
remarkably prescient.
Paul Scofield, as Sir Thomas More, recites
a speech in A Man for All Seasons
that is apropos to Judge Rader's point. Speaking about God and the devil, the dialog reads as follows:
Alice More: Arrest him!
More: Why, what has he
done?
Margaret More: He's bad!
More: There is no law
against that.
William Roper (at right): There is! God's law!
More: Then God can
arrest him.
Alice: While you talk, he's
gone!
More: And go he should,
if he was the Devil himself, until he broke the law!
Roper: So now you'd give
the Devil benefit of law!
More: Yes. What would
you do? Cut a great road through the law to get after the Devil?
Roper: I'd cut down every
law in England to do that!
Moore:
And when the last law was down, and the Devil turned round on
you — where would you hide, Roper, the laws all being flat? (He leaves him) This
country's planted thick with laws from coast to coast — man's laws, not God's — and
if you cut them down — and you're just the man to do it — d'you really think you
could stand upright in the winds that would blow then?
The Supreme Court, in its recent focus on
patent eligibility, is like Roper, believing that the importance of getting the
amount of patent eligibility "just right" is important enough to
ignore the law (at least that portion of the law that mandates that claims are
what sets forth the metes and bounds of an invention), at all costs. Judge Rader and those members of the Federal
Circuit who recognize the folly in this endeavor have, at least, this reliance
on the law to guide them, when other members of the Federal Circuit seem to have lost
their way in the fog of recent Supreme Court jurisprudence.
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