By Kevin
E. Noonan —

In
his novel My Summer in a Garden
(1870), Charles Dudley Warner famously said "Politics makes
strange bedfellows."  That aphorism
is illustrated once again in the joining of the Public Patent Foundation with
eight technology transfer organizations and the Association of University of
Technology Managers,* urging the Federal Circuit to overturn its decision in Cybor Corp. v. FAS Technologies, Inc.,
138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc), that claim construction by a
district court is entitled to no deference.

The
brief (~7 page) amicus brief addresses the three questions posed by the Federal
Circuit for en banc review:

1) Should [the] court
overrule Cybor []?

2) Should [the] court afford
deference to any aspect of a district court's claim construction?

3) If so, which aspects should be
afforded deference?

As
to the first question, the brief answers in the affirmative, simply stating
that Cybor should be overruled to the
extent it places factual determinations "outside the realm of deferential
review" for reasons set forth in the remainder of the brief.

Regarding
the second question, the brief notes that claim construction is a mixed
question of law and fact, a situation not unusual in patent law, citing
obviousness and enablement as being questions of law based on frequently
disputed facts.  A district court's
factual determination relating to these questions is reviewed under a "substantial
evidence" standard (e.g., Martek
Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1378
(Fed. Cir. 2009) (enablement); Honeywell Int'l,
Inc. v. United States, 609 F.3d 1292, 1297 (Fed. Cir. 2010) (obviousness).  The brief also notes that the Supreme Court's
decision in Markman v. Westview Instruments does not mandate the approach taken
by the Federal Circuit in Cybor.  Even certain members of the Court (former
Chief Judge Michel, current Chief Judge Rader) don't agree with the Court's
approach in Cybor:

It seems to me that the claim construction question often
cannot be answered without assessing, at least implicitly, what the average
artisan knew and how she thought about the particular technology when the
patent claims were written.  To make such determinations, the trial judge
necessarily relies upon prior art documents and other evidence concerning the
skill of the ordinary artisan at the relevant time.  Indeed, trial judges are
arguably better equipped than appellate judges to make these factual
determinations, especially in close cases.  In such instances, perhaps we should
routinely give at least some deference to the trial court, given its greater
knowledge of the facts.

Amgen Inc. v. Hoechst Marion
Roussel, Inc.,
469 F.3d 1039, 1041 (Fed. Cir. 2006) (Michel, C.J. and Rader, J., dissenting).

And
other members of the Court have gone further, citing Fed. R. Civ. Pro. Rule
52(a); see Phillips v. AWH Corp.,
415 F.3d 1303, 1332 (Fed. Cir. 2005) (en banc) (Mayer, J., and Newman, J.,
dissenting).  The TTO's amicus brief states:

The
Amici agree with these dissenting opinions — there is no reason to treat the
appellate review of factual underpinnings related to claim construction any
differently than any other factual determinations.  The resulting deference will
ensure a greater predictability for the claim construction proceeding, and will
avoid having to "re-try" the factual underpinnings of claim
construction on appeal.

The
advantages of adopting this standard of review would include "a greater
predictability for the claim construction proceeding" and "avoid[ing]
having to 're-try' the factual underpinnings of claim construction on appeal."  The resulting "[p]redictability and
avoidance of duplicative effort are of particular importance to
universities, related institutions, and
the organizations to which such institutions belong," according to the
brief, "particularly since patent litigation, with its attendant costs and
uncertain outcome already places such institutions in a disadvantaged position."

Finally,
the brief argues that a district court's factual determinations incident to
claim construction should be reviewed under a "substantial evidence"
standard.  The brief illustrates the
consequences and justifications of their approach using the case at bar:

In
resolving this question [i.e., the meaning of a disputed claim term], the
district court evaluated evidence in the form of expert deposition testimony
(and the parties' arguments thereon) regarding how persons skilled in the art
would understand the limitation[].  After
such evaluation, the district court found that such limitation indeed "corresponds
to a class of structures."

The
district court's finding regarding the meaning of [the disputed claim term] to
those of ordinary skill in the art was indisputably one of fact.  The subject
patent itself contained no evidence of how such hypothetical persons would
understand that term, and the parties were consequently required to rely upon
extrinsic evidence in the form of expert depositions in order to support their
respective positions on the subject.  As with any other factual finding
regarding claim construction, this factual finding is entitled to deference in
the appellate review thereof.

One relevant argument in favor of
discarding the claim construction analysis from Cybor is that in so doing the Federal Circuit might avoid the high
percentage of reversals of district court claim construction (~30-40%
according to some legal academics).  The
counter-argument is that often, and perhaps the majority of the time, a
district court's factual determinations can be dispositive of the claim
construction exercise.  In these
circumstances, giving even a "substantial evidence" level of
deferential review to these factual determinations may vitiate any de novo review by the Federal Circuit of
how the claims are properly construed as a matter of law.

The Federal Circuit is scheduled
to hear the appeal en banc on September 13, 2013.

*
The amici are: Association of University Technology Managers (AUTM), NUtech
Ventures, Inc. (University of Nebraska – Lincoln), UNeMED Corporation
(University of Nebraska Medical Center), STC.UNM (University of New Mexico),
Wisconsin Alumni Research Foundation (University of Wisconsin), Colorado State
University Research Foundation, Public Patent Foundation, Tec Edmonton
(University of Alberta and City of Edmonton), The University of Pittsburgh of
The Commonwealth System of Higher of Education, and Newsouth Innovations
(University of New South Wales, Australia)

Hat tip to Gray on Claims for providing the amicus brief.