By Kevin E. Noonan —

There are more issues in patent law
that the Supreme Court may consider than those raised by Association for Molecular Pathology v. Myriad Genetics, and as if to
illustrate that point, the Solicitor General filed his brief at the end of
November in Retractable Techs.,
Inc. v. Becton, Dickinson & Co.  The Questions Presented by Petitioner
Retractable Technologies are these:

1.  Whether a court, in construing a disputed
term in a patent claim, may draw inferences from the patentee's use of the same
term elsewhere in the patent's specification.

2.  Whether, in reviewing a district court's
interpretation of a patent claim, the court of appeals should give deference to
the district court's resolution of subsidiary factual questions.

In the Solicitor General's view, "neither
of the questions set forth in the petition for a writ of certiorari warrants
review in this case."

To recap the proceedings below,
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.  The specification described the claimed
invention as comprising a one-piece body, 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)

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."  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, 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, the dissent relies 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).  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."

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"; this is 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, this 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 this 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).

Judge O'Malley dissented separately, a
posture reflecting her singular experience as a district court judge tasked
with performing factual determinations in support of claim construction
decisions.  She was forthright:  "[i]t is time to revisit and
reverse our decision in Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448
(Fed. Cir. 1998) (en banc)," if only because "the court's decision
necessarily would change if even minimal deference were afforded to the trial
judge's claim construction."  Her dissent noted that the Court's
decision to give no deference to district court factual determinations was not
required by the Supreme Court in Markman, and indeed the High 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." 
She believes the appellate court's decision to be "ill considered"
when it was enunciated thirteen years ago and that it has not proven "beneficial"
to patent jurisprudence "in the long run."

Reflecting her own experience, Judge O'Malley
opined that:

[D]istrict
judges have been trained to — and do — engage in detailed and thoughtful
analysis of the claim construction issues presented to them.  They conduct
live hearings with argument and testimony, sometimes covering several days, and
certainly always extending beyond the mere minutes that courts of appeals have
to devote to live exchanges with counsel.  Simply, "the trial court
has tools to acquire and evaluate evidence that this court lacks." 
Cybor, 138 F.3d at 1477 (Rader, J., dissenting).

She went on to say that "[w]hile no
one would urge deference to cryptic, unthinking rulings born of little or no
real inquiry, where, as here, the trial court has thoroughly vetted all
relevant aspects of the claim constructions at issue, 'careful consideration of
the institutional advantages of the district court would counsel deference.'" 
Reciting the history of the case, she noted that these claims had been
construed by two separate district court judges and that the asserted "wrongdoing"
reversed by the panel decision "did not promote the consistency and
uniformity in patent law that Cybor was intended to foster; the decision
here accomplished the opposite."

In Judge O'Malley's view, the panel did
not misapply the claim construction canons in Phillips; rather, she
merely disagreed with their application.  But this fact, and the
experience of the panel members that they "could not agree on the proper
claim construction in this case, despite careful consideration of their
respective obligations under Phillips," strongly suggested to Judge
O'Malley that the "complicated and fact-intensive nature of claim
construction" mandates "the need to rethink our approach to it." 
For her, the "review of extensive documentary evidence" and possibly
expert testimony suggest factual, not legal questions are being posed to the
Court.  And:

Where, as here,
there is fair debate about the scope of the invention after application of Phillips's
principles, we should defer to reasoned district court choices. 
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.

Against this backdrop, the Solicitor
General's brief concluded that, first, "Petitioners identify no unsettled question of claim construction
methodology warranting this court's review," and second, "[t}his case
is not an appropriate vehicle for determining what standard of appellate review
should apply to a district court's subsidiary factual findings in claim
construction."  The brief based its first argument, that there is no
unsettled question, on the majority's reliance on Phillips
v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc), cert. denied, 546 U.U. 1170 (2006).  There is no
dispute between the Federal Circuit judges and thus nothing for the Court of
review, according to the brief, because there is "broad agreement" in
the Federal Circuit that both plain meaning and specification should be
considered.  The brief characterizes a
patent as an "integrated legal document," and thus, although the
claims are what defines the scope of the right to exclude, claims must be
interpreted according to the specification, citing United States v. Adams,
383 U.S. 39 (1966); Schriber-Schroth Co. c. Cleveland Trust Co.,
311 U.S. 211 (1940); Brooks v. Fiske, 56 U.S. 212 (1854).  "At bottom, then, the task
of claim construction is to ascertain the meaning of the actual claim language
approved by the U.S. Patent and Trademark Office, as "explained by and
read in connection with the specification" in the Solicitor's view, citing
Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 432
(1902).  Again citing Phillips, the Solicitor General asserts
that "[t]he Federal Circuit has faithfully implemented those principles in
considering questions of claim construction."  Curiously, the brief accentuates the near
unanimity achieved by the Federal Circuit in Phillips, ignoring the different views enunciated by the Federal
Circuit in this case (and ignoring the changed composition of the lower court
in the intervening time since Phillips).  Instead of different doctrinal camps, the Solicitor
General sees the differing results as merely reflecting the "case-by-case"
nature of claim construction.  Turning to
the case at bar, although acknowledging that the question is "close,"
the brief maintains that the Federal Circuit came to the right decision in this
case.

Even if the Court
believes that Federal Circuit jurisprudence in this area is in need of
reconciliation by the Court, the Solicitor General asserts that "[t}his
case is not an appropriate vehicle for determining what standard of appellate
review should apply to a district court's subsidiary factual findings in claim
construction."  The reason is
simple:  there is no factual determination by the district court at issue
here.  Indeed, "[i]n an appropriate
case, this court's intervention might be warranted to determine the proper
standard of appellate review of district court factual determinations that bear
on the interpretation of disputed patent claims" according to the
Solicitor General's brief.  But this is
not that case.  Here, the District Court
relied "solely" on the parties' legal arguments, thus not raising the
issue the petitioners ask the Court to resolve.  Moreover, the Federal Circuit's decision in Cybor Corp. v. FAS
Techs., Inc., 138
F.3d 1448 (Fed. Cir. 1998),
that factual determinations by a district court were due no deference on
review, is "amply support[ed]" by the Court's Markman decision in the Solicitor's view.  The brief engages in the fiction that Cybor does not preclude deference to a district court's factual
findings, but maintains its position that, regardless of the Federal Circuit's
treatment in other cases there is no basis warranting review on this question
in this case.

The Solicitor
General maintains that "the question whether deferential review is
appropriate in those circumstances is of substantial and ongoing importance in
patent law" but "[t]hat issue is not properly presented in this case,
however, because the district court did not make any factual findings or
resolve any evidentiary disputes in interpreting the patent claims at issue
here."

Taking into account the five "active"
judges who voted to grant rehearing in Amgen Inc. v. Hoechst
Marion Rousell, Inc., 469
F.3d 1039 (Fed. Cir. 2006), and contrary to the Solicitor General's views on
the matter, the evidence suggests that the active members of the Federal
Circuit are almost evenly split on the question of whether to grand en banc
review, and by implication revisit the Court's decision in Cybor.  And an honest assessment of the Federal
Circuit's jurisprudence supports the Petitioner's view that the Federal Circuit
is split, at least loosely, into those judges who believe that claims must be
strictly construed according to the specification in order to limit their scope
to "what the inventor has invented," and those judges who believe
that the plain meaning of the claim language is the primary determinant of the
scope and meaning of the claims.  The
Solicitor General discounts this evidence in encouraging the Supreme Court not
to grant cert.  In view of the cases
where the Supreme Court has already granted certiorari this term, and the continuing pattern
of the Court to ignore the recommendations of the Solicitor General's Office,
and the apparently unsettled posture of the question of claim construction in
the Federal Circuit, there is a fair likelihood that the Supreme Court will decide that
its supervision is required in yet another area of patent law.