By Kevin E. Noonan —

Sometimes it is what a court doesn't do that points to what needs to be done.  That appears to be the case for claim construction and the Federal Circuit's standard, since Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998), that the appellate court should review claim construction de novo with no deference to the factual determinations underlying claim construction by a district court.  Even Cybor (decided en banc in the days just after the Supreme Court's decision in Markman v.Westview Instruments, Inc.), holding that claim construction was a question for a judge rather than a Seventh Amendment right to trial by jury, had its detractors (including Chief Judge Rader) and its skeptics (including Judge Plager, who suggested that the consequences of the court's "no deference" standard would need time to be appreciated).  Now, in a decision by the court not to review this policy en banc in Retractable Techs., Inc. v. Becton, Dickinson & Co., the dissents by three judges illustrate most clearly the deficiencies of the policy decision by the court not to permit any deference in its claim construction jurisprudence.

The panel decision, by Judge Lourie joined by Judge Plager and (in part) by Chief Judge Rader, reversed the District Court's claim construction as to one claim term and affirmed as to another, remanding for consideration of infringement under the Doctrine of Equivalents.  The 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 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 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.  See Phillips, 415 F.3d at 1323.  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.  Id. at 1323–24.

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.

There were two dissents 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 characterizes 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 are "still ill-defined and inconsistently applied," even by the Court.  While citing commentators to support this conclusion, the dissent focuses on the question at issue in Retractable Technologies and, according to Judge Moore, comprising generally 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."  The dissent contends that this is 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 relies 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 discounts the concerns voiced by the majority in Retractable Technologies, 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 is one of validity rather than claim construction, and it is not the role of the court to "tailor the claim language to the invention disclosed."  Citing Phillips, the dissent relies once again on the mantra that the "plain meaning" of the clams controls (and the dissent voices surprise that this question was not resolved in Phillips).  Judge Moore states 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, and specifically, the dissent opines that the choice of an overbroad term may affect validity but should not be considered for claim construction.  Tellingly, she recites that "[w]e [the court] are not lexicographers."  Following a detailed recitation of the facts and legal principles enunciated in Phillips, the dissent here contrasts 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 the dissent, fails to support a claim limited to single-body embodiments.

Judge Moore identifies the problem with the panel decision with particularlty:

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 the dissent then explicates why Judge Moore believes that this construction isn't supported by the specification, more particularly she illustrates the subjectivity and difficulty an appellate court can be expected to encounter in reviewing claim construction without deference to a district court's fact finding.  And "[c]hanging the plain meaning of a claim term to tailor its scope to what the panel believes was the 'actual invention' is not consistent with the standard enunciated by Phillips."  While agreeing that the specification and claims must comply with the requirements of 35 U.S.C. § 112, the dissent states simply that the Court "does not rewrite claims"; this is not a case, Judge Moore contends, 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 is 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 is enough to convince Judge Moore and Chief Judge Rader that claim construction requires reconsideration by the court en banc.  Judge Moore also writes that this case has a procedural posture that would permit the court to set forth the extent to which the "mongrel practice" of claim construction permits or requires deference to a district court's factual determinations under Markman v. Westview Instruments, Inc., 517 U.S. 370, 378 (1996).

Judge O'Malley dissents separately, a posture reflecting her singular experience as a district court judge tasked with performing factual determinations in support of claim construction decisions.  She is 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 notes that the Court's decision to give no deference to district court factual determinations is 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 sees 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 opines 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 goes 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 notes 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; more pedestrianly, she states that she merely disagrees 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 suggests 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.

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), Judge O'Malley's dissent suggests that the active members of the Court are almost evenly split on the question of whether to grand en banc review.  Although her call to arms ("[i]t 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") is stirring, the question won't be put to the en banc Court until either its composition changes or an even more compelling case is presented to it.