The Court that couldn't shoot straight
Is claim construction an issue of law to be decided de novo on appeal, or are there relevant issues of fact, justifying that deference be given to the decisions and opinions of trial courts?
The CAFC has recently denied a petition for en banc rehearing of Retractable Technologies, Inc. and Thomas J. Shaw v. Becton, Dickinson, and Company (hereafter Retractable). Retractable presented an opportunity for the CAFC to review en banc their earlier (1997-1998) judgment on de novo interpretation of claim construction.
In Cybor Corp v. FAS Techs (138 F.3d 1448), the CAFC unanimously decided that claim construction is an issue of law, although the issue may properly be illuminated by factual evidence. Therefore, a de novo analysis is not only proper, but an essential part of the appeal process. As such, deference is not to be given to the opinions of the trial court.
Which brings us to Retractable. The relevant issue is that the trial court decided to read ‘body’ as meaning ‘one-piece body’ in the description of a claimed syringe. A poll for the en banc rehearing of the case was taken, and the poll failed, resulting in denial of the petition.
However, the poll was not unanimous – of the group of 10 judges, only 7 voted to refuse rehearing. Circuit Judge Moore was joined by Chief Judge Rader in a dissenting opinion, while Circuit Judge O’Malley wrote a separate dissent.
Judge Moore’s dissent starts with a rather strong statement about claim construction in the courts:
‘Claim construction is the single most important event in the course of a patent litigation. It defines the scope of the property right being enforced, and is often the difference between infringement and non-infringement, or validity and invalidity. Despite the crucial role that claim construction plays in patent litigation, our rules are still ill-defined and inconsistently applied, even by us.’ (emphasis added).
Judge Moore refers to the ‘…fine line between construing the claims in view of the specification and improperly importing a limitation from the specification into the claims’. He wanted to revisit two issues – the role of the specification in construing the claims, and whether deference is due to the district court’s opinion concerning the meaning of the claims.
Moore notes that in construing the meaning of the claim terms, the Eastern District Court of Texas explicitly stated in their decision that ‘limiting is required to tether the claims to what the specifications indicate the inventor actually invented.’ They use the specification to determine what the actual invention is, and then limit the claim terms so that their opinion as to the ‘actual’ invention is correct. Not consistent with Phillips or Markham, nor allowed by the Supreme Court, but the CAFC denied rehearing.
The crux of Retractable is the restriction of the term ‘body’ of a syringe to ‘a one-piece body’, mainly because only one-piece bodies appear in the specification. This interpretation led to Retractable not being infringed upon despite clear infringement on the claimed invention.
He writes that Retractable ‘simply cannot’be reconciled with the CAFC’s en banc decision in Phillips, and that Retractable illustrates a ‘fundamental split’ in the CAFC on the teachings of Phillips and Markman. Further, he states that he would ‘grant en banc review of Retractable to resolve the clear intra-circuit split on the claim construction process.’
However, the CAFC has consistently avoided chances to review and reinforce their decisions by denying reviewing or rehearing trial cases that appear to clearly illustrate this split. Moore lists other cases [Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246 (Fed. Cir. 2011),Laryngeal Mask Co. Ltd. v. Ambu, 618 F.3d 1367 (Fed. Cir. 2010) and Retractable and Fifth Gen-eration Computer Corp. v. Int’l Bus. Mach. Corp., 416 F. App’x 74 (Fed. Cir. 2011)], in which the CAFC ignored similar limitation of claims to what the trial court felt to be the ‘actual’ invention.
The issue of deference to a trial court’s claim construction is also brought forward by O’Malley. If claim construction is a pure issue of law, then no deference is owed to the trial court’s opinion or decision. However, all three judges refer to the Supreme Court’s description of claim construction in Markman as a ‘mongrel’ process - clearly a question of mixed fact and law. As such, the CAFC minority argue, there should be considerable deference given to the lengthy hearings and testimony concerning claim construction, rather than simply throwing out what may be months or years of discovery and expert testimony. Phillips, however, in holding for claim construction as a pure issue of law calls for total lack of deference to the trial court.
Perhaps most important in this morass is the potentially huge problem of unintentional infringement which results when every panel or court safely proceeds with their own idiosyncratic approach toward claim construction. Unpredictability is a poor foundation for a struggling business. It is long past time for the CAFC to decide this issue clearly and fairly, for the benefit of all.