The patent community and the Federal Circuit judges have been talking about revisiting the standard for interpreting patent claims for a long time. Unfortunately we’ve all been waiting for Godot—that elusive perfect case with facts that we can’t quite articulate. We’ll know it when we see it, I guess.
But it’s going to arrive at the Federal Circuit, any day now. Just wait . . .
Act I—Amgen II (2006)
Five years ago, an important and controversial claim construction case rolled through the Federal Circuit. It was the second time Amgen had appealed certain issues in this case, and this time, it was armed with a well-reasoned decision by a highly respected trial judge who had construed certain claim terms in a complicated biotechnology patent.
The trial judge had been dealing with the issues in this case for many years. Yet he couldn’t rely on expert testimony to inform his understanding of the meaning of the claims (because that would violate Federal Circuit law). So he simply noted that he had considered all of the claim construction materials, briefings, hearings, more briefings, reports, and other relevant materials that the parties provided. Then he rolled up his sleeves, dug into the claim construction dispute and the technology, and wrote a detailed, articulate opinion that laid out the technical background for the patented technology and the rationale for his construction of certain claim terms.
On appeal, the Amgen II panel disagreed with the trial judge’s claim construction and adopted its own broader construction. This put the claims in serious jeopardy because of certain prior art that had been asserted against the patent in this case. (It could do that because the Federal Circuit calls the act of construing patent claims a pure “legal exercise.”) So it doesn’t defer to trial judges’ interpretation of the claims, consideration of the arguments, or analysis of the claims in the context of the rest of the case, including any hearings held on the claim construction issues. Instead, it looks at the appeal briefs and the patent filings and makes its own independent decision. The party that doesn’t like the trial court’s claim construction essentially gets an automatic Mulligan, a do-over.
Six Federal Circuit judges indicated that they would have taken Amgen II en banc to reconsider the court’s prior decision that claim construction is a legal exercise. But that wasn’t a majority of the active court, so Amgen’s request for full-court review was denied. A few of the judges who decided against taking it en banc indicated that they were waiting for a case with a particular set of facts and circumstances that were not present in Amgen’s case:
In our view an appropriate case would be the atypical case in which the language of the claims, the written description, and the prosecution history on their face did not resolve the question of claim interpretation, and the district court found it necessary to resolve conflicting expert evidence to interpret particular claim terms in the field of the art. This is not such a case.
(See page 1 of Judges Gajarsa’s, Linn’s, and Dyk’s opinion supporting denial of the petition.) That is, these judges want a trial judge to violate the Phillips and Cybor claim construction law and go rogue. It’s an interesting requirement for taking a case en banc.
So the court and patent bar continued to wait for the right case. It would surely come soon.
Act II—Retractable Technologies (2011)
Fast forward to Retractable Technologies, Inc. v. Becton, Dickinson & Co., No. 2010-1402 (Fed. Cir. Oct. 31, 2011) (order denying en banc review) and you’ll see that we’ve come full circle. (I first discussed this case in July, when the panel opinion issued.) It is an unusual case because the panel members wrote three separate opinions on the claim construction issue.
Previously, Judges Linn and Plager decided that the claimed syringe “body” only encompasses syringe bodies made of one piece of material, not multiple pieces, because single-piece bodies are described throughout the specification. They “tethered” the claim scope to the description and the one-part syringe bodies shown in the patent, even though the claims lack this limitation. Chief Judge Rader disagreed with this construction, and concluded that it improperly imports limitations from the specification into the claims. That importation violates current Federal Circuit claim construction law.
Retractable asked the full court to review the panel’s split decision. But the court declined this invitation to reconsider its claim construction standard. Again, a couple of judges wrote opinions that are critical of the court’s decision not to review its claim construction law and practice.
The Retractable case illustrates a split within the court relating to the meaning of prior claim construction decisions, as well as the proper approach to claim interpretation. Judges Moore and Rader would grant en banc review of Retractable to resolve “the clear intra-circuit split on the claim construction process.” (See page __ of Judge Moore’s dissenting opinion.) In their eyes, the Retractable panel’s sin is rewriting the claims to conform to what it thinks the invention is, instead of construing the language actually used in the claim. Finally, they indicated that it’s time to call claim construction a mixed question of law and fact and to treat district courts’ constructions with some deference.
Judge O’Malley, who sat as a trial judge and managed patent cases for many years, also disagreed with the court’s decision to reject the petition. She concluded that the court trampled on years of careful analysis of these claims, which was undertaken by two Texas trial judges (they try a lot of patent cases in Texas). Where there is fair debate about the scope of an invention, after claim construction principles are applied, Judge O’Malley concluded that deference to the district courts’ reasoned opinion is warranted.
Another interesting take-away from this case: we can now put Judges Moore, Rader, and O’Malley firmly into the mixed fact/law camp relating to the claim construction standard.
So here we are, still waiting for our friend Godot, whom we barely know. Perhaps the Supreme Court will end this excruciating waiting game?