Federal Circuit Continues to Evade Addressing Intra-Circuit Split Regarding Claim Construction
By Katie Cohen – Edited by Albert Wang
Retractable Technologies, Inc. v. Becton, Dickinson and Co., No. 2010-1402 (Fed. Cir. Oct. 31, 2011)
The Federal Circuit denied a petition for rehearing en banc of Retractable Technologies, Inc.’s patent infringement suit against Becton, Dickinson and Company.
Notably, there were two dissents filed in the court’s decision. Judge Moore, joined by Chief Judge Rader, expressed frustration that, despite claim construction’s critical role in patent litigation, the Federal Circuit applies its rules in this area unpredictably. Judge Moore would have reheard this case to address the role of the specification in construing claims. In a separate dissent, Judge O’Malley urged that rehearing en banc should have been granted to revisit and reverse the court’s decision in Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), which held that claim construction is a matter of law reviewed without deference to a district court’s conclusions.
Retractable Technologies, the patent holder, sued Becton Dickinson, alleging that certain syringes made by the defendant infringed its patent. The disputed claim term was the syringe’s “body.” Becton Dickinson argued that “body” should be limited to a one-piece body, while Retractable Technologies argued that its claim allowed for a multi-piece body. The District Court interpreted “body” to allow for multiple pieces, and the jury found that Becton Dickinson had infringed Retractable Technology’s patent. In Retractable Technologies, Inc. v. Becton, Dickinson and Co., No. 2010-1402 (Fed. Cir. Jul. 8, 2011), however, the Federal Circuit reversed the District Court’s claim construction and upended the jury verdict.
Judge Moore’s dissent primarily took issue with how the Retractable majority drew the “fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims.” Slip op., dissent, at 5 (Moore, J., dissenting) (citing Retractable Techs, Inc., No. 2010-1402 at 17). Judge Moore believed the construction applied by the panel could not be reconciled with Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), in which the court held that the specification could not be used to narrow a claim term unless the inventor intentionally disclaimed claim scope. In Retractable, “body” had a plain meaning that included both single and multi-piece syringe bodies, and the inventor had not provided an explicit disclaimer of either meaning. Nevertheless, the majority limited its construction of the term to a one-piece body, aiming to “tether the claims to what the specifications indicate the inventor actually invented.” Slip op., dissent, at 5 (Moore, J., dissenting) (citing Retractable Techs, Inc., 653 F.3d at 1305). Because Judge Moore believed that changing the plain meaning of a claim term in this manner is contrary to Phillips, she would have reheard Retractable in order to address this fundamental split within the court.
Judge O’Malley, on the other hand, urged rehearing as an opportunity to revisit and reverse Cybor Corp. v. FAS Techs., Inc.. In Cybor, despite guidance from the Supreme Court that claim construction was a “mongrel” practice involving both legal and factual inquiries, the Federal Circuit held that claim construction was a matter of law reviewed without deference to the district court. Slip op., dissent, at 2 (O’Malley, J., dissenting). Unlike Judge Moore, Judge O’Malley was not concerned that the panel majority had misapplied the claim construction analysis under Phillips. She felt, however, that the fact that the panel members had such difficulty determining the proper claim construction in this case underscored the fact-intensive nature of claim construction. Id. at 5 (O’Malley, J., dissenting). Judge O’Malley maintained that a deferential standard of review is necessary because the trial court has “institutional advantages” in acquiring and evaluating evidence that the appellate court lacks. Id. at 3 (O’Malley, J., dissenting).
The dissenting opinions illustrate the shortcomings of the Federal Circuit’s policy to give no deference in its claim construction jurisprudence, in spite of fact-intensive nature and outcome-criticality in many patent suits. Despite this “call to arms,” commentators like Patent Docs indicate it could be quite some time before the Federal Circuit agrees to confront this issue.