Guest Post:Claim Construction Catch-22: Why the Supreme Court Should Grant Certiorari in Retractable Technologies

Guest Post by Peter S. Menell (UC Berkeley School of Law) and Jonas Anderson (American University Washington College of Law).

After nearly two decades of lower court confusion, there was a glimmer of hope that the Supreme Court might intervene to clarify the standard of appellate review of claim constructions determinations.   Following strongly worded dissents from denial of rehearing en banc, the Supreme Court invited the Solicitor General’s views on the certiorari petition in Retractable Technologies, Inc. v. Becton, Dickinson and Co., 653 F.3d 1296 (Fed. Cir. 2011), denial of rehearing en banc, 659 F.3d 1369 (2012).

In its filing last week, the Solicitor General has unfortunately recommended against Supreme Court review principally on the ground that Retractable Technologies is not an “appropriate vehicle” because the district court did not specifically rely upon factual findings.  Therein lies the Catch-22.  No district court since at least the Federal Circuit’s 1998 en banc Cybor ruling has been willing to make factual findings in construing patent claims for the pragmatic, logical, and legal reason that to do so would contradict Federal Circuit law that claim construction is a pure question of law.

As we have chronicled at length elsewhere, see Anderson & Menell, From De Novo Review to Informal Deference: An Historical, Empirical, and Normative Analysis of the Standard of Appellate Review for Patent Claim Construction (2012) available at <http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2150360>,  Anderson & Menell, Appellate Review of Patent Claim Construction: The Reality and Wisdom of a “Mongrel” Standard the Federal Circuit, the Federal Circuit has struggled mightily over the standard of appellate review since the Markman case.  A slim majority adheres to de novo review notwithstanding the Supreme Court’s recognition of the “mongrel” character of claim construction.  The confusion has contributed to a high, variable, panel-dependent reversal rate of claim construction determinations.  Fearing reversal for relying upon expert testimony, district judges avoid and/or mask use of experts in determining how skilled artisans interpret patent claims.  Numerous studies indicate — and district court and several Federal Circuit jurists believe — that the de novo standard has significantly increased the uncertainty and costs of patent litigation, reduced settlement rates, and misapplied the Supreme Court’s Markman ruling.

The SG’s rationale overlooks a critical and unique structural feature of the federal patent system: the Federal Circuit’s exclusive jurisdiction over patent appeals.  Circuit splits are not possible on patent issues and district courts throughout the land are bound by the Federal Circuit’s interpretation of patent law.  Under the SG’s logic, therefore, the standard of appellate review will not be ripe for Supreme Court review unless a district court defies the Federal Circuit.  Such logic nearly guarantees that there will never be an “appropriate vehicle” for considering this issue, notwithstanding the vehement cries for help from Chief Judge Rader, Judge Moore, and Judge O’Malley.

It is possible that the Federal Circuit will eventually revisit this standard on its own, although the historical record does not inspire confidence.  As we chronicle in our article, members of the Federal Circuit have repeatedly sought to revisit the de novo standard since the Markman decision to no avail.  Meanwhile, district courts and the patent system have endured a doubtful application of the Supreme Court’s Markman ruling, causing substantial disruption and wasted resources.

To avoid the Catch-22, the Supreme Court should view dissents from rehearing en banc in the Federal Circuit as a proxy for a circuit split.  Furthermore, the fact that a “split” has festered since the time of Markman strongly indicates that the standard of appellate review is ripe for Supreme Court consideration.  The SG has missed these critical points in its assessment of the Retractable Technologies certiorari petition.

16 thoughts on “Guest Post:Claim Construction Catch-22: Why the Supreme Court Should Grant Certiorari in Retractable Technologies

  1. that they may not really understand patent law

    Doesn’t stop the IANAE and MM’s of the world, why do you think it would stop the Justices when they want to protect their judicial Top Dog turf?

  2. LOL – from the one who is one of the worst, even though he has been at this forever…

    Thanks but no thanks MM.

  3. seeming to suggest, as may here have openly stated, that they may not really understand patent law?

    Apparently not if, as you suggest, their decisions are vague and functional at the point of novelty.

    I suppose those decisions should be limited to the corresponding facts described in the decision and equivalents thereof.

  4. In spite of your efforts, you really aren’t very good at spinning semantic B.S., anon. Maybe try a different audience?

  5. Yeah, other judges have thrown the law into chaos because at the most crucial point in their opinions they have been less than clear, seeming to suggest, as may here have openly stated, that they may not really understand patent law?

  6. then I must conclude that our field of law is built on a foundation of semantic BS

    It’s built on a foundation of who can best spin that semantic BS.

    That is precisely why you have a post like:

    link to patentlyo.com

    and my comments therein.

  7. “No district court since at least the Federal Circuit’s 1998 en banc Cybor ruling has been willing to make factual findings in construing patent claims . . . .” Come on, this has to be an exaggeration. Or, if I’m wrong and literally *every* District Court has explicitly couched its claim construction rationale in terms of legal findings, there have to be myriad instances where calling the findings legal elevates form over substance, and what the court actually decided could just as easily have been called a fact question. Some reasonable folks might even argue that that is the case *every* time a court says that it is making a “legal” determination about the meaning of a claim term. So why can’t the SCOTUS choose one such case as the “appropriate vehicle” for revisiting de novo review, reasoning that, although the district court dubbed its findings “legal,” they were in substance factual, and grant certiorari to consider whether the findings should therefore have been given deference? If the SCOTUS has no way of doing that, then I must conclude that our field of law is built on a foundation of semantic BS.

  8. I was thinking of his most excellent logic and thoroughness in “deciding” Warner Jenkinson. Let’s face it, none of these bozos is much help in patent law.

  9. Or how about Stevens’ opinion in Bilski (or the dissent in Diehr), or Douglas’ decision in Benson, or Breyer’s decision in Prometheus?

    Filling in those blanks would require something to neutralize the smell.

  10. Oh? You really liked Kennedy’s opinion in Bilski? Now, that was clear as ….

    Well you fill in the blank.

    Then go read Thomas’ opinion in Quanta. What a remarkable difference.

    I think we should hope for an opinion by Thomas given the prior examples.

  11. The best cases for arguments of deference to claim construction don’t come from district courts, they come from the ITC – because the ITC uses expert testimony and extrinsic evidence all the time for claim construction.

    Unfortunately, unless the Federal Circuit takes it en banc or the Supreme Court finally takes a case, nothing will ever come of this major intra-circuit split.

  12. It seems clear, at least to me, that the basic framework of claims (e.g., consisting of vs comprising, each limitation consider, etc.) are questions of law. That is, there are legal principles for interpreting claims that should be “de novo”. If claims requires elements A, B, C and D, and jury finds a product containing A and D to be literally infringing, de novo. Or if the same claim used “consisting of” and the jury finds a product containing A-Z, also de novo.

    However, interpreting the meaning of individual claim limitations and, for example, how claim limitations interrelate or other they’d be considered by one of ordinary, are fact questions.

    Of course, there are gray areas, but generally seems as clear as day to me.

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