Solicitor General to the Supreme Court: Deny Cert. in Retractable Technologies

Guest Post by Andrew Dhuey

The U.S. Solicitor General has recommended that the Supreme Court deny certiorari in Retractable Technologies, Inc. v. Becton, Dickinson and Co. The key issues in Retractable concern i) the role of the specification in interpreting patent claim language and ii) the level of deference, if any, the Federal Circuit should give to trial court claim constructions. The SG's recommendation is a setback for those who hope the Court will address these two fundamental questions of patent law and procedure. In recent years, the Court has followed about 80% of the SG's recommendations that certiorari be denied. See, e.g., p. 276 of this 2009 George Mason Law Review article.

A Supreme Court decision in Retractable could fundamentally alter the way trial courts construe patent claims and how the Federal Circuit reviews claim constructions. If the Court decides to review the case, it might limit or overrule the Federal Circuit's en banc decisions in both Phillips v. AWH Corp. and Cybor Corp. v. FAS Techs., Inc. Or the Court might deny review and leave the status quo intact.

Pertinent Facts and Procedural History

Retractable Technologies, Inc. ("RTI") and Becton, Dickinson ("BD") manufacture retractable medical syringes that are designed to reduce the risk of needlestick injuries and infections to health care workers. RTI accuses BD of infringing U.S. Patents 5,632,733 and 7,351,224. The disputed issue of greatest precedential importance concerns the meaning of the claim term "body" as it is used in both patents to describe the structure of RTI's claimed retractable syringe. BD's accused syringe has a two-piece body, so the question of literal infringement hinges largely on whether "body" is limited to a one-piece structure.

Judge David Folsom (E.D. Tex.) sided with RTI on the construction of "body" as not being limited to a single-piece structure. Judge Folsom gave the construction short treatment in his claim construction order, adopting the reasoning and conclusion of his fellow Eastern District of Texas jurist, Leonard Davis, who construed the same term in related patents in earlier litigation RTI brought against New Medical Technologies.

In the earlier case, Judge Davis observed that the specifications of the patents-in-suit did suggest a one-piece structure limitation. Still, he opined, the claims themselves pointed in the opposite direction:

In sum, the Court finds that "body" . . . simply means "hollow outer structure that houses the syringe's components." . . . The only construction of "body" that is consistent with the . . . claim language is a structure that may be one or more pieces. This reading is consistent with the specification, despite some indications to the contrary.

A divided Federal Circuit panel reversed based on the district court's claim construction of "body". Circuit Judge Alan Lourie wrote the Court's opinion, joined by Senior Circuit Judge S. Jay Plager. The majority "agree[d] with BD that the claimed 'body' is limited to a one-piece structure in light of the specifications." Chief Judge Randall Rader dissented: "Because the language of the claims make clear that 'body' does not contain [a one-piece structural] limitation, and it is improper to import limitations from the specification into the claims, I respectfully dissent."

Judge Plager wrote a short concurrence to underscore the majority's position that claims must not be interpreted in ways that go beyond what the inventor disclosed:

However much desired by the claim drafters, who want claims that serve as business weapons and litigation threats … the claims cannot go beyond the actual invention that entitles the inventor to a patent. For that we look to the written description.

RTI petitioned for rehearing en banc, which the Court denied. Circuit Judge Kimberly Moore, joined by Chief Judge Rader, dissented from the denial of the petition. Judge Moore opined that the panel majority "attempt[ed] 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." This ran afoul of proper claim construction under Phillips, she contended, and it has happened with such frequency to warrant en banc review.

Judge Moore also suggested that the Court should reconsider Cybor en banc.

We have waited five years (since Amgen Inc. v. Hoechst Marion Roussel, Inc., 469 F.3d 1039 (Fed. Cir. 2006), where six judges claimed a willingness to review Cybor) for that ever-elusive perfect vehicle to review the issue of deference to the district court's claim construction. The Supreme Court held that claim construction was a "mongrel practice." Markman v. Westview Instruments, Inc., 517 U.S. 370, 378 (1996). As such it is clearly a mixed question of law and fact and deference should be given to the factual parts.

Circuit Judge Kathleen O'Malley also dissented from the denial of RTI's petition, but her concern was limited to the de novo standard of review mandated by Cybor.

The SG's Denial Recommendation

In response to RTI's petition for a writ of certiorari, the Supreme Court solicited the SG's views on whether to review the case. The SG recommended a denial of the petition, opining that "[n]either of the questions set forth in the petition for a writ of certiorari warrants review in this case."

On the first question concerning the role of the specification in interpreting patent claim language, the SG contends that there is general doctrinal agreement among Federal Circuit judges:

There is broad agreement among the judges on the Federal Circuit about the principles of law that govern that inquiry, and the Federal Circuit's claim-construction jurisprudence is fully consistent with this Court's precedents. Although different judges sometimes disagree about the proper interpretation of particular claim terms, that is simply the inevitable result of case-by-case adjudication, not a reason for this Court's intervention.

Regarding the second question about the standard of appellate review for claim constructions, the SG agreed that the issue might warrant review in a future case, but not this one:

In an appropriate case, this Court's intervention might be warranted to determine the appropriate standard of review when a district court makes subsidiary factual findings in the course of construing a disputed patent claim. The district court in this case, however, did not make any factual findings about the meaning of the term "body," the state of the relevant art, or any other matter…. Nor did the court consider any expert testimony, make any credibility determinations, or receive any documentary evidence. Rather, the district court's hearing consisted entirely of the oral argument of counsel regarding the claim language, the specification, and pertinent legal authorities…. Because the district court's claim-construction ruling did not depend on the resolution of any questions of fact, this case does not present the question whether a claim-construction ruling that is predicated on factual determinations should nevertheless be subject entirely to de novo appellate review.

RTI may now file a brief responding to the SG's recommendation. The Court will likely decide whether to grant or deny RTI's petition in one of its January conferences.

Andrew Dhuey is an appellate lawyer in Berkeley, California.

13 thoughts on “Solicitor General to the Supreme Court: Deny Cert. in Retractable Technologies

  1. MM, Your point is well made, but slightly misses my point.

    Assume the spec discloses a new device that has two new features, both described as inventive.

    Claim 1, device with feature A.

    Claim 2, device with feature B.

    Claim 3, device with features A and B.

    (This actually is the fact pattern in Phillips.)

    Lourie would read both A and B into every claim so that every claim has the scope of claim 3.  That is why I think he is wrong.

  2. I think novelty is central to Lourie’s point of view. If the specification speaks of a feature that appears in the claims as an inventive feature, he is not willing to give it broad scope

    I’ll just say it: on this issue, Lourie is a m0r-0n.

    Here’s my spec:

    The prior art disclosed a green colored device. The present is an improvement over that device because it is a blue device. There are many possible colors to choose from in theory, but to make it absolutely clear to anyone reading this specifcation, the color of the device of this invention is blue.

    Here’s my claims, as filed and issued:

    1. A device, wherein said device is colored.

    2. The device, wherein said color is blue.

    Here’s Lourie’s construction: the term “coloured” in claim 1 means blue and blue only.

    See how it works in Lourie’s world? It doesn’t matter what the claims say and it doesn’t matter that the applicant knew the meaning of the words it was using. All that matter is what Lourie thinks “the invention is”. I could have claimed “A device, wherein the device was in the prior art” and according to Lourie “the term “wherein the device was in the prior art” should be construed to mean “the thing in the specification that is not in the prior art.”

    That’s the logic of the case. What he he– happened to Lourie?

  3. Andrew, but I think novelty is central to Lourie’s point of view. If the specification speaks of a feature that appears in the claims as an inventive feature, he is not willing to give it broad scope regardless that novelty does not in the end depend upon it.

    I think the issue needs to be framed properly to really understand it. It the Supreme Court is not asked the right question, it may never focus on the right issue.

  4. That I have a thing about C+C is not enough in itself to skew the balance in the District Courts between infringement issues and validity issues.

    anon, here I (along with every other reader here)enthusiastically and wholeheartedly agree with you unreservedly. Bravo.

    When the issue is whether some esoteric scientific or engineering act, back then, was obvious for the relevant PHOSITA to perform, and the judge of that is a jury, and the standard it must agree upon is C+C, that’s when fact-finding begins to “dim” (as opposed to the sharp, clear-sighted and focussed opinions of those competent to decide on such difficult matters).

  5. leaves the claim palpably invalid, with the prospects of a finding of invalidity are dim

    I did not quote this, as it has no meaning. If “palpable,” then cannot be “dim prospects.”

    My point is that you are inserting a view that does not fit, because that view is – in fact – one of your (repeating) crusade points. It may well be a viewpoint of yours, even a strong one, but your insertion of it into a situation that does not call for it smacks of “agenda looking for a cause.”

    I get that you don’t like the C & C standard. But just because you don’t like it doesn’t make it the bogeyman for any other patent law issue.

  6. I repeat. Ray told me Dutee died and was in VA. and he hated her for one reason and one reason only. He wanted me to not ask questions, because she was deceased. But obviously he knew she was my Twin, but he didn’t know I knew she was. And now I know a half sister is claiming what belongs to me, because he knew what they were keeping from me where I was raised.
    and on another note…. ED…. If I was given Due Process and allowed MY Civil Rights then none of this would have happened. If they hadn’t kept secret who I was and not given me what belonged to me we wouldn’t be where we are today. And as for NAL he should be made a Saint. He was only doing his Job. And if secrets weren’t kept because they were taking what was mine NAL would not have had to do his Job covertly. So Ed “He was doing his Job” the only way he knew how. There will be a place in Heaven for him I am sure. So you need to think about what he did and why he did it. He is a Saint! So now you all see I am finding my way out of the Forest you all grew for me one tree at a time. As a matter of fact I am right about where the Bear kicks it back in.

  7. Think away anon. Fine with me. MM asserts there is “no other way” and I disagree with him.

    I can’t stop it, if you choose to dismiss my viewpoint with the pejorative term “agenda”. If you are bent on finding an “agenda”, you always will, because everybody worth reading has got a strong viewpoint, and one man’s viewpoint is another man’s “agenda”.

    Of course you can’t get “there from here” just by reading my first sentence and nothing else. It’s in the sentences that follow that I explain what lies behind my first sentence.

  8. Looking in from outside, it is my perception that it is the skew imposed by the “clear and convincing” invalidity standard that routinely screws up claim interpretation.

    ???? Can’t get there from here.

    I think you have an agenda looking for a cause…

  9. No other way? Looking in from outside, it is my perception that it is the skew imposed by the “clear and convincing” invalidity standard that routinely screws up claim interpretation. Suppose an honest-to-goodness assessment of what the claim really means to the PHOSITA reader leaves the claim palpably invalid, with the prospects of a finding of invalidity are dim, and results in a scope impinged upon by the accused infringer, then who can blame the tribunal for tweaking claim construction to get to the fair result?

    Or else these particular Fed Ct judges are on a misguided effort to import what they think are elements of European claim construction. But that can’t be, can it.

  10. The right thing for the Supreme Court to do here would be to simply vacate the decision and remand to the Federal Circuit with instructions to follow Phillips.

    As Ned alludes to above, there is no point in having claims if the court is simply going to ignore them and substitute its idea of what was “actually disclosed.”

    In this case, it’s beyond dispute that the applicants understood the term “body” to include multipiece structures. If they had a different understanding of that term, they wouldn’t have needed to use phrases like “single piece body”, and the wouldn’t have including dependent claims with phrases like “wherein the body is a multi-piece body.”

    It’s anybody’s guess why the Federal Circuit felt compelled to make something very simple into something very complicated which effectively turns claim drafting into a wasteful joke. In cases like these you just have to assume that the judges just liked one litigant’s hairdo more than the others. There’s no other way to explain the loss of reasoning.

  11. Ned, I didn’t get into a host of merits issues because I was focusing only on the two questions presented to the Supreme Court and the facts pertinent to those questions. I don’t doubt that novelty was an important issue to RTI and BD, but at this point it plays no role in the Supreme Court’s consideration of RTI’s cert. petition.

  12. Regarding “body” and “invention,” if novelty in any way depended upon a single-piece body then I would agree with Lourie. From the summary above, I am not clear on this point. Did the novelty depend in any way on a single-piece body.

    In Phillips, Lourie also wanted to limit baffle to oblique angles for bullet deflection. However, the baffle both provided bullet deflection and structural support. The claim at issue was directed not to bullet deflection, but to the structural support aspects. As such, I think the holding of the majority there was manifestly correct. Oblique angles had not to do with the novelty of the invention being claimed.

    I have a sneaking hunch here that Lourie might be wrong once again.

    Moreover, most of us prosecuting patents know that if novelty lay in the details of the specification not in the claims, that we have to add those details into the claims in order to argue them. If one could simply argue the specification without amending the claims, the novel features would not appear in the claims themselves. Such claims have to be invalid under 112, p. 2 under any reasonable interpretation of that statute.

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