In Fractured Decision, CAFC Refuses to Reexamine De Novo Claim Construction

Amgen v. HMR (CAFC en banc denial)

Cybor is the much reviled CAFC decision holding that the construction of patent claim language is a question of law that is reviewed de novo — without any regard to the lower court’s reasoning or ruling.  The Cybor rule is believed by many to have dramatically increased uncertainty in patent litigation as well as likelihood of appeal.  Importantly, the associated reversal rate also demoralizes district court judges who already often struggle with the technical and legal complexity of patent cases.

In Amgen, the appellate panel reviewed construction of the term “therapeutically effective amount” of erythropoietin and, in the process illustrated how Cybor gives the court a “capacity for arriving at its own idiosyncratic construction.” (Quoting Prof. Kevin Noonan). Here, the CAFC panel reversed the lower court’s construction based on its interpretation of the specification. 

HMR’s request for rehearing en banc has been denied, but a contingent of six separate dissenting and concurring opinions show the internal conflict.

Chief Judge Michel, who also dissented from the original panel decision, led the charge against Cybor. “I have come to believe that reconsideration is appropriate and revision may be advisable.”  CJ Michel, who was joined in the opinion by J Rader, cited four practical reasons for eliminating de novo review:

  1. High reversal rate;
  2. Lack of predictability of outcomes — something that decreases settlement and frustrates lower courts;
  3. The disregard of time spent by district court judges in understanding the evidence and patent information;
  4. The mind-numbing minutia of claim construction decisions faced by the court in “nearly every patent case.”

Claim construction, although similar to statutory construction is different for many reasons and is intertwined with facts that make the foundation for de novo review questionable. The arguments of CJ Michel are further highlighted by Judge Newman’s dissent.

J Newman focuses on how scientific and technological evidence serve as the backdrop for any claim construction and how claim construction should focus on the invention rather than following formalistic requirements that trip over every statement in a patent application. Finally, Newman argues that a Daubert framework is more appropriate for claim construction.

The Federal Circuit's position that patent interpretation requires more rigorous appellate review than other fact/law issues has not well withstood the test of experience. It is time to reopen the question and to rethink, en banc, the optimum approach to accuracy, consistency, and predictability in the resolution of patent disputes, with due attention to judicial structure, litigants' needs, and the national interest in invention and innovation. (Newman dissenting).

Judge Rader agreed with both CJ Michel and J Newman, but filed his own opinion. Rader gave some legal basis for reviewing Cybor — noting the Supreme Court’s opinion that claim construction "falls somewhere between a pristine legal standard and a simple historical fact." (Markman). Rader maintained his long-standing position that district courts should be given deference because they are better versed in the facts and the issues.

“Trial judges can spend hundreds of hours reading and rereading all kinds of source material, receiving tutorials on technology from leading scientists, formally questioning technical experts and testing their understanding against that of various experts, examining on site the operation of the principles of the claimed invention, and deliberating over the meaning of the claim language. If district judges are not satisfied with the proofs proffered by the parties, they are not bound to a prepared record but may compel additional presentations or even employ their own court-appointed expert." (Rader dissenting in Cybor).

Judge Moore: In what appears to be her first patent opinion, New CAFC Judge Moore also set her target on Cybor — stating that the court should “reconsider its position on deference.” 

Judges Gajarsa, Linn, and Dyk all concurred with the decision not to rehear this particular case, but noted that “In an appropriate case we would be willing to reconsider limited aspects of the Cybor decision.”  In particular, those three judges appear to believe that de novo is still appropriate when the intrinsic evidence (written description and prosecution history) on its face resolves “the question of claim interpretation.”

SUPREME COURT NEXT: This leaves us in the situation where at least eight of the twelve Federal Circuit judges believe that Cybor should be revisited if an “appropriate case” arises. This fractured decision is also ripe for Supreme Court review, and along with the Tamoxifen antitrust cases, are the two most likely to be granted certiorari in 2007.

Details: Judges Michel, Newman, Rader, Mayer, and Moore have all bluntly criticized Cybor. Judges Gajarsa, Linn, and Dyk have a more limited criticism.


8 thoughts on “In Fractured Decision, CAFC Refuses to Reexamine De Novo Claim Construction

  1. 8

    Thanks, Anonymous.

  2. 6

    Your link “Amgen en banc denied” doesn’t work. Could you re-post? I’d really like to read the opinions.

  3. 5

    I’m surprised there are not more comments on this interesting collection of opinions. Among other provocative issues is whether the CAFC even has much leeway to change the deference given to claim construction. The Supreme Court expressed in Markman “the importance of uniformity in the treatment of a given patent.” Can that be accomplished with anything other than de novo review? As Mr. Fox implies above, more deferential standards of review have their own problems.

  4. 4

    In any area of law, is there any question of law that is not reviewed de novo? Construction of a contract is a question of law. Although not a contrcat, a patent is a grant of rights… Do not see any way of couching construction of a government grant as a question of fact reviewed by the CAFC under the clearly erroneous standard. Use of the term “deference” sounds a bit like a an abuse of discretion standard of review. Could Congress’s enactment of patent rights as granted by the constitution be viewed as equitable? Does not sound like it?

  5. 3

    Not surprising that Gajarsa, Linn, and Dyk were reluctant to review Cybor. Their patent opinions tend to convey the message that there is only one “objectively correct” interpretation of every patent claim.

  6. 2

    It seems odd that Judge Mayer, who dissented from Phillips v. AWH on this precise point, did not weigh in or dissent here.

  7. 1

    Did Judge Lourie really use the “word” “enbancable”?

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