Federal Circuit Expanded Panel

Martek Biosciences Corp. v. Nutrinova, Inc. (Fed. Cir. 2009) (expanded panel)

Sitting in as an expanded five-member panel, the Court of Appeals for the Federal Circuit has largely affirmed a jury verdict finding Martek’s patents valid and infringed. The case involves issues of written description, enablement, sufficiency of infringement evidence, corroboration of prior inventorship arguments, and claim construction of the word “animal.”  The five members agreed as to all issues except for claim construction. On that issue, the majority opinion of Judges Newman, Gajarsa, and Moore held that a human is an animal.  Judges Lourie and Rader argued in dissent that the patentee’s use of animal suggested that it did not include humans.

I’ll write more about the case in a separate post, but here I want to focus on the procedure of an expanded panel.

Expanded Panel: It appears that the expanded panel was prompted in-part as a show dignitaries who were visiting the court.  The court claimed authority under 28 U.S.C. 46(b) which indicates that the “Federal Circuit . . . may determine by rule the number of judges, not less than three who constitue a panel.”  There is a problem with this authority. The statute calls for the court to create a “rule” for determining the number of judges. Rather than following a rule, however, the expanded panel here appears to be an ad-hoc creation. 


  • Parallel Reexamination: As with most litigation, the patents are also under reexamination at the PTO.  As usual – and perhaps as required by the law – the Federal Circuit entirely ignored that proceeding.

12 thoughts on “Federal Circuit Expanded Panel

  1. 12

    Big Guy please don’t apologize. Most everybody misses the nuance. I think that’s because US courts don’t approach claim construction of the patent in issue in the same way as they would do any other document, such as a Contract between two parties, and it has become set in stone that the curent CAFC Phillips way is the “correct” way to construe a claim, for the sake of legal certainty.

    In England, the judge is a person who has had an aggregate maybe 20 years’ experience as a patent litigator (ie 10 years in aggregate for the infringer interspersed with 10 acting for the patent owner). Such people think they know how to give effect to Article 69 EPC and its Protocol (fair scope for the inventor, but not at the cost of reasonable” legal certainty for everybody else). They require a test which gives them enough freedom to get to the “right” answer, to do justice. If they use hindsight, they get reversed on appeal. That seldom happens, as every English patent litigator knows. Patent litigation in England is nearly always over and done with, less than 18 months after issuing proceedings. 95% of cases settle before trial within 14 months. Most of the trialled cases don’t go on to appeal. Good for the reputation of the patent system, no?

    The judge doesn’t construe the claim till after full trial. Full trial typically lasts a week. In between opening arguments and closing arguments is cross-examination of the expert witnesses of the opposed parties. They have both sworn their duty is to the court, to educate the court, so the court, after cross-examination, can confidently “don the mantle” of the PHOSITA at the date of the claim, and through his/her eyes, on that date, construe the claim. What was the writer of the claim, at the filing date of the claim, using the language of the claim to mean.

    Try it out, on a case like Chef America (400°F oven, heat dough at or heat to).

    Take a dispassionate and intelligent observer, say a CEO sceptical of patent lawyers and patent law. Would such an observer see anything in the English system worth adopting? Can we not all agree that it is important that we retain the confidence of such observers, in our beloved patent system?

  2. 11

    EG, at the CAFC Symposium earlier this year, the judges recounted a few times where the court used a panel size other than the standard three judges or full en banc. They were special circumstances, like the one you mentioned. I find it strange that the presence of visiting dignitaries would be such special circumstances, but then again, I’m just a guy posting a comment in a blog.

  3. 10

    “But correct me if my understanding is wrong, do.”

    Ah, I missed a nuance in your “English rule.” You are correct that in the US the apparent intent of the inventor does not usually override the actual words of the claim, except to the extent that the inventor has expressly defined a term. What the actual terms of the claim convey to the PHOSITA is controlling.

    My humblest apologies to you.

    Do you think the English rule is superior? Or is it, dare I say, invite hindsight reasoning?

  4. 9

    Well, Big Guy, you should know better than I but I did think that the US test was something like “What does the the claim mean to me, the PHOSITA”. For a case like Chef America, the two tests yield different results.

    But correct me if my understanding is wrong, do.

  5. 8

    “the Dissenting judges seem to be ploughing that furrow”

    more like spreading manure. “Preferred animals from which to produce a food product include any economic food animal.” The dissent underlined ‘economic food animal’. The only thing “notional” here is the dissent’s added underlining to the original patent text.

  6. 7

    “I’m thinking of the English rule of claim construction: What would the notional PHOSITA have thought the inventor was using the language of the claim to mean?”

    This is the US rule of claim construction as well, Max. Does anyone have a different rule? Maybe the international flavor at the CAFC had some influence, but I doubt that it influenced claim construction.

  7. 6

    That last from Anonymous is interesting for me. Dennis, you say you will write more. I’m keen to read what you write on claim construction (cos I can’t yet see a link to the written Decision and Dissent). Specifically (given the “international” flavour at the CAFC that day) I’m thinking of the English rule of claim construction: What would the notional PHOSITA have thought the inventor was using the language of the claim to mean?

    From your write-up so far, the Dissenting judges seem to be ploughing that furrow.

    Or were they? I await with interest.

  8. 5

    The Martek case was argued on 4/21/2009 and was the first case of the day. In the mp3 for the audio of arguments, Judge Newman acknowledges the guests and then the argument gets started. No mention of why they went with 5 judges. The CAFC announcement page link to cafc.uscourts.gov indicates that April 20-21 was the 5th International Judges Conference on IP Law, and that “Conference attendees will have the opportunity to attend three oral arguments at the Federal Circuit on Tuesday morning, April 21st.”

    The conference web page has summaries of the 3 cases posted and links to the briefs. link to ipo.org

    The other cases argued that day were Fernandez Innovative Technologies v. GM (2008-1533) and Pressure Products v. Greatbatch (2008-1602).

    Fernandez was affirmed by R36 in May.
    Pressure Products seems to be pending.

  9. 3


    I’m with you on this one. What is the reason for other than the normal 3 judge panel?

    The case mentioned with 7 judge panel involved multiple appeals from apparently two separate but related cases of a takings claims in the Court of Claims. Because 2 separate panels heard the prior appeals of these related cases, the Federal Circuit exercised its authority under 28 USC 46(b) and Fed. Cir. R. 47.2(a) to create a 7 judge panel (apparently adding 1 more judge to the 6 prior panel judges to keep the number odd as is also required). See footnote 11 from the Cienega Gardens case. The reasoning there for the 7 judge panel makes sense.

  10. 2

    Dennis, I hope you are able to get the full back story on this five-judge panel. I find it a little odd that the court didn’t offer any explanation on why it took this highly unusual measure.

  11. 1

    CAFC Ruel 47.2(a) says that “Cases and controversies will be heard and determined by a panel consisting of an odd number of at least three judges, two of whom may be senior judges of the court.” I suppose the rule allows for ad hoc determination of the size of the panel, but it *is* a rule.

    The CAFC did this a while back, putting together a seven-judge panel in Cienega Gardens v. United States, 503 F.3d 1266 (2007), but they had an actual substantive reason for doing it then. I don’t know whose idea it was to have 5 judges to impress the dignitares.

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