Guest Post by Tun-Jen Chiang, Assistant Professor of Law, George Mason University School of Law
One of the longstanding myths about the Federal Circuit is that it is formalist. This is usually levied by academics as a criticism, but no one does more than the Federal Circuit itself to spread the myth. For judges, being labeled as a jurisprudential machine is a badge of honor. Thus, even where their true motivation is clearly policy-based, judges invariably couch their opinions in legalistic terms.
The recent dissents from en banc rehearing in Retractable Technologies, Inc. v. Becton, Dickinson & Co. provide perfect examples. The issue in Retractable is an old one: should the Federal Circuit give deference to district judges on claim construction? Judge Moore (joined by CJ Rader) and Judge O’Malley both argued the court should. Their dissents each begin with the assertion that the Supreme Court in Markman held that claim construction is a “mongrel practice” with both legal and factual components, and this counsels for deference to trial judges.
Let me start by debunking this legalistic argument. The Supreme Court in Markman did not hold that claim construction is a “mongrel practice.” It started off by observing that claim construction is intrinsically a mongrel practice, and then held that the Court would adopt a legal fiction that claim construction was a pure question of law.
Why do I say this? If it is correct that Markman held that claim construction has a factual component, then the result under traditional common law principles is not that trial judges get to decide the factual component. Trial judges do not decide facts; juries do. Some well-known exceptions are for suits in equity, for jurisdictional facts, and for procedural facts. But nobody contends that these exceptions apply. The claim-construction-is-factual line of reasoning is a legalistic and logical dead end.
Rather, the case for deference to district judges on claim construction must succeed, if at all, entirely based on policy-based concerns. Trial judges have better access to evidence than appellate judges, and yet they are more experienced at dealing with legal documents like patents than juries. This is a perfectly plausible policy-based argument, and is almost certainly the true reason for Judges Moore and O’Malley to seek deference for trial judges. Too bad they feel the need to couch the argument in formalist terms.