Guest Post by Tun-Jen Chiang: Functionalism versus Faux Formalism at the Federal Circuit

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.

29 thoughts on “Guest Post by Tun-Jen Chiang: Functionalism versus Faux Formalism at the Federal Circuit

  1. Very happy to see your article, I very much to like and agree with your point of view. Thank you for sharing. At the same time,i love best pram very much .Welcome to look at my website and blog articles.Hope we can become good friends, and exchange and to help each other! Thanks!!

  2. Point 1: The jury v. judge issue is irrelevant to CC, move on.

    There are many areas in which picking 12 dudes off the street just doesn’t cut it because of the factual complexities of the subject matter or wider policy considerations: bankruptcy, divorce, child custody and welfare, ITC, and, most importantly to this issue, interpreting legal documents such as wills, contracts, and patents.

    Exhibit “A” for the proposition that juries ain’t so great is the jury that initially interpreted Herbert Markman’s claims and the term “inventory.” They bungled it. And the subject matter was running a dry cleaning business. What if they had had to interpret Cyborg’s claims?

    To the extent that relying on the judge to determine the extrinsic evidence and ancillary factual issues in Markman hearings runs contrary to the VII Amendment, it is just one more indicia that the Constitution is long, long out of date and needs to be re-written. In fact, juries are long, long out of date and need to be re-thought. But the USSCt saved us from that obvious and painful conclusion by holding in Markman that CC by a judge does not offend Amendment VII. End of story.

    Where legitimate concerns over the VII Amend kick in is when the CAFC reverses the USDC on claim construction, uses that modified construction to vacate the jury’s verdict on infringement or validity, and enters final judgement without a remand. This is VII Amend tyranny Moore should be screaming about. Fortunately, these cases are rare.

    Point 2: The law/fact issue is settled, move on.

    Under common law the interpretation of legal documents has always been a matter of law, not fact, even if an analysis of facts is required. The common law rule is that a document that is produced under law or pursuant to law is in a sense is an extension of that law and is to be interpreted in the same manner that the law is interpreted: by the judge. Every patent is an extension of the patent act.

    It is not uncommon for facts to be a part of statutory construction — the most common example being determining what Congress did or said that expressed their intent. The analysis of such facts as a part of the interpretation of a document or statute does not turn the process into one of “fact-finding” as that term is used in law.

    Point 3: De novo review was the USSCt’s trade-off. Get off the CAFC’s back.

    In Markman, the USSCt very clearly set forth all of the historical and policy reasons for deeming CC an inquiry of law, not fact. Souter’s opinion was border-line brilliant (in spite of getting off to a rough start by showing a lack of respect for and knowledge of patent law with his quip “so-called claims.”)

    Basically, it doesn’t matter now what the USSCt’s reasons for the Markman CC paradigm were, it’s the law and the CAFC has to follow it. The USSCt’s trade-off for making CC a question of law was giving CAFC de novo review of CC decisions. That is also the law. The issue here is not whether the CAFC re-visits Cyborg; it is whether they revisit Markman, which they, of course, are not permitted to do. So there is no issue.

  3. Put off the pain “for a time” you write, Ned. Like, till after the next election, I take it? That was my point.

    Have you seen what rate of interest the Italian Government is paying today, to borrow money? Well above 6% and therefore totally unsustainable. But then, in Italy, they have elections all the time.

  4. Ned I guess you have never sat through a patent trial in London.

    Do we agree, that patent documents are addressed not to lawyers but to persons skilled in the technical field in which the invention is presented? These days, in some such fields, technical terms can be immediately meaningful to such persons, but totally obscure to persons (even patent attorneys) not active in that field.

    A court-appointed expert is how they do it in Germany. Catastrophic. Time and again, the German supreme court reprimands the lower courts for allowing their own appointed expert to decide what the claim means and not themselves deciding it. So, I agree with you, that to invite an expert is a bad idea.

    But I’m not advocating that. Come to London, and see how, under cross-examination, the two opposing technical experts reveal to the court, with certainty, exactly what the term means to the notional reader of the patent.

    Recall the English Supreme Court test of claim construction The court asks itself: “What was the writer of the claim using the language of the claim to mean.” In London, the test works.

  5. Alun, did you intend a “not” in there somewhere?

    Can you believe that a person who really is bilingual, even “completely bilingual”, in French and English could write (as IBP does, above):

    “Etes-vous bilingue, TJ? Si non, s’il vous plait n’utilisez pas le Francais.”

    because to me that sentence reads like it started out as a sentence composed in English, and then the words were converted into French, one by one, without disturbing the word order at all. IBP seems to be imploring TJ not to use a Frenchman. Interesting thought. Google translation suggests “francaise” (I suppose because la Langue is feminine).

    Until comparatively recently, French was the language of the English Royal Household. So, it beats me why anybody should be upset about a word of French origin being found in present day English. If that is basis enough to throw out “faux”, one would have to discard half the content of the OED, no?

  6. G20? I’m not sure I know what you mean. The problem is that the politician can only put off the pain of default for a time when they are spending beyond the ability to pay.

    The simple solution to this is to NOT GUARANTEE government against default. Lenders then will not lend if a government is behaving irresponsibly.

    But, it seems, powers that be want to have their cake and eat it too. They want to use government power to suppress spending while guaranteeing payment of the spendthrift’s debts. This is insane, to put it bluntly. It really makes no sense.

  7. Max, if a court is having a hard time understanding the technology, he should appoint an expert to give him a lesson.

    The whole point of Philips, IMHO, is to STOP using extrinsic evidence to twist the nose of wax. But that is exactly what happen when one invites experts to opine on what a term would mean to the person of ordinary skill.

  8. Yes, I’m aware of the connotations generally associated with the English usage of the French term faux.

    As one who is completely bilingual, I see the appropriation of foreign-language terms and their subsequent conversion to English usage as entirely pretentious, and revealing of a basic inadequacy in English vocabulary.

    Why not use false or fake instead, as the case would require? Or an even better word, like pretend? Or make a new assemblage of letters to form an entirely new English language word.

    And are you sure that TJ didn’t really mean “ERSATZ”, rather than “FAUX”?

    Yes, I know wherefrom ersatz derives.

    The usage of faux in english is totally pretentious, and should be restricted to the realm of interior design and fashion, where pretense is the dominant paradigm.

  9. Hotchkiss was artfully, but wrongfully, decided.

    The dissent is much more compelling:
    Now, on the point as to the invention being patentable, the direction virtually was to consider it not so, if an ordinary mechanic could have made or devised it; whereas in my view the true test of its being patentable was, if the invention was new, and better and cheaper than what preceded it. This test, adopted by the Circuit Court, is one sometimes used to decide whether the invention for which a patent has been obtained is new enough or distinguished enough from a former invention to prevent it from being an infringement, and to justify a new patent for it, and not, as here, whether it is valuable or material enough per se to be protected by any patent.

    Whenever the kind of test adopted below is used otherwise than to see if there has been an infringement or not, it is to ascertain whether the invention is original or not, that is, whether it is a trifling change and merely colorable or not. Webster on Sub. Mat. 25; Curtis on Patents, §§ 6, 7; 2 Gallis. C. C. 51; 1 Mason, C. C. 182. But it is impossible for an invention to be merely colorable, if, as claimed here, it was better and cheaper; and hence this last criterion should, as requested by the plaintiffs, have been suggested as a guide to the jury.

    Then, if they became convinced that the knob in this case, by its material, or form inside, or combination with the shank, was in truth better and cheaper than what had preceded it for this purpose, it would surely be an improvement. It would be neither frivolous nor useless, and, under all the circumstances, it is manifest that the skill necessary to construct it, on which both the court below and the court here rely, is an immaterial inquiry, or it is entirely subordinate to the question, whether the invention was not cheaper and better. Thus, some valuable discoveries are accidental rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves both novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, and wealth of the community.

    Chancellor Kent has truly said (2 Kent’s Comm. 371), ‘The law has no regard to the process of mind by which the invention was accomplished, whether the discovery be by accident or by sudden or by long and laborious thought.’ See also Earle v. Sawyer, 4 Mason, C. C. 1, 6; Crane v. Price, Webster’s Pat. Cases, 411.

    Even in Hotchkiss’ time, the scorn of “Flash of Genius” had poisoned many a mind.

  10. Ah, I see where you are coming from now. Plausible argument, as long as you can provide some authority for this kind of “Seventh Amendment exceptionalism,” where something is a legal issue for the Seventh Amendment, but not for other purposes.

  11. I think we’re arguing over semantics. Markman said that they’d treat claim construction like a legal issue for Seventh Amendment purposes–i.e., it doesn’t have to go to the jury. Markman didn’t hold that it’s a legal issue for all purposes, and certainly not for the purpose of appellate review.

  12. I would additionally note that Miller v. Fenton, being cited in the quote, is an excellent example of what I am talking about.

    The issue in Miller is whether the voluntariness of a confession is a question of law or fact. As the Court itself recognized, as an intrinsic matter it “falls somewhere between a pristine legal standard and a simple historical fact,” just like claim construction. The Court in Miller then held that it would consider the question — artificially and fictitiously — as a pure question of law subject to plenary federal appellate review. The analogy to what Markman did is obvious.

  13. Semi-anonymous, what you are fundamentally missing is that there is no “fourth alternative” based on functional considerations operating outside of the fact/law distinction of the Seventh Amendment. What the Court meant when it says that “functional considerations also play their part” is that they play a role within the strictures of the choice between fact and law that the Seventh Amendment dictates. The Court cannot, and did not, say that “well claim construction is neither one or the other so we won’t choose.” It necessarily characterized claim construction as an issue of law, by choosing to have judges decide it. That is the same as saying that Citizens United necessarily held that corporations are “persons” under the Fourteenth Amendment, even though of course corporations are in reality nothing more than pieces of paper (or these days, bits and bytes) in a Delaware government office.

  14. I suppose it’s futile to urge everybody involved to “Keep things simple”. I suppose that’s just not possible, with fact-finding being the responsibility of a jury.

    But going back to basics, what a claim means is a matter of law, whereas what a specialist term within the claim means to the PHOSITA is a matter of fact, on which the court will be needing evidence, before it decides what is the ambit of the claim.

    When a single specialist patents judge is helped to an understanding of what that term means to that PHOSITA, by cross-examination under the very nose of that judge of a technical expert for the patent owner, and then one for the infringer, that single judge at first instance can do a pretty good job of fixing with authority and finality what the claim means, nearly every time, thereby saving the appeal court any work on that particular coal face, except in very special cases.

    But I can well understand the distress of an appeal court panel, regularly stuck with a bizarre claim construction at first instance. What to do?

    Reminds me of what people are saying about democracy, after the G20 fiasco. Decent elected politicians know what is the right thing to do. It is just that they do not know how to get re-elected, after they have done the right thing.

  15. TJ, the fourth alternative is what Markman actually said. Claim construction isn’t clearly one or the other, and has no analogue in what juries decided in 1791, but it looks a lot like the sort of thing that judges are better equipped to decide.

    Where history and precedent provide no clear answers, functional considerations also play their part in the choice between judge and jury to define terms of art. We said in Miller v. Fenton, 474 U. S. 104, 114 (1985), that when an issue “falls somewhere between a pristine legal standard and a simple historical fact, the fact/law distinction at times has turned on a determination that, as a matter of the sound administration of justice, one judicial actor is better positioned than another to decide the issue in question.” So it turns out here, for judges, not juries, are the better suited to find the acquired meaning of patent terms.

    517 U.S. at 388.

    I agree that no one would seriously argue (2) or (3).

  16. Right, which is why only pretentious people (or the French) purchase faux marble or use faux painting on their bonus room walls.

    “Faux” has been part of the English language for at least 30 years. It is precisely because of its French origin that it says much more than “false” would. TJ’s use here is right on target. At least to this non-speaker of French.

  17. Ned if I put my trust into what a Lawyer claimed, not realizing my FABRIC that was wanted was denied because of shilling and then was also told to only do “three” Drawings, and that was after he sent the first Application I wanted corrected if i could only have three Drawings. And then the Letter referring as to why the Drawing wasn’t necessary. And then also proving “PRIMA FASCIA” in no drawing slotted Swim Platform in the Application or that very Letter seems to be what you are channeling me for, or have I given TMI? And I also never got what I paid for… then I see Va. 18.2-112… and then on to Chapter 812 in FLA to also be at the core of a “Material Fact” then I hear yah NEDDO! OOps again maybe TMI.
    Being as I could never get anyones attention because I see the correct Statutes mean a lot to the Courts, now I have given Statutes that matter just like ME!

  18. “Faux” rather than “false” is pretentious unless you are fluent in French.

    Etes-vous bilingue, TJ? Si non, s’il vous plait n’utilisez pas le Francais.

  19. Just an observation, if the construction of a claim term involves a genuine dispute of material fact, there has to be something wrong with the claim term.

    ummm… What??????

  20. Saying that Markman held “that the Seventh Amendment doesn’t provide a right to have juries decide claim construction” raises the question why. The Seventh Amendment normally provides a right to have juries decide factual issues in common law actions. The answers are either (1) claim construction is not factual, (2) patent infringement actions are not common law actions (that makes it a suit in equity, then), or (3) the court made an exception to the Seventh Amendment out of nothingness. Since nobody is likely to seriously argue (2) or (3), that leaves (1) by process of elimination.

    Saying Markman only held the Seventh Amendment doesn’t provide a right to have juries decide claim construction, and did not have any other implications, is like saying that Marbury v. Madison only held that the Supreme Court cannot issue a writ of mandamus compelling the Secretary of State to issue a commission for a justice of the peace. To use law professor speak, it is characterizing the decision at an unjustifiably low level of abstraction.

  21. calling on IANAE to make his pitch that all patent suits are actually suits in equity…

    When have I ever said that?

  22. Just an observation, if the construction of a claim term involves a genuine dispute of material fact, there has to be something wrong with the claim term.

    In the PTO, but not in the Federal Circuit it seems, if a claim term’s meaning cannot be determined from the record such that there are more than one equally plausible construction, the claim is determined to be indefinite.

    Then we get to functional claims. If it is not instantly clear what the corresponding structure being claim is, what then?

    The battle about claim construction is truly a war about policy.

    Claims should be clear, definite, particular. Because of lose rules on 112, p.2, claims are anything but. The court really needs to spruce up its jurisprudence here.

  23. suits in equity… But nobody contends that these exceptions apply

    o really? one common poster here will most likely disagree.

    calling on IANAE to make his pitch that all patent suits are actually suits in equity…

  24. And actually semi-anonymous is correct from the papers I’ve read on the subject in the last few weeks. Including Markman and Cybor.

  25. “The claim-construction-is-factual line of reasoning is a legalistic and logical dead end.”

    In other words it is what the law is and you totally do not like it.

    Also, don’t use the word “debunk” it just makes you sound like a wack job.

  26. 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.

    My recollection is that Markman held only that the Seventh Amendment doesn’t provide a right to have juries decide claim construction, without holding either that claim construction is a mongrel practice or that it is a pure question of law (fictitiously or otherwise). It’s Cybor that made that leap.

Comments are closed.