Supreme Court: Solving Claim Construction?

032312_0335_ClaimConstr1
by Dennis Crouch

Retractable Techs., Inc. v. Becton, Dickinson & Co. (on petition for certiorari 2012)

As its company name suggests, Retractable Technologies makes safety syringes that retract after completing a drug injection. Retractable sued BD for patent infringement and won $5 million in damages and permanent injunctive relief. This was the second time that Retractable had filed a lawsuit to enforce its patent. In both cases, the district court interpreted the claim term syringe "body" as encompassing a body "composed of one or multiple pieces." (In the first case, the accused infringer agreed to stop making its product and to pay a $1 million settlement).

On appeal here, BD was able to convince a two-member majority of its Federal Circuit panel to modify the claim construction in a way that limits the "body" element to a "one-piece body." (Majority opinion by Judges Lourie and Plager). The appellate panel narrowly construed the term based upon its reading of the patent specification and the notion that the claims should be limited to what "the inventor actually invented." In dissent, Chief Judge Rader argued that the majority had improperly confined claim scope to the specific embodiments of the invention." Chief Judge Rader also argued in favor of giving more weight to the doctrine of claim differentiation. Here, some of the non-asserted claims in the patent included an explicit "one-piece body" limitation – suggesting that the asserted claim without the "one-piece" limitation must be broader.

After losing the appeal, Retractable filed a petition for rehearing and rehearing en banc. The petition was denied, but Judges Moore and O'Malley each filed dissents.

Supreme Court Petition: Retractable has now filed a petition for writ of certiorari to the United States Supreme Court. The petition raises two questions:

1. Whether a court may depart from the plain and ordinary meaning of a term in a patent claim based on language in the patent specification, where the patentee has neither expressly disavowed the plain meaning of the claim term nor expressly defined the term in a way that differs from its plain meaning.

2. Whether claim construction, including underlying factual issues that are integral to claim construction, is a purely legal question subject to de novo review on appeal.

First Question Goes Nowhere: In my view, the first question presented is not well stated. Of course a court can use context to provide meaning to claim language. A formalistic and restrictive view of patent doctrine was rejected by the Supreme Court in virtually every recent decision, including Mayo, Bilski, KSR, eBay, and MedImmune. Further, many members of the Supreme Court have identified a problem with vague and over-broad claim limitations, and the majority opinion here provides a simple tool for limiting scope: interpret the claims within the context of what was demonstrably understood by the inventor and the examiner and by what would have been known by a reasonably skilled artisan.

Use Specification to Narrow (or Broaden): There are times when the context of the specification is used to broaden the scope of a claim term beyond its ordinary meaning. However, the Federal Circuit judges appear to believe that greater reliance on the specification will usually result in a narrowing of claim scope. Thus, the debate on the role of the specification in claim construction is at least partially a proxy for the debate on whether patents should be given a broad scope or narrow scope. I would again criticize the petition – this time for wholly agreeing that reliance on the specification results in a narrowed scope. Retractable frames the debate on trying to understand "the circumstances in which the language of the specification should narrow the plain meaning of a claim term."

The Second Question is more well framed, although I would have tweaked it slightly to ask: "Whether claim construction, including underlying factual issues that are integral to claim construction, is a purely legal question [that is therefore] subject to de novo review on appeal." The tweak here is important because Retractable is not challenging the Supreme Court's Markman decision but rather challenging the Federal Circuit's Cybor decision. In Markman, the Supreme Court recognized the reality that claim construction includes a number of factual determinations – calling the process a "mongrel" of fact and law. However, the court ruled that claim construction should be treated as an issue of law to be decided by a judge. In Cybor, the Federal Circuit applied its usual formalistic if-then approach to rule that appellate review must be de novo because claim construction is an issue of law. From the petition:

In Markman, this Court held that, for purposes of the Seventh Amendment, the task of construing patent claims falls to trial judges rather than juries. Markman did not decide the standard of review that an appellate court should apply to a district court's claim construction. The Court noted, however, that the process of construing a claim is a "mongrel practice," that "falls somewhere between a pristine legal standard and a simple historical fact." In holding that trial judges are "better suited" for this task than juries, the Court recognized that claim construction requires trial judges to exercise a "trained ability to evaluate the testimony in relation to the overall structure of the patent." Accordingly, the Court held that "there is sufficient reason to treat construction of terms of art like many other responsibilities that we cede to a judge in the normal course of trial, notwithstanding its evidentiary underpinnings." Thus, Markman recognized that claim construction involves underlying factual questions, and said nothing to indicate that the Federal Circuit should displace the district court's resolution of those questions.

There are lots of doctrines that receive de novo review that do not have a reversal rate anywhere near that of claim construction. I think that everyone agrees that claim construction is inherently difficult. Claim construction rulings do not provide a yes-no answer like you might find in an obviousness judgment. Rather, a judge is required to identify the best interpretation of all possible interpretations of each contested claim term. And, unlike statutory interpretation, we do not have the benefit of the scope being developed over time through a series of cases. Rather, in most instances, a court's construction is in the first instance. In addition to the inherent difficulty, claim construction is made more difficult because of the open panel dependence of claim construction decisions. For many years the Federal Circuit refused to admit any panel dependence in its decision making, that has changed.

Where to Focus Assurances?: District court judges complain about claim construction because of the high likelihood that their decisions will be reversed on appeal. Giving deference to district court judgments would likely mean fewer reversals. This approach gives us certainty earlier in the process, but only once the district court issues a final claim construction. That date still seems very late. The scope of patent claims is of critical importance to almost all patent monetization transactions. However, very few of those transactions take place in conjunction with a district court claim construction decision. We need a process for substantially understanding claim scope at a much earlier stage and without relying on a federal court.

One answer for an early understanding of claim scope: Define terms during prosecution. If applicants fail to define terms, examiners should provide their own definitions as part of the office action. In the short-term, the focus should be on terms that are (1) frequently debated in court (such as "server" or "coupled to"; (2) used in the specification in a way that is in tension with the ordinary meaning of a term; or (3) inherently imprecise (such as "about").

Notes

45 thoughts on “Supreme Court: Solving Claim Construction?

  1. 45

    The phrasing of the question on the first page of the petition might have been done better, but the first section of the petition does a good job presenting the panel dependency in claim construction opinions at the Federal Circuit.

  2. 44

    Patently’O said:

    “One answer for an early understanding of claim scope: Define terms during prosecution. If applicants fail to define terms, examiners should provide their own definitions as part of the office action”

    As a practionner, I would caution against this approach for several reasons:

    1st: English is not a first language for many examiners. In fact, in my experience, there are a substantial number of examiners that could really use improvement in intermediate English.

    2nd: Examiners are already overwhelmed with their current case loads. Adding this step to prosecution would simply create another layer of arguments and reasons for appeal.

  3. 42

    The problem with trying to have someone define terms in the spec at the time of drafting is that the interpretation issues in litigation are usually raised by a particular accused device or a particular piece of prior art, unknown to the drafter of the spec. There is no way the drafter can anticipate all issues and provide a definition that addresses them ex ante.

  4. 41

    Even worse — the Office of Petitions. Words with established meanings — “new ground of rejection” “subject matter jurisdiction” etc are redefined willy-nilly.

  5. 40

    Ask as many times as you like. Feel free. But there’s no point. You’ve had all you’re going to get from me. I simply don’t understand what you want.

  6. 39

    There’s where we differ

    Please pay attention, as I asked not to discuss that case (gulf or not).

    I thank you for your additional view on UK law. This is US law we are discussing.

    I am asking for a third time for clarification of your post above.

  7. 37

    There’s where we differ, in your:

    “Chef America was correctly decided based on common sense.”

    The gulf between us is unbridgeable, I suspect. I prefer the UK Supreme Court rule on claim construction. Ask “What was the writer of the claim using the language of the claim to mean”. I hope to see it adopted in other jurisdictions. I think engineers can relate to it. I think it fits into general contract law.

  8. 35

    I was wondering the same.

    I did come across Pfizer Inc. v. Ranbaxy Laboratories Ltd. 457 F.3d 1284, although I think that Tate Engineering, Inc. v. U.S. 477 F.2d 1336 as well as Eltech Systems Corp. v. PPG Industries, Inc. 710 F.Supp. 622 are on point.

  9. 34

    MaxDrei,

    Thanks for the “idea” that drives you.

    However, that helps me not at all to understand what you are attempting to say in your post above.

    Not to get too far off track, but as for the business community, they do (or should) understand contract law and patent law is merely a more detailed (and exacting) version. While there is always room for common sense, Chef America being “wrongly decided” does not fall to a common sense determination.

    In other words, Chef America was correctly decided based on common sense.

    Our disagreement over that will not likely be resolved, nor will it help resolve my understanding of your position here.

    But let’s stay on topic and not discuss Chef America.

  10. 33

    I’ve actually had cases where we were accused of infringement of dependent claim 2 but not of independent claim 1.

    Citation, please.

  11. 32

    Clarifications? I think Chef America was wrongly decided. Not enough common sense displayed, thereby alienating the business community that pays the fees of patent attorneys in private practice. I want business to fall in love with patent law on the basis that it is grounded in good sense. Then it will be more willing to pay me to work for it.

    I therefore try whenever I can to nurture a climate of common sense claim interpretation (whether “off topic” or not).

  12. 31

    Right.

    Just the last few months there have been cases from the Federal Circuit where the issue of a conflict between the dependent claims and the specification was the issue to be decided. The Federal Circuit decided each case depending upon the facts of the case without giving any clear reason why in one case the dependent claims were given effect to broaden the scope of the independent claim and in another case they were not. Therefore one must believe that there is no consistent rule.

    However, I think it always is appropriate to determine whether the dependent claims are supported in the first place, and whether the claims as broadened by implication because of narrowing limitations in the dependent claims are supported. If the answer to either of these questions is that there is no support, in terms of written description support or in terms of enablement, then there is something wrong with either the broadened independent claim or the purportedly narrowing dependent claim.

    Parenthetically, slightly off topic, I’ve actually had cases where we were accused of infringement of dependent claim 2 but not of independent claim 1. The reason for this was that dependent claim 2 was broader. Obviously, dependent claim to was invalid under section 112.

  13. 30

    Not to say that you are in error MaxDrei, but in seeking clarification, I ask the following:

    When you indicate ambiguity in claim 1, are you referring to a) ambiguity in the claim, b) between claim 1 and other claims or c) between the claim and the specification?

    a) Appears off-topic, so I will assume that you do not mean that.

    b) Appears misguided, as the doctrine of claim differentiation only creates ambiguity if not applied.

    c) Appears confused, as a certain great judge once stated The Claim is the Name of the Game, and your stated preference of resolving consistency (to the spec) is to the lesser of the two items. In truth then, resolution must favor the claim. Of course, this brings the addage of “be careful what you wish for” as this opens the door to lack of enablement and description issues (as it should).

    In any of the three alternatives (sans a) which is off topic), I do not see a rationale for your statement.

    Thanks in advance for any clarifications you can supply.

  14. 29

    OK, so I’ll disagree. The majority was right because:

    The claim defines the invention and the specification describes it. One must strive for consistency between the two. After all, the patent is but one single document. No patent claim has ever been 100% clear, in the whole history of patent law, for every one of them is relying on mere words to express something, a concept, that is hard to express in words. If the spec is consistent, and unambiguous, about what the inventive concept is, then any ambiguity in claim 1 should be resolved in favour of consistency with that spec. The Doctrine of Claim Differentiation is not something that trumps all other considerations, just another ambiguity factor.

  15. 28

    It would not surprise me

    And it would not surprise me that Maxdrei fails to see the context of this particular situation as one vastly different than the typical vacuous MM ramblings, and fails to understand that disagreement is not generated by the poster, but rather by the poster’s content (or more accurately, the LACK of said content).

  16. 27

    I’m very pleased with those two responses.. Thanks guys. I think my mind is one that is willing to understand and I think I do now understand that “body” in claim 1 is wide enough to include bodies with more than one piece.

    Any other conclusion strikes me as unreasonable.

    But perhaps others here feel like disagreeing with MM? It would not surprise me.

  17. 26

    If I understand it right, the question decisive to the outcome of this case is whether the term “body” is wide enough to embrace more than one constituent “piece”.

    Ask any 9 people and you will likely get 9 different opinions.

    What if you tell those 9 people that the specification distinguishes between a “one piece body” and “multi piece body”? And that one claim recites a “body” and a dependent claim recites “wherein the body is a one-piece body.” And then ask if “body” does not include multi-piece bodies, why would anyone pay money and go through the trouble of describing the invention using the term “body” in one claim and and in another claim use the term “one piece body”?

    You think you’re going to get 9 different opinions to the claim construction. I think at best you’ll get two different opinions, and 8 of them will be reasonable.

  18. 25

    Did your reading of the wrapper include the claims? Did you then apply the basic claim doctrine of claim differentiation?

    It’s not all that difficult if you are willing to understand.

  19. 24

    It’s pretty straightforward to imagine that IANAE is anti-patent and pro-infringer when his deepest love of infringers is revealed in one colossal oops.

    see link to patentlyo.com

    at Mar 08, 2012 at 09:41 AM

  20. 22

    If I understand it right, the question decisive to the outcome of this case is whether the term “body” is wide enough to embrace more than one constituent “piece”.

    It depends what you mean by “piece”. Consider: how many “pieces” has your own “body” got? Thousands? Or perhaps just one?

    Even after you have read every word of the patent and the wrapper, read every dictionary and consulted every expert, you are still no further forward. You still have to make up your mind, when exactly it is that any particular “body” transitions from one “piece” to more than one “piece”. Ask any 9 people and you will likely get 9 different opinions.

    So I’m not sure I agree with petitioners, that this is an ideal vehicle on which SCOTUS can tell everybody how to construe claims.

  21. 21

    If you wanted to get a bit more forceful, you could include the folllowing: if an applicant presents a dependent claim that is subsequently canceled because the recited species is directed to subject matter not supported by 112, then the genus claim is also non-enabled as a matter of law and must be amended.

    I wouldn’t go that far. You’d never be able to claim any genus at all if that were the law.

    It’s pretty straightforward to imagine a hypothetical where a genus is enabled without written description support for every species.

  22. 20

    patentees lying about the law

    Maybe they should be posting on patent blog comment pages.

  23. 19

    RPM do you really blame Petitioner for not bringing up claim differentiation? Total mess and SCOTUS won’t deal with it.

    It’s only a “total mess” because of patentees lying about the law and confused judges buying those falsehoods.

    An extremely logical, fair and easily applied rule goes like this:

    If a patent claim presents a dependent claim that differs only in the identification of a species encompassed by a genus in the independent claim, then the recited genus must be construed as broader than the dependent claim, as a matter of law.

    If you wanted to get a bit more forceful, you could include the folllowing: if an applicant presents a dependent claim that is subsequently canceled because the recited species is directed to subject matter not supported by 112, then the genus claim is also non-enabled as a matter of law and must be amended.

  24. 18

    Agree with Dennis that the first question presented is not likely to be appealing to SCOTUS. It’s just too factual. And do you really blame Petitioner for not bringing up claim differentiation? Total mess and SCOTUS won’t deal with it.

    Second question is nicely presented and seems the Court may finally take it up here.

  25. 17

    Seems like the Court might bite on the second (Cybor) question — the Federal Circuit has sat on this issue for long enough and shows no sign of taking it on en banc any time soon.

  26. 16

    Dennis wrote:

    >One answer for an early understanding of claim scope: Define terms during prosecution. If applicants fail to define terms, examiners should provide their own definitions as part of the office action. In the short-term, the focus should be on terms that are (1) frequently debated in court (such as “server” or “coupled to”; (2) used in the specification in a way that is in tension with the ordinary meaning of a term; or (3) inherently imprecise (such as “about”).

    While an Applicant is allowed to be his own lexicographer, he is not required to be one. He may rely on the common meanings of words. (MPEP § 2111.01 Plain Meaning [R-5] – 2100 Patentability: I. THE WORDS OF A CLAIM MUST BE GIVEN THEIR “PLAIN MEANING” UNLESS SUCH MEANING IS INCONSISTENT WITH THE SPECIFICATION)…. Etc.

    However, some Examiners have adopted the strategy, when an Applicant has not defined a term (especially a common term), of defining the term to mean whatever he wants it to mean, usually encompassing all the prior art in the world (Broadest Unreasonable Interpretation).

    BPAI has said that Examiners cannot do this (Ex parte MAURICE GIVENS Appeal 2009-003414, BPAI Informative Decision, Decided: August 6, 2009.)

    However, Examiners do it anyway, even after Ex parte MAURICE GIVENS is pointed out to them.

    Examiners already live in an Alice in Wonderland world.

    From Through the Looking Glass:

    “When I use a word,” Humpty Dumpty said, in a rather scornful tone, “it means just what I choose it to mean – neither more nor less.”

    “The question is,” said Alice, “whether you can make words mean so many different things.”

    “The question is,” said Humpty Dumpty, “which is to be master – that’s all.”

    Don’t give Examiners even more power to abuse Applicants.

    Read the whole scene (link to sabian.org, substituting “Examiner” for “Humpty Dumpty” and “Applicant” for “Alice” and contemporary patent prosecution will finally make sense.

  27. 15

    TJ,

    Wouldn’t the following answer your question:

    35 U.S.C. 283 Injunction.

    The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

    Or would that just pertain to injunctions?

  28. 14

    MM – I agree with you that there is some confusion in Law/Fact and Equity/Law. In the law/fact pair, questions of law are typically decided by a judge rather than a jury. In the equity/law pair, the parties typically have right to a jury trial if the case is at law. In Markman, the court was focused on the right to a jury trial, but also wrote that the line is “between issues of fact and law.”

  29. 13

    Claim differentiation IMHO is a simple, useful and logical doctrine. I am disappointed to see that the FedCir has been chipping away at it.

  30. 12

    Mark Mann,

    Please provide a pincite and quotation for where in Markman they held that patent infringement is a suit in equity and not an action in law.

  31. 11

    claim differentiation is dying from a slow death by a thousand FedCir cuts

    That may be true, although it seems that are an equal number of band-aids being applied by different judges on the same court.

    In any event, it seems that everyone agrees (and why wouldn’t they??) that the language in the claims controls, first and foremost, so it seems that those who favor weakening claim differentiation face an uphill battle.

  32. 10

    “In Markman, the Supreme Court recognized the reality that claim construction includes a number of factual determinations – calling the process a “mongrel” of fact and law. However, the court ruled that claim construction should be treated as an issue of law to be decided by a judge.”

    Dennis — With all due respect, this is an incorrect statement of the holding in Markman.

    The Court’s holding was, in fact, that claim construction should NOT be treated as an issue of law, and thus that a plaintiff has no right under the Seventh Amendment to a jury trial.

    Notably, the Supreme Court in Markman was NOT dealing with the fact/law distinction at all. It was as dealing with the equity/law distinction as related to whether plaintiff has a right to a jury trial under the Seventh Amendment.

    This has led to much confusion as many summarize the opinion the way you just did — that the Court said that claim construction is an issue of law. In fact, that is exactly and precisely the opposite of what the Court said — it said it was not an issue “at law” and thus was not an issue to be tried to a jury. Cybor and the Markman decision below were the ones who called it an issue of law — the Supreme Court NEVER said that.

  33. 8

    Rader sided with Lourie in Hemcon, a case where the specification and the dependent claims arguably contradicted each other.

    But the decision on claim construction was 5-5. But Rader’s switch is noteworthy.

  34. 7

    “We need a process for substantially understanding claim scope at a much earlier stage and without relying on a federal court. ”

    I agree with that. Indeed I would go so far as to say we need a process for substantially understanding all issues to be brought up at a much earlier stage and without relying on a court. Such “pre-court” mini-courts would be awesome I would think. Or just ditch the idea of having the normal courts involved, have one “patent court” which is the court of last resort, save for very large issues of patent law, that patent cases take place in and have a few of those scattered around the country.

    But that is the kind of change that people could only dream about.

  35. 6

    “Define terms during prosecution. If applicants fail to define terms, examiners should provide their own definitions as part of the office action. In the short-term, the focus should be on terms that are (1) frequently debated in court (such as “server” or “coupled to”; (2) used in the specification in a way that is in tension with the ordinary meaning of a term; or (3) inherently imprecise (such as “about”).”

    Right, so now instead of having the applicant define things as is proper examiners should now start to put down their definition for all 10 or so undefined wobbly terms in the claims PER CASE.

    I lulzed D. I lulzed.

    How about instead we simply give 112 some teeth in the litigation context? Much easier and pretty much everyone is calling for it.

  36. 5

    I say leave it as an issue of lawl. Examiners get to decide those, and it makes me happy to know that even though it is sometimes hard :) And even though the Fed can arbitarily overturn me or the BPAI anytime it wants, in the vast majority of situations this works out fairly well.

  37. 4

    DC In my view, the first question presented is not well stated.

    Agreed. I wonder how much attorneys who came up with that crxp charged for it? It’s a joke, really, to not even mention the claim differentiation issue in this case.

  38. 2

    And then in litigation we’ll be defining the meaning of the definitions provided in the definitions section of the specification.

    What’s the point?

  39. 1

    A definitions section as part of what – the spec?

    And why put this burden on drafters and eliminate the important nexus of using the common sense concept of context with innovation.

    If you require a definitions section you will make patent prosecution much much more difficult and hike costs of preparing a patent. You will render a serious blow to innovation.

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