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The U.S. Court of Appeals for the Federal Circuit has taken a pass on an opportunity to revisit its seminal 1998 ruling on appellate review of claim reconstruction. A split decision by the full Federal Circuit denied rehearing of a case involving review of a district judge’s decision on the definition of patent claims. The Oct. 31 order in Retractable Technologies Inc. v. Becton, Dickinson and Co. denied petitions by plaintiffs-appellees Retractable Technologies and Thomas Shaw seeking panel or en banc rehearing of the Federal Circuit’s ruling in the case on July 8. The Federal Circuit’s decision means the court won’t reconsider the controversial question of whether the appellate court should defer to district courts’ claim construction. In 1998, the Federal Circuit ruled in Cybor Corp. v. FAS Technologies Inc. that it should review claim construction de novo and not defer to district judges. Judges William Bryson, Timothy Dyk, Richard Linn, Alan Lourie, Pauline Newman, Sharon Prost and Jimmie Reyna, issued the majority per curium order. Senior Judge S. Jay Plager participated in the decision about the panel rehearing. Judge Kimberly Moore, joined by Chief Judge Randall Rader, filed a dissenting opinion on the majority’s denial of the en banc rehearing petition. Judge Kathleen O’Malley filed a separate dissent. The July 8 ruling partly affirmed and partly reversed several 2009 orders by Chief Judge David J. Folsom of the Eastern District of Texas, including a patent claim construction order and post-trial motion denials. The ruling found that the district court erred in its construction of the claim term “body,” in the underlying case about patents for retractable syringes. Such syringes have a needle that retracts into the syringe body once the syringe is used. The Moore and Rader dissent asserts that “claim construction is the single most important event in the course of a patent litigation” and often determines whether there’s infringement or non-infringement and patent validity or invalidity. “Despite the crucial role that claim construction plays in patent litigation, our rules are still ill-defined and inconsistently applied, even by us,” Moore wrote. “Commentators have observed that claim construction appeals are ‘panel dependent’ which leads to frustrating and unpredictable results for both the litigants and the trial court.” Moore asserted that Retractable is a good vehicle to address two claim construction issues. One is the role of the patent specification — the written description of the invention that includes how it is made and used — in claim construction. The other is whether the Federal Circuit should defer to the district court on claim construction. Moore wrote that “it is clear that the words of the claim define the scope of the patented invention.” She continued: “If the inventor has chosen a broad claim term that is not supported by his specification, the patent’s validity may be in jeopardy. But we cannot, as the court does in Retractable, redefine a claim term to match our view of the scope of the invention as disclosed in the specification. We are not the lexicographers.” Moore also said that “ Retractable simply cannot be reconciled” with the court’s 2005 en banc decision in Phillips v. AWH Corp. Phillips stated that “it is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.’ “ Moore also supported en banc review of Retractable to address the deference issue. She noted that the Federal Circuit has waited five years since its 2006 ruling in Amgen Inc. v. Hoechst Marion Roussel Inc., “where six judges claimed a willingness to review” the 1998 ruling in Cybor Corp. O’Malley’s dissent noted that the 1996 U.S. Supreme Court ruling in Markman v. Westview Instruments Inc., which assigned claim construction to trial judges, rather than juries, did not construe it as a pure question of law. “Despite this seemingly clear guidance from the Supreme Court, we reiterated in Cybor that our court will treat all claim construction determinations as pure questions of law, reviewable with zero deference.” Since Markman, “district judges have been trained to — and do — engage in detailed and thoughtful analysis of the claim construction issues presented to them,” O’Malley wrote. O’Malley found that Judge Leonard Davis of the Eastern District of Texas construed the term “body” as Folsom did in an earlier case involving some of the same patents. Folsom agreed with Davis after conducting his own claim construction hearing, she noted. “When the panel reversed Judge Folsom’s claim construction, it upended the jury verdict and set aside the product of years of litigation before two judicial officers,” O’Malley wrote. “In other words, the decision here did not promote the consistency and uniformity in patent law that Cybor was intended to foster; the decision here accomplished the opposite.” Roy Hardin, a Dallas partner at Locke, Lord, Bissell & Liddell who argued the case for plaintiff Retractable, said that “clear claim construction rules and consistent application of them by district courts are critical elements for a healthy patent system.” “The court missed an opportunity to clarify those rules in this case and to confirm the hard work that district court judges do in deciding these matters,” Hardin said. Bill Lee, a Boston lawyer who co-manages Wilmer, Cutler, Pickering, Hale and Dorr and who argued the case for Becton, referred questions to the company. Becton declined to comment. The vigorous dissents are likely to trigger an en banc rehearing in another claim construction case within the next two to three years, said Scott McBride, a partner at Chicago-based McAndrews, Held & Malloy, who isn’t involved in the case. “I view it not as a failure to get the issue en banc [treatment], but as an indicator that it will get en banc [consideration] soon,” McBride said. Inconsistent Federal Circuit rulings on the issue have created uncertainty about the value of a particular patent and the outcome of the litigation over a particular patent, he said. “The complaint by some practitioners is that we don’t have certainty.” McBride said he doesn’t have a position on whether the Federal Circuit should give deference to district court judges’ claim construction rulings, but any future ruling moving the law in that direction would have the “unintended consequence of increasing forum shopping.” The question of “how is claim interpretation dealt with in this district will become a much greater consideration if deference is given,” McBride said. Cybor “is the most notorious case the Federal Circuit has ever had,” said Harold Wegner, a partner in the Washington office of Foley & Lardner, who isn’t involved in Retractable. “Right now you have a game show, where a party with a difficult position will challenge a whole bunch of claim terms in district court and take a de novo pot shot on appeal,” Wegner said. A higher standard for deference to a district court’s claim construction rulings would encourage earlier settlements and discourage appeals, he said. Sheri Qualters can be contacted at [email protected].

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