Patent Lawyers Are Waiting for Godot

November 27, 2011

10:00 am

The patent community and the Federal Circuit judges (the appellate judges who hear all appeals in patent cases) have been talking about revisiting the standard for interpreting patent claims for a long time.  Currently, patent claim interpretation is a pure legal question. This means that the trial court can come up with a perfectly reasonable understanding of claim terms, and the appellate court can simply disagree and decide to insert its own meaning.

This practice leads to uncertainty among patentees about how their claims should be interpreted and invites “do-over” behavior. If a litigant is unhappy with the trial court’s interpretation, it can appeal to the Federal Circuit and ask that court to adopt a different one. I see this happen in all types of cases involving a wide range of technologies, including software, mobile, and hardware patents.

This burdens the patent system and adds additional expense to an incredibly expensive litigation process. So, if the appellate court gave some deference to the trial court, many patent attorneys think that we would see fewer changes to the claim interpretations on appeal and drive parties to settle disputes faster.

Unfortunately we’ve all been waiting for Godot—that elusive perfect case with appropriate facts for pondering the claim construction standard that we can’t quite articulate.  We’ll know it when we see it, I guess.

But it’s going to arrive at the Federal Circuit, any day now. Just wait . . .

While you wait, I’ll tell you about some frustrating near misses.

Act I—Amgen II (2006)

Five years ago, an important and controversial claim construction case rolled through the Federal Circuit. It was the second time Amgen had appealed this case, and this time, it was armed with a well-reasoned decision by a highly respected trial judge who had construed certain claim terms in a complicated biotechnology patent.

The trial judge had been dealing with the issues in this case for many years. Yet he couldn’t rely on factual expert testimony to inform his understanding of the meaning of the claims (because that would violate Federal Circuit law). So he simply noted that he had considered all of the claim construction materials, briefings, hearings, more briefings, reports, and other relevant materials that the parties provided. Then he rolled up his sleeves, dug into the claim construction dispute and the technology, and wrote a detailed, articulate opinion that laid out the technical background for the patented technology and the rationale for his construction of certain claim terms.

On appeal, the Amgen II panel disagreed with the trial judge’s claim construction and adopted its own broader construction. This put the claims in serious jeopardy because of certain technology that had been asserted against the patent in this case. The court didn’t defer to the trial judge’s interpretation of the claims, consideration of the arguments, or analysis of the claims in the context of information gathered through years of litigation over this technology.

Six Federal Circuit judges indicated that they would have taken Amgen II en banc to reconsider the court’s prior decision that claim construction is a legal exercise. But that wasn’t a majority of the active court, so Amgen’s request for full-court review was denied.

A few of the judges who decided against taking it en banc indicated that they were waiting for a case with a particular set of facts and circumstances that were not present in Amgen’s case. These judges want a trial judge to violate the claim construction law and go rogue. It’s an interesting requirement for taking a case en banc.

So the court and patent bar continued to wait for the right case. It would surely come soon.

Act II—Retractable Technologies (2011)

Retractable Technologies‘ recent request for full-court review of the claim construction standard shows that we’ve come full circle. (I first discussed this case in July, when the panel opinion issued.) It is an unusual case because the panel members wrote three separate opinions on the patent claim construction issue.

Previously, two Federal Circuit judges decided that the claimed syringe “body” only encompasses syringe bodies made of one piece of material, not multiple pieces, because single-piece bodies are described throughout the specification. One judge on the panel disagreed with this construction.

Retractable asked the full court to review the panel’s split decision. But the court declined this invitation. Again, a couple of Federal Circuit judges wrote opinions that are critical of the court’s decision not to review its claim construction law and practice.

The Retractable Technologies case illustrates a split within the court relating to the meaning of prior claim construction decisions, as well as the proper approach to claim interpretation. Some of the Federal Circuit judges want to resolve this split and think that some deference should be given to the trial judge’s work. Others clearly like having the freedom to decide what they think the claims mean without being burdened by the trial judge’s decision.

So here we are, still waiting for our friend Godot, whom we barely know. Perhaps the Supreme Court will end this excruciating waiting game?

Adapted from a prior post on the Cloudigy Law blog.

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Antigone is a recovering BIGLAW lawyer who is now the founder and CEO of Cloudigy Law. She is an unabashed technophile who loves her day job because it’s about 50% technology and 50% law. Follow Antigone on Twitter @antigonepeyton.

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