By Peter Menell and Jonas Anderson, Patently-O
After nearly two decades of lower court confusion, there was a glimmer
of hope that the Supreme Court might intervene to clarify the standard of
appellate review of claim constructions determinations. Following strongly worded dissents from
denial of rehearing en banc, the Supreme Court invited the Solicitor
General’s views on the certiorari petition
in Retractable Technologies, Inc. v. Becton, Dickinson and Co., 653 F.3d
1296 (Fed. Cir. 2011), denial of rehearing en banc, 659 F.3d 1369
(2012).
In its filing last week, the
Solicitor General has unfortunately recommended against Supreme Court review
principally on the ground that Retractable Technologies is not an
“appropriate vehicle” because the district court did not specifically rely upon
factual findings. Therein lies the
Catch-22. No district court since at
least the Federal Circuit’s 1998 en banc Cybor ruling has been willing
to make factual findings in construing patent claims for the pragmatic,
logical, and legal reason that to do so would contradict Federal Circuit law
that claim construction is a pure question of law.
As we have chronicled at
length elsewhere, see Anderson & Menell, From De Novo Review to
Informal Deference: An Historical, Empirical, and Normative Analysis of the
Standard of Appellate Review for Patent Claim Construction (2012) available at
<http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2150360>, Anderson &
Menell, Appellate Review of Patent Claim Construction: The Reality and Wisdom
of a “Mongrel” Standard the Federal Circuit,
the Federal Circuit has struggled mightily over the standard of appellate
review since the Markman case. A
slim majority adheres to de novo review notwithstanding the Supreme
Court’s recognition of the “mongrel” character of claim construction. The confusion has contributed to a high,
variable, panel-dependent reversal rate of claim construction determinations. Fearing reversal for relying upon expert
testimony, district judges avoid and/or mask use of experts in determining how
skilled artisans interpret patent claims.
Numerous studies indicate — and district court and several Federal
Circuit jurists believe — that the de novo standard has significantly
increased the uncertainty and costs of patent litigation, reduced settlement
rates, and misapplied the Supreme Court’s Markman
ruling.
The SG’s rationale overlooks
a critical and unique structural feature of the federal patent system: the
Federal Circuit’s exclusive jurisdiction over patent appeals. Circuit splits are not possible on patent
issues and district courts throughout the land are bound by the Federal
Circuit’s interpretation of patent law.
Under the SG’s logic, therefore, the standard of appellate review will
not be ripe for Supreme Court review unless a district court defies the Federal
Circuit. Such logic nearly guarantees
that there will never be an “appropriate vehicle” for considering this issue,
notwithstanding the vehement cries for help from Chief Judge Rader, Judge
Moore, and Judge O’Malley.
It is possible that the
Federal Circuit will eventually revisit this standard on its own, although the
historical record does not inspire confidence.
As we chronicle in our article, members of the Federal Circuit have
repeatedly sought to revisit the de novo standard since the Markman
decision to no avail. Meanwhile,
district courts and the patent system have endured a doubtful application of
the Supreme Court’s Markman ruling, causing substantial disruption and
wasted resources.
To avoid the Catch-22, the Supreme Court should view
dissents from rehearing en banc in the Federal Circuit as a proxy for a
circuit split. Furthermore, the fact
that a “split” has festered since the time of Markman strongly indicates
that the standard of appellate review is ripe for Supreme Court
consideration. The SG has missed these
critical points in its assessment of the Retractable Technologies certiorari
petition.