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Justin E. Gray

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Former Adjunct Professor at Northwestern University School of Law

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Federal Circuit Denies Rehearing En Banc for Retractable Technologies v. Becton, Dickinson and Co.

Retractable Technologies, Inc. v. Becton, Dickinson and Co. (Fed. Cir. Oct. 31, 2011)

The Federal Circuit has denied Retractable Technologies' petition for panel rehearing and rehearing en banc regarding claim construction issues.  Three members of the Court dissented.

Judge Moore, joined by Judge Rader, wrote, in part:

Claim construction is the single most important event in the course of a patent litigation.  It defines the scope of the property right being enforced, and is often the difference between infringement and non-infringement, or validity and invalidity.  Despite the crucial role that claim construction plays in patent litigation, our rules are still ill-defined and inconsistently applied, even by us.  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 ... Nowhere is the conflict more apparent then in our jurisprudence on the use of the specification in the interpretation of claim language ... This case is a good vehicle to address two important claim construction principles:  the role of the specification in construing the claims and whether deference should be given to the district court in the claim construction process.

Judge O'Malley wrote, in part:

Post-Markman, district judges have been trained to--and do--engage in detailed and thoughtful analysis of the claim construction issues presented to them.  They conduct live hearings with argument and testimony, sometimes covering several days, and certainly always extending beyond the mere minutes that courts of appeals have to devote to live exchanges with counsel.  Simply, "the trial court has tools to acquire and evaluate evidence that this Court lacks."  While no one would urge deference to cryptic, unthinking rulings born of little or no real inquiry, where, as here, the trial court has thoroughly vetted all relevant aspects of the claim constructions at issue, "careful consideration of the institutional advantages of the district court would counsel deference."


An exercise that requires review of often extensive documentary evidence, and, in some cases, expert evidence for purposes of "capturing the scope of the actual invention" sounds tellingly like a factual inquiry, not a legal one.  The fact that this inquiry is to be undertaken from the point of view of one skilled in the art at the time of the invention, moreover, underscores this conclusion.


It is time we stop talking about whether we should reconsider the standard of review we employ when reviewing claim construction decisions from district courts; it is time we do so.

Prior coverage of the July 2011 panel decision can be found here.