The Supreme Court has denied the request to hear Retractable Techs., Inc. v. Becton, Dickinson & Co. The case involves claim construction and whether deference should be given to the district court’s interpretation on appeal.
In 1998, the Federal Circuit issued its decision in Cybor Corp. v. FAS Techs., Inc. The en banc court ruled that district court claim construction rulings should be reviewed de novo on appeal. This means that the court held that claim construction was purely a matter of law. Traditionally, factual issues are reviewed by appellate courts under a different standard of review than legal issues. The district court actually heard the witnesses and reviewed the evidence and is thus entitled to deference when reviewing factual issues on appeal. Not so with legal issues.
That decision has led to extremely high reversal rates on appeal at the Federal Circuit. A district court will issue and claim construction order, conduct an infringement trial and then be reversed on appeal. The court would then have to try the case all over again. This procedure is highly inefficient given the high costs of patent litigation.
Sometimes, parties would stipulate to infringement or non-infringement if they lost the claim construction battle at the district court. This would tee the case up for appeal without the need for multiple trials. If the case was affirmed, there was no need for trial; if it was reversed, the final word on claim construction permitted a single trial on infringement.
Since Cybor Corp., there have been a number of calls for the Federal Circuit to reconsider the standard of review. Claim construction should not be viewed as a purely legal matter. There are always underlying issues of fact that the district court reviews. During hearings on claim construction, the court may review evidence of the invention, hear witness testimony, and review expert reports. The Federal Circuit does not provide any deference to the district court’s review of this evidence as it does most other factual issues.
In Retractable Techs., the district court construed the term “body” to include multi-piece and one-piece bodies. On appeal, a divided panel of the Federal Circuit held that the specification limited the term to one-piece bodies. When the court declined to rehear the case en banc and reconsider the standard of review, Judge O’Malley wrote a vigorous dissent that was joined by Chief Judge Rader and Judge Moore. Judge O’Malley is a former district court judge and is thus familiar with the other side of the issue.
It was thought that this dissent might lead the Supreme Court to hear the case. Alas, yesterday, they declined to do so. One would surmise that this issue will not go away and will continue to be raised in future cases.