The U.S. Court of Appeals for the Federal Circuit denied a petition for rehearing en banc, over the spirited dissent of Judges Moore, Rader and O’Malley.  The petition sought en banc review of the panel opinion in Retractable Technologies, Inc. v. Becton, Dickinson and Co., (IP Update, Vol. 14, No. 7) and addressed the claim construction tension between broadly drafted claims and a narrow invention as presented in the accompanying written description.   Retractable Technologies, Inc. v. Becton, Dickinson and Co., Case No. 10-1402 (Fed. Cir., Oct. 31, 2011) (Order) (Moore, J., dissenting, joined by Rader, C.J.) (O’Malley, J., dissenting).

In the panel decision, the Federal Circuit had affirmed in part and reversed in part the district court’s determination that a syringe body could include a multi-part structure. The panel majority noted that the specification indicates what was invented, and the claim language should not be interpreted to extend the invention beyond that set forth in the written description.  

Two separate dissenting opinions were filed from the refusal to grant rehearing. In the first dissent Judge Moore identified this case a vehicle to address two principles:  the role of the specification in construing claims and, specifically, whether the invention as described in the specification should be used to rewrite the ordinary meaning of claim language to better capture what was invented and whether deference should be given to the district court in the claim construction process. In answering the first principle, Judge Moore explained that if the claims are broadly drafted beyond what is disclosed in the specification that is a problem of validity, not claim construction.  In Judge Moore’s opinion, claims should not be rewritten to better conform to what the court discerns to be the “invention” of the patent.  Specifically, the plain and ordinary meaning of claim language should not be broadened or narrowed unless the inventor acted as his own lexicographer or intentionally disclaimed claim scope.  As explained by Judge Moore, changing the plain and ordinary meaning of claim terms to tailor the scope of the claims to the perceived invention is not supported by the en banc decision inPhilips.

In addressing the principle of de novo review of claim construction, Judge O’Malley (who recently arrived at the Federal circuit from the U.S. District Court for the Northern District of Ohio) would revisit and reverse the en banc decision in Cybor Corp. v. FAS Techs., concerning the standard of review applied to district court claim construction decisions.  As explained by Judge O’Malley, the U.S. Supreme Court has referred to claim construction as a “mongrel” practice involving both legal and factual inquiries. Yet under current Federal Circuit precedent, zero deference is given to the district court’s detailed factual inquiries concerning the point of view of one skilled in the art at the time of the invention. 

Practice Note:   The two separate dissents from the denial of en banc review, including the views of the chief judge of the circuit, suggest that both legal principles may soon be the focus of additional Federal Circuit or Supreme Court analysis.