Judges: Dissents from Denial of Panel Rehearing by (1) Moore with Rader and (2) O'Malley
I typically don't post on Federal Circuit opinions that don't start with In re, but this one's an exception since two of the three dissenting judges - Chief Judge Rader and Judge O'Malley - were at the recent bench/bar and this precise issue came up - it was in fact the topic of a panel discussion.
Retractable was a plaintiff's jury verdict in Judge Folsom's court which was set aside by the Federal Circuit panel when it disagreed with his claims construction. Today the Federal Circuit issued an order reflecting that the requested poll for en banc rehearing of that panel's decision had failed.
There were two dissents from that denial of rehearing. In the first, Judge Moore, joined by Chief Judge Rader (who gets a flag in his picture because he's the chief) complained that the standards for review of claim construction rulings are unclear (you think?) and argued that this case presented a good opportunity for the court to address two issues: (1) the role of the specification in construing the claims (which was the subject of Chief Judge Rader's panel dissent); and (2) whether deference should be given to the district court in the claim construction process. It argued that deference should be given to the factual part of the claim construction process, which even the Supreme Court in Markman called a "mongrel practice".
The second dissent was by Judge Kathleen O'Malley, who wrote that "[i]t is time to revisit and reverse our decision in Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc). Because this case presents an appropriate vehicle to do so, and the court’s decision necessarily would change if even minimal deference were afforded to the trial judge’s claim construction, I dissent from the refusal to hear this case en banc."
Judge O'Malley, a sixteen year veteran on the district court bench before coming to the Federal Circuit last year, argued that a deferential standard of review is appropriate:
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, some-times 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.” Cybor, 138 F.3d at 1477 (Rader, J., dissenting). 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.” Id. at 1478. Indeed, the Supreme Court has held that a deferential standard of review is warranted for mixed questions of law and fact “when it appears that the district court is ‘better positioned’ than the appellate court to decide the issue in question . . . .”
(Emphasis added; internal citations omitted whenever I felt like it).
But her opinion also noted a salient fact - that the claim construction on which the resolution of this case turned was vetted by not just one trial judge, but two. The claim term at issue is a syringe’s “body" which Judge Folsom had concluded was not limited to a one-piece body. And Judge Leonard Davis had held the same thing in a prior case a few years earlier, with both rulings coming after exhaustive briefing and hearings. Judge O'Malley did not take issue with the panel's analysis as Judge Moore and Chief Judge Rader had done - her objection was focused on the need to reverse Cybor's holding that no deference could be made to the district court's determination. "It is time we stop talking about whether we should re-consider the standard of review we employ when reviewing claim construction decisions from district courts," Judge O'Malley concluded - "it is time we do so."