United States Court of Appeals
for the Federal Circuit
__________________________
RETRACTABLE TECHNOLOGIES, INC.
AND THOMAS J. SHAW,
Plaintiffs-Appellees,
v.
BECTON, DICKINSON AND COMPANY,
Defendant-Appellant.
__________________________
2010-1402
__________________________
Appeal from the United States District Court for the
Eastern District of Texas in case no. 07-CV-0250, Judge
David J. Folsom.
__________________________
ON PETITION FOR REHEARING EN BANC
__________________________
ROY W. HARDIN, Locke, Lord, Bissell & Liddell, LLP,
of Dallas, Texas, argued for plaintiffs-appellees. With
him on the brief were CYNTHIA KEELY TIMMS and MARK R.
BACKOFEN.
WILLIAM F. LEE, Wilmer, Cutler, Pickering, Hale, and
Dorr, LLP, of Boston, Massachusetts, argued for defen-
dant-appellant. With him on the brief were LISA J.
PIROZZOLO; and WILLIAM G. MCELWAIN and HEATH A.
BROOKS, of Washington, DC.
RETRACTABLE TECH v. BECTON DICKINSON 2
__________________________
Before RADER, Chief Judge, NEWMAN, PLAGER ∗ , LOURIE,
BRYSON, LINN, DYK, PROST, MOORE, O’MALLEY, and
REYNA, Circuit Judges.
PER CURIAM.
MOORE, Circuit Judge, with whom RADER, Chief
Judge, joins, dissents from the denial of the petition for
rehearing en banc.
O’MALLEY, Circuit Judge, dissents from the denial of
the petition for rehearing en banc.
ORDER
A petition for rehearing en banc was filed by Plain-
tiffs-Appellees, and a response thereto was invited by the
court and filed by Defendant-Appellant. The petition for
rehearing was referred to the panel that heard the appeal,
and thereafter the petition for rehearing en banc and the
response were referred to the circuit judges who are
authorized to request a poll of whether to rehear the
appeal en banc. A poll was requested, taken, and failed.
Upon consideration thereof,
IT IS ORDERED THAT:
(1) The petition of Plaintiffs-Appellees for panel re-
hearing is denied.
(2) The petition of Plaintiffs-Appellees for rehearing
en banc is denied.
(3) The mandate of the court will issue on November
7, 2011.
∗
Judge Plager participated in the decision for
panel rehearing.
3 RETRACTABLE TECH v. BECTON DICKINSON
FOR THE COURT
October 31, 2011 /s/ Jan Horbaly
—————————— ——————————
Date Jan Horbaly
Clerk
United States Court of Appeals
for the Federal Circuit
__________________________
RETRACTABLE TECHNOLOGIES, INC.
AND THOMAS J. SHAW,
Plaintiffs-Appellees,
v.
BECTON, DICKINSON AND COMPANY,
Defendant-Appellant.
__________________________
2010-1402
__________________________
Appeal from the United States District Court for the
Eastern District of Texas in case no. 07-CV-0250, Judge
David J. Folsom.
__________________________
MOORE, Circuit Judge, with whom RADER, Chief
Judge, joins, dissenting from the denial of the petition for
rehearing en banc.
__________________________
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 differ-
ence 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. Com-
mentators have observed that claim construction appeals
RETRACTABLE TECH v. BECTON DICKINSON 2
are “panel dependent” which leads to frustrating and
unpredictable results for both the litigants and the trial
court. See, e.g., Fed. Cir. Split for 2nd Time In 2011 On
Use of Patent Specification In Claim Construction, BNA
Patent, Trademark & Copyright Law Daily (noting the
“disagreement within the Federal Circuit on the extent to
which judges may look to the patent specification to
interpret claims continues”); Court Continues to Struggle
with Claim Construction, Patently-O (2011),
http://www.patentlyo.com/patent/2011/07/court-continues-
to-struggle-with-claim-construction.html (noting the
“panel dependence” in claim construction); see also
Wegner, H.C., Arlington Indus. v. Bridgeport Fittings:
The 20 Year Claim Construction Debate, IP Frontline,
http://www.ipfrontline.com/depts/printabletemplate.aspx?
id=24829 (“Until there is a final resolution of this debate
there will never be clarity in claim construction at the
Federal Circuit.”). Nowhere is the conflict more apparent
then in our jurisprudence on the use of the specification in
the interpretation of claim language. The familiar man-
tra is “there is a fine line between construing the claims
in light of the specification and improperly importing a
limitation from the specification into the claims.” Re-
tractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d
1296, 1305 (Fed. Cir. 2011). 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. Accordingly, I dissent
from the denial of rehearing en banc.
I.
It is clear that the words of the claim define the scope
of the patented invention. See, e.g., Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (“It
is a ‘bedrock principle’ of patent law that ‘the claims of a
3 RETRACTABLE TECH v. BECTON DICKINSON
patent define the invention to which the patentee is
entitled the right to exclude.’”); Computer Docking Station
Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008)
(“The words of the claims define the scope of the patented
invention.”). If the metes and bounds of what the inven-
tor claims extend beyond what he has invented or dis-
closed in the specification, that is a problem of validity,
not claim construction. It is not for the court to tailor the
claim language to the invention disclosed. The language
is the language, and the same rules that apply to the
construction of other legal instruments should apply to
the construction of a patent claim.
Applying these bedrock principles of interpretation,
claim terms are to be given their plain and ordinary
meaning to one of skill in the art. Quite frankly, I
thought we resolved this in Phillips v. AWH Corp., 415
F.3d 1303 (Fed. Cir. 2005) (en banc). Of course the claims
are to be construed in the context of the entire patent,
including the specification. The specification may shed
light on the plain and ordinary meaning. However, the
specification cannot be used to narrow a claim term – to
deviate from the plain and ordinary meaning – unless the
inventor acted as his own lexicographer or intentionally
disclaimed or disavowed claim scope. Id. at 1316; see also
Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327
(Fed. Cir. 2002) (“[C]laim terms take on their ordinary
and accustomed meanings unless the patentee demon-
strated an intent to deviate . . . [via] expressions of mani-
fest exclusion or restriction, representing a clear
disavowal of claim scope.”); CCS Fitness, Inc. v. Bruns-
wick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“[T]he
claim term will not receive its ordinary meaning if the
patentee acted as his own lexicographer and clearly set
forth a definition of the disputed claim term . . . .”). The
circumstances in which the written description causes one
RETRACTABLE TECH v. BECTON DICKINSON 4
of skill in the art to reject the plain meaning of a term are
quite narrow. If the inventor has chosen a broad claim
term that is not supported by his specification, the pat-
ent’s validity may be in jeopardy. But we cannot, as the
court does in Retractable, redefine a claim term to match
our view of the scope of the invention as disclosed in the
specification. We are not the lexicographers.
Retractable simply cannot be reconciled with our en
banc decision in Phillips. In Phillips after generalizing
about these very concepts – the primacy of the claims and
the role of the specification – this court applied those
principles to the term “baffles.” The en banc court held
that “baffles” could be placed at any angle including at
right angles. Phillips, 415 F.3d at 1324-27. The court
explained that there is nothing in the plain and ordinary
meaning of baffles which prevents them from being at
right angles. Id. The court then pointed to the fact that
dependent claims limit the placement of the baffles to
angles that will deflect projectiles. Id. The court rea-
soned that since the dependent claims restricted the
angles at which the baffles should be placed, the inde-
pendent claim, without that limitation, did not. Id. The
dissent in the en banc Phillips case believed that the term
baffles, should be limited to “angled baffles” because “the
specification contained no disclosure of baffles at right
angles” and “only angled baffles” can deflect bullets (the
primary objective of the baffles). Id. at 1329. The dissent
explained that every figure, embodiment, and disclosure
of baffles is of angled baffles (not 90 degrees). Id. at 1329-
30.
The dissent made a compelling case – the specification
is replete with angled baffles – and angling is necessary to
achieve the stated objective of deflection. Nonetheless,
the majority of the en banc court held that baffles do not
have to be angled. There was no disclaimer or special
5 RETRACTABLE TECH v. BECTON DICKINSON
lexicography. Baffles were to be given their plain and
ordinary meaning to one of skill in the art and the limita-
tion in the specification “angled baffles” would not be
imported into the claim. With all due respect to the
majority in Retractable, the case is inconsistent with
Phillips, and we are bound to follow our en banc decision.
In Retractable, the claim term at issue, “body,” has a
plain meaning that includes both single and multi-piece
syringe bodies. The parties do not dispute this. This
plain meaning of “body” is underscored by the specifica-
tion, which explains that the “outer body can be made in
one piece.” U.S. Patent 7,351,224 (’224 patent) col.5 l.42.
Dependent claim 31 in the ’224 patent narrows independ-
ent claim 25 (which refers only to a “body”) to a syringe
“comprising a one-piece body.” If “body” does not include
both single and multi-piece structures, the “one piece”
modifier in the specification and dependent claim is
superfluous. As our court explained in Phillips, “the
claim in this case refers to ‘steel baffles,’ which strongly
implies that the term ‘baffles’ does not inherently mean
objects made of steel.” 415 F.3d at 1314. There is nothing
in the remainder of the patent which requires deviation
from the plain meaning of “body.” The inventor did not
act as his own lexicographer by defining “body” to mean
only “a single piece body,” and did not provide a clear and
unambiguous disclaimer of anything other than a one-
piece body. And the majority in Retractable does not
conclude there was any disclaimer or special lexicography.
The error in Retractable is the majority’s attempt to
rewrite the claims to better conform to what it discerns is
the “invention” of the patent instead of construing the
language of the claim. Indeed, the majority candidly
explained that its construction, limiting “body” to a one-
piece body, “is required to tether the claims to what the
specifications indicate the inventor actually invented.”
RETRACTABLE TECH v. BECTON DICKINSON 6
Retractable, 653 F.3d at 1305. The majority reaches this
conclusion based on the examples disclosed in the specifi-
cation that have a “one piece” body, an indication in the
specification that the invention “features a one piece”
body, and the disclosure that the syringe “can be molded
as one piece.” Id. Yet none of these statements in the
specification suggest that “body” actually means “one-
piece body”; to the contrary, the use of the modifier “one
piece” strongly implies that the term “body” does not
inherently mean objects made solely of one piece. Phil-
lips, 415 F.3d at 1314. Regardless of what “the inventor
actually invented,” it is clear that the only construction of
the term “body” that comports with the patent as a whole,
as well as the plain meaning of the term, includes both
single and multi-piece bodies.
Changing the plain meaning of a claim term to tailor
its scope to what the panel believes was the “actual inven-
tion” is not supported by Phillips. The majority uses the
specification to discern “the scope of the actual invention,”
Retractable, 653 F.3d at 1305, and then limits the claim
terms accordingly. The concurrence is even clearer on
what it views as the proper approach, explaining that “the
claims cannot go beyond the actual invention,” and sug-
gesting an “obligation to make full disclosure of what is
actually invented, and to claim that and nothing more.”
Id. at 1311. While this principle is certainly correct – §
112 requires that the inventor disclose and enable that
which he claimed – we do not rewrite claims. This is not
a case where the majority is choosing between two equally
plausible plain meanings and adopting the one that
comports with the disclosure in the specification. The
plain meaning of body is not “one piece body.” Absent
clear lexicography or disclaimer in the specification, we
7 RETRACTABLE TECH v. BECTON DICKINSON
cannot import that limitation into the claims. We simply
cannot rewrite the claims, not even to save their validity. 1
If Retractable were an isolated case, en banc review
might not be warranted, but it is not. Compare, e.g.,
Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632
F.3d 1246 (Fed. Cir. 2011) and Laryngeal Mask Co. Ltd. v.
Ambu, 618 F.3d 1367 (Fed. Cir. 2010) (declining to limit
claims to what is thought to be the invention contem-
plated by the inventors) with Retractable and Fifth Gen-
eration Computer Corp. v. Int’l Bus. Mach. Corp., 416 F.
App’x 74 (Fed. Cir. 2011) (limiting claims to what is
determined to be the actual invention). Retractable
illustrates a fundamental split within the court as to the
meaning of Phillips and Markman as well as the proper
approach to claim interpretation. I would grant en banc
review of Retractable to resolve the clear intra-circuit split
on the claim construction process.
II.
I would also grant en banc review in Retractable to
consider whether deference should be given to the district
court’s claim construction. We have waited five years
(since Amgen Inc. v. Hoechst Marion Roussel, Inc., 469
F.3d 1039 (Fed. Cir. 2006), where six judges claimed a
willingness to review Cybor) for that ever-elusive perfect
vehicle to review the issue of deference to the district
court’s claim construction. The Supreme Court held that
claim construction was a “mongrel practice.” Markman v.
Westview Instruments, Inc., 517 U.S. 370, 378 (1996). As
such it is clearly a mixed question of law and fact and
deference should be given to the factual parts.
1 I am not suggesting, nor has the majority held,
that if body is not limited to a one-piece body, the claims
would fail under § 112.
RETRACTABLE TECH v. BECTON DICKINSON 8
The majority’s approach to claim construction in this
case is virtually identical to the analysis performed under
§ 112’s written description requirement, which is an
entirely factual analysis. If the majority in Retractable is
correct that as part of claim construction, we must deter-
mine the nature of the invention described in the specifi-
cation and ensure that the scope of the claims are limited
only to the actual invention disclosed, we must acknowl-
edge the factual underpinnings of this analysis and there
should be deference. The majority here gave no deference,
rejected the district court’s construction and overturned a
jury verdict of infringement. It is time to rethink the
deference we give to district court claim constructions and
the fallacy that the entire process is one of law. I dissent
from the denial of en banc review in this case.
United States Court of Appeals
for the Federal Circuit
__________________________
RETRACTABLE TECHNOLOGIES, INC. AND
THOMAS J. SHAW,
Plaintiffs-Appellees,
v.
BECTON, DICKSINON AND COMPANY,
Defendant-Appellant.
__________________________
2010-1402
__________________________
Appeal from the United States District Court for the
Eastern District of Texas in Case No. 07-CV-0250, Chief
Judge David J. Folsom.
__________________________
O’MALLEY, Circuit Judge, dissenting from the denial
of the petition for rehearing en banc.
__________________________
It 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.
In Cybor, we held that claim construction is a matter
of law reviewed without deference to a district court’s
RETRACTABLE TECH v. BECTON DICKINSON 2
conclusions. Id. at 1455-56. We decided Cybor in the
wake of the Supreme Court’s decision to place claim
construction in the hands of judges rather than juries.
Markman v. Westview Instruments, Inc., 517 U.S. 370,
372 (1996) (“Markman II”). The Supreme Court, however,
did not assign the task of claim construction to trial
judges because it believed the meaning of patent claims is
a pure question of law. Rather, the Supreme Court classi-
fied the exercise of claim construction as a “mongrel”
practice, involving both legal and factual inquiries. Id. at
378. The Court simply concluded that, because the Sev-
enth Amendment to the U.S. Constitution did not demand
that the issue be decided by a jury and judges were better
equipped to address it, claim construction should be
placed in the hands of trial judges. Id. at 388-89. Impor-
tantly, the Supreme Court did not affirm this court’s
earlier conclusion that resort to a jury was unnecessary
because claim construction is a pure question of law.
Compare id. at 378, with Markman v. Westview Instru-
ments Inc., 52 F.3d 967, 977-79 (Fed. Cir. 1995) (en banc)
(“Markman I”). The Supreme Court instead engaged in a
detailed historical analysis to determine whether the
Seventh Amendment compelled resort to a jury on the
unique question of claim construction—an analysis which
would have been wholly unnecessary if the Supreme
Court agreed with our description of claim construction as
a purely legal one. Markman II, 517 U.S. at 378-84.
Despite this seemingly clear guidance from the Su-
preme Court, we reiterated in Cybor that our court will
treat all claim construction determinations as pure ques-
tions of law, reviewable with zero deference. 138 F.3d at
1455-56. That decision was ill considered thirteen years
ago and has not proven “beneficial” to patent jurispru-
dence “in the long run.” See id. at 1463 (Plager, J., con-
3 RETRACTABLE TECH v. BECTON DICKINSON
curring) (“Whether this approach to patent litigation will
in the long run prove beneficial remains to be seen.”).
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 con-
duct 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 con-
sideration 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 posi-
tioned’ than the appellate court to decide the issue in
question . . . .” Salve Regina College v. Russell, 499 U.S.
225, 233 (1991) (quoting Miller v. Fenton, 474 U.S. 104,
114 (1985)). See also First Options of Chicago, Inc. v.
Kaplan, 514 U.S. 938, 948 (1995) (“The reviewing attitude
that a court of appeals takes toward a district court
decision should depend upon ‘the respective institutional
advantages of trial and appellate courts . . . .’ ” (quoting
Salve Regina College, 499 U.S. at 233)).
The claim construction on which the resolution of this
case turns was vetted by not just one trial judge, but two.
The claim term at issue is a syringe’s “body.” Becton
Dickinson argues that the term “body” should be limited
to a one-piece body; Retractable Technologies argues that
the construction should allow for a multiple-piece body.
RETRACTABLE TECH v. BECTON DICKINSON 4
Before reaching this court, the construction of that term
had been debated by multiple lawyers and had been
considered by two district judges. In a prior case involv-
ing some of the patents in suit here, Judge Leonard Davis
of the Eastern District of Texas construed the term “body”
to allow for multiple pieces. Retractable Techs., Inc. v.
New Medical Tech., Inc., No. 4:02-cv-34, Claim Constr.
Order at 8-9 (ECF No. 110) (E.D. Tex. Mar. 8, 2004).
Judge Davis had the benefit of a live claim construction
hearing and extensive briefing from the parties before he
construed the claim term. Judge David Folsom, also of
the Eastern District of Texas, presided in this case.
Judge Folsom again conducted a live claim construction
hearing after briefing from the parties. Judge Folsom
ultimately agreed with Judge Davis’s construction of the
term “body” in the prior case and applied it here. Re-
tractable Techs., Inc. v. Becton Dickinson & Co., No. 2:07-
cv-250, Claim Constr. Order at 6 (ECF No. 122) (E.D. Tex.
Jan. 20, 2009). The parties proceeded to trial on that
claim construction. The jury found that both of Becton
Dickinson’s accused syringes infringed the asserted
claims. When the panel reversed Judge Folsom’s claim
construction, it upended the jury verdict and set aside the
product of years of litigation before two judicial officers.
In other words, the decision here did not promote the
consistency and uniformity in patent law that Cybor was
intended to foster; the decision here accomplished the
opposite.
Unlike Judge Moore, I do not criticize the panel ma-
jority for its legal analysis. The majority adhered to the
broad principles of claim construction set forth in Phillips
v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), and
reached a different conclusion than the trial judge. Be-
cause Cybor prohibits deference to lower court determina-
tions regarding claim construction, the majority had no
5 RETRACTABLE TECH v. BECTON DICKINSON
reason to question its right to reach an entirely independ-
ent decision on the construction of this critical claim term.
Indeed, but for my belief that Cybor was wrongly decided,
I would not urge en banc in this case even if I would have
applied Phillips differently than the majority. The fact,
however, that the panel members could not agree on the
proper claim construction in this case, despite careful
consideration of their respective obligations under Phil-
lips, underscores the complicated and fact-intensive
nature of claim construction and the need to rethink our
approach to it.
In the majority opinion, Judge Lourie writes:
There is a fine line between construing the
claims in light of the specification and im-
properly importing a limitation from the
specification into the claims. In reviewing
the intrinsic record to construe the claims,
we strive to capture the scope of the actual
invention, rather than strictly limit the
scope of claims to disclosed embodiments
or allow the claim language to become di-
vorced from what the specification conveys
is the invention.
Retractable Techs., Inc. v. Becton, Dickinson & Co., No.
2010-1402, slip op. at 17 (Fed. Cir. Jul. 8, 2011) (citations
omitted). An exercise that requires review of often exten-
sive 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.
Where, as here, there is fair debate about the scope of the
RETRACTABLE TECH v. BECTON DICKINSON 6
invention after application of Phillips’s principles, we
should defer to reasoned district court choices. Reason-
able minds can—and do—differ over the correct interpre-
tation of the term “body” as used in the patent in suit.
These are not the circumstances under which we should
be reversing carefully reasoned claim constructions and
putting aside years of litigation in the process.
Five active judges of this court have already ex-
pressed a desire to revisit Cybor. See Amgen Inc. v.
Hoechst Marion Rousell, Inc., 469 F.3d 1039 (Fed. Cir.
2006). I join in that desire. The author of the majority
opinion in this case has said that “we ought to lean to-
ward affirmance of a claim construction in the absence of
a strong conviction of error.” Phillips, 415 F.3d at 1330
(Fed. Cir. 2005) (Lourie, J., dissenting). I agree.
It is time we stop talking about whether we should re-
consider the standard of review we employ when review-
ing claim construction decisions from district courts; it is
time we do so.