Retractable Technologies, Inc. v. Becton, Dickinson & Co.

PLAGER, Circuit Judge,

concurring.

I join the thorough and well-reasoned opinion of Judge Lourie. I write because, in the welter of all the claims in this case (both patent and litigation), the multiple patents at issue, the number of issues the parties have chosen to argue about (including the important claim construction issue), it would be easy to lose sight of a fundamental point so well made in the majority opinion: “In reviewing the intrinsic record to construe the claims, we strive to capture the scope of the actual invention, rather than ... allow the claim language to become divorced from what the specification conveys is the invention.” Majority Op. at 1305. Judge Lourie articulated that idea more fully in his excellent eoncurring/dissenting opinion in Arlington Industries, Inc. v. Bridgeport Fittings, Inc., where he said: “[T]he basic mandate is for claims to be interpreted in light of the specification of which they are a part because the specification describes what the inventors invented. The specification is the heart of the patent. In colloquial terms, ‘you should get what you disclose.’ ” 632 F.3d 1246, 1252 (Fed.Cir.2011) (citations omitted).

However much desired by the claim drafters, who want claims that serve as business weapons and litigation threats (see Arlington Industries at 1248; Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1342 (Fed.Cir.2010)), the claims cannot go beyond the actual invention that entitles the inventor to a patent. For that we look to the written description.1 See 35 U.S.C. § 112. I have written elsewhere about the curse of indefinite and ambiguous claims, divorced from the written description, that we regularly are asked to construe, and the need for more stringent rules to control the curse. See Enzo Bio-chem, Inc. v. Applera Corp., 605 F.3d 1347, 1348-1349 (Fed.Cir.2010) reh’g denied (Plager, dissenting).

I understand how a perfectly competent trial judge can be persuaded by the siren song of litigation counsel to give the jury wide scope regarding what is claimed. But it is a song to which courts should turn a deaf ear if patents are to serve the purposes for which they exist, including the obligation to make full disclosure of what is actually invented, and to claim that and nothing more.

. The term "specification” is sometimes used in briefs and opinions when, depending on the context, the narrower term “written description” may be appropriate. See 35 U.S.C. § 112 (“The specification shall contain a written description of the invention, and ... shall conclude with one or more claims.”).