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A Case of Missed Opportunities: The Denial of En Banc Rehearing of Retractable Technologies

by Orlando Lopez

When the CAFC denied en banc rehearing of Retractable Technologies v. Becton Dickinson,
the Court missed both the opportunity to make claim construction (claim interpretation) more certain and also whether to consider if some deference should be given to the claim interpretation provided by the trial judge.  The batting average of trial judges when it comes to claim construction, in terms of the number of claim constructions reversed by the CAFC, is about .500, which is good for baseball players, but causes consternation to trial judges (even though it generates work for trial attorneys).  The first question that was raised by the decision in Retractable Technologies is whether a claim interpretation based on the clear language of the claim where there are no ambiguities, that does not meet  the written description requirement or is not enabled, should be allowed.  In other words, should the inventor be allowed to claim that to which the inventor is not entitled?  The panel in Retractable Technologies did not think so; however, in the Phillips en banc decision, the majority stated that validity and claim construction are separate unless the language of the claim is ambiguous or capable of two interpretations.  An en banc rehearing for Retractable Technologies would have provided an opportunity to revisit that element of claim construction and provide further guidance to trial judges.

The second question raised by the decision in Retractable Technologies, is whether some degree of deference should be given to the trial judge in regard to the claim construction.  Claim construction is a “mongrel” task – it includes both elements of law and of fact (a determination of obviousness falls in the
same category).  In claim construction however, as was stated in Phillips, the intrinsic evidence, specification, prosecution history and the claims themselves, are more important than extrinsic evidence, such as dictionaries and experts.  Ever since Cybor v.Fas, the Federal Circuit has reviewed claim construction de novo.  The question that has been posed by many litigators is whether some deference
should also be given to the trial judge in regard to claim construction.  While an en banc rehearing for Retractable Technologies would have provided an opportunity to revisit the standard for review of claim construction, both of these issues together would have generated a forest worth of amicus briefs.

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