Retractable Technologies Inc. v. Becton

• Decision Date: 31 October 2011
• Docket Number: No. 2010–1402.,2010–1402.
• Citation: 659 F.3d 1369,100 U.S.P.Q.2d 1714
• Parties: RETRACTABLE TECHNOLOGIES, INC. and Thomas J. Shaw, Plaintiffs–Appellees,v.BECTON, DICKINSON AND COMPANY, Defendant–Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

659 F.3d 1369

100 U.S.P.Q.2d 1714

RETRACTABLE TECHNOLOGIES, INC. and Thomas J. Shaw, Plaintiffs–Appellees,

v.BECTON, DICKINSON AND COMPANY, Defendant–Appellant.

No. 2010–1402.

United States Court of Appeals, Federal Circuit.

Oct. 31, 2011.

OPINION TEXT STARTS HEREAppeal from the United States District Court for the Eastern District of Texas in case no. 07–CV–0250, Judge David J. Folsom.Roy W. Hardin, Locke, Lord, Bissell & Liddell, LLP, of Dallas, TX, 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, MA, argued for defendant-appellant. With him on the brief were Lisa J. Pirozzolo; and William G. McElwain and Heath A. Brooks, of Washington, DC.Before RADER, Chief Judge, NEWMAN, PLAGER ^*, LOURIE, BRYSON, LINN, DYK, PROST, MOORE, O'MALLEY, and REYNA, Circuit Judges.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.

ON PETITION FOR REHEARING EN BANC

PER CURIAM.

ORDER

A petition for rehearing en banc was filed by Plaintiffs–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 rehearing 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.

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 difference 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. Commentators have observed that claim construction appeals 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/ printable template. 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 mantra 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.” Retractable 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 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 inventor claims extend beyond what he has invented or disclosed 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 demonstrated an intent to deviate ... [via] expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.”); CCS Fitness, Inc. v. Brunswick 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 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 patent'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 reasoned that since the dependent claims restricted the angles at which the baffles should be placed, the independent 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 lexicography. Baffles were to be given their plain and ordinary meaning to one of skill in the art and the limitation 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 specification, 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 independent 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...