A call from below for deferential review of claim construction rulings
The recent opinion of the Court of Appeals for the Federal Circuit in Medegen v. ICU Medical has all the familiar trappings of a standard claim construction appeal: an indication that claim construction is a question of law that is reviewed de novo on appeal, a recitation of the ‘bedrock principle’ that the claims define the invention, and a reminder that it is improper to read limitations from the specification into the claims.
You don’t have to look far, though, to get a sense that this claim construction opinion is a bit different than most. While the panel majority opinion is mostly conventional for a claim construction review (save the footnote that scolds counsel fot the “inaccurate assertions in their briefs on appeal“), the dissenting opinion filed by Chief District Judge Walker makes Medegen stand out.
First of all, Chief Judge Walker is a district court judge. He sat on the Medegen panel by designation. I haven’t done the research to verify it, but my guess is that designated district court judges rarely file dissenting opinions when sitting on appellate panels.
But it’s not the mere presence of his dissenting opinion that makes Medegen memorable. It’s the message. Chief District Judge Walker took the opportunity to combine his temporary appellate duties with insight from his practical trial level experience and penned an opinion that, under a very thin veil, calls for deferential appellate review of claim construction. To wit:
“As a jurist more accustomed to working on the front lines of patent litigation than reviewing decisions from above, it is my experience that claim construction — determining how one of ordinary skill in the art would understand the patent at the time of invention — often requires making fact-like determinations not well suited to appellate review.”
(Medegen v. ICU Medical, dissenting opinion of Chief District Judge Walker)
While he didn’t (and couldn’t) make an outright call for deferential review, the thin veil offered by the “my experience” language doesn’t mask the message at all: district court judges deserve deference when the Federal Circuit reviews their patent claim construction rulings.
Chief Judge Walker’s dissenting opinion was likely well-received by his fellow panelist Judge Rader, who, almost exactly two years earlier, filed very similar language in his own dissenting opinion (dissenting from the denial of the petition for rehearing en banc in Amgen v. Hoechst Marion Roussel, which challenged the de novo standard of review for claim construction established in Cybor v. FAS Techs). In his Amgen dissent, Judge Rader wrote:
“…I urge this court to afford deference to the factual components of the lower court’s claim construction. Under current law, this court affords no deference whatsoever to a district court’s claim construction….As is often the case, the district court was better positioned than this court to reach the propoer construction. After all the district court has more tools, more time, and more direct contact with the factual evidence that this appellate body.”
(Amgen v. Hoechst Marion Roussel, Rader, J., dissenting).
In Amgen, Judge Rader even joined Chief Judge Michel to say “…I believe the time has come for us to re-examine Cybor’s no deference rule. I hope that we will do so at our next opportunity, and I expect we will.” (Amgen v. Hoechst Marion Roussel, Michel, C.J. and Rader, J., dissenting).
Perhaps the next time a proper challenge to Cybor is presented, Judge Rader will point to Chief Judge Walker’s Medegen dissent as evidence that district court judges actually want deferential review.
It’s interesting to note that Judge Dyk, the last member of the Medegen panel, has made his views on the no deference rule less than clear. In Amgen, he indicated a willingness to “reconsider limited aspects of the Cybor decision,” but will only do so “[i]n an appropriate case.” (Amgen v. Hoechst Marion Roussel, Gajarsa, J. and Dyk, J., concurring).
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