The oral argument from Contech Stormwater Solutions v. Baysaver Technologies included an interesting discussion regarding the proper construction of the term “siphon.” The debate focused on whether the term requires an intermediate elevation – a high point between the fluid source and the drain output. Counsel for patentee argued that the ordinary meaning of the term can include this “up and over” structural arrangement, but does not require it. The district court had thought otherwise.

In a bit of Friday afternoon silliness, Steve Nipper and I debated the issue a bit. We decided that the old college mainstay – the beer bong – highlights the issue perfectly. For those that don’t know, the classic beer bong is an extremely simple device -  a funnel attached to a length of hose. Beer goes in the funnel, travels through the hose and exits into an awaiting mouth. The beer travels straight down – there is no ‘intermediate elevation.’

So is a beer bong a siphon?

Counsel for patentee would argue that it is:

“[a] ’siphon’ in its ordinary meaning is the pulling of water as a result of negative pressure that is created by the falling of a column of water…there is nothing in the patent to limit the use of the term ’siphon’ to an intermediate elevation.”

Steve and I decided that it’s just a simple gravity drain, not a siphon. The classic two-beer-hat, which clearly includes an intermediate elevation, would certainly qualify, though.

Unfortunately, despite the lengthy debate during oral argument, the opinion doesn’t address the issue so we don’t know the court’s final thoughts on the meaning of the term.

Both the House (H.R. 1260) and Senate (S.515) versions of the Patent Reform Act of 2009 include a provision that would extend the jurisdiction of the Court of Appeals for the Federal Circuit to include claim construction orders issued by district courts. Under the Act, a litigant could initiate an interlocutory appeal to the Federal Circuit if the district court approves a request for the appeal within 10 days of the Markman ruling.

While not the most controversial, this has to be one of the Act’s most extreme provisions. The substance of the proposal is quite drastic – it effectively takes the Federal Circuit’s current discretion over such interlocutory appeals and hands it to the district courts.

The potential effect of such a change is equally as drastic. Claim construction is a linchpin issue in all patent infringement suits that, by definition, always impacts the infringement analysis. As such, litigants would likely be ready and willing to use the Act to seek interlocutory appeals of claim construction rulings, and district court judges would likely be willing to grant the required permission to file such appeals. The entire litigation process would be halted – likely for a year or more – while the litigants, judge, and the public await the results of the Markman appeal. Other substantive issues, only appealable after entry of a final judgment, would likely still be presented to the Federal Circuit in a second appeal.

The end result would be a whole new patent backlog. The Federal Circuit would be buried in claim construction appeals, effectively blocked from handling other worthy patent issues in an efficient manner. It’s hard to imagine this “reform” as helping our patent laws. The creation of a short circuit claim construction appeal would cause other areas of the law to suffer as the new patent backlog grows and robs the court of precious time. Absent a concurrent expansion of the court or even the creation of a specialist “claim construction division,” this reform measure must fail simply on grounds that it hinders the very judicial efficiency its supporters purport to be serving.

While some might argue that this new backlog is a just dessert for the messy claim construction environment the court has developed, it’s clearly a short-sighted, duct-tape solution that shows a lack of concern for the patent law as a whole. The “problem” of claim construction, and the patent law as a whole, would be better served by legislatively requiring a degree of deference to district court judges during normal appellate review of claim construction issues.

Claim construction is one of the most challenging tasks in the patent law game. We all struggle with it – prosecutors, examiners, litigators, judges. Lack of clarity and loyalty in the law aside, the task is a difficult one because, no matter how clear the meaning of a term is to you, it might have an entirely different meaning to someone else. This is often true irrespective of what the rest of the patent says about the meaning of the term, including the claim language, the specification, and the prosecution history.

Nothing illustrates this point better than a recent exchange between Judge Rader and counsel for the patent owner in Boston Scientific v. Cordis. Judge Rader asked about the meaning of a simple claim term – “implantable” – and the resulting exchange shows that a legal determination of the meaning of the term is anything but simple. “Implantable” is one of those terms you think you understand, until you really think about it…which is exactly what Judge Rader did. Ultimately, the meaning of the term was not dispositive in the case (it isn’t even mentioned in the opinion), but the oral argument should serve as a reminder to all of us about the complexities of claim language.

A transcript of the exchange appears below…but listening to the audio really underscores the point. You can download the mp3 from the court’s website (search for case number 08-1073) or listen to it on the PTP audio notes page for the case.

Judge Rader: “How can you have an implantable device before it’s sterilized? You wouldn’t implant something that’s going to kill a patient.”

Counsel (for patentee): “‘Implantable’ here, I think, clearly refers to the character, to the geometry, to the structure of the device…”

Judge Rader: “‘Implantable’ means capable of being implanted. I don’t think there’s any problem with that interpretation…You’re not going to implant an unsterile device, are you? An incomplete device….”

Counsel: “I can make two brief points on that Your Honor….”

Judge Rader (interrupting): “Get to my question: Implantable or not before it’s sterilized?”

Counsel: “It is physically implantable.”

Judge Rader: “How can it be? You’re abdicating implantation of a non-sterilized product.”

Counsel: “I’m certainly not abdicating anything. There’s no question that when a device like this is used in people it should be and must be sterilized.”

Judge Rader: “And can it be implanted before that?”

Counsel: “Yes it can be.”

Judge Lourie: “You mean physically, but it’s not medically ready.”

Counsel: “That would be correct, Your Honor.”

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).