Retractable Technologies (RTI) v. Becton, Dickinson and Company (BD) (CAFC 2010-1402) precedential; Judges Rader (dissent-in-part), Plager and Lourie (author)

5,632,733; 6,090,077; and 7,351,224, claiming retractable syringes, were asserted. BD was found infringing at trial, and the patents not invalid.

The contention leading to caprice went to construing the claim term "body," referring to a syringe body.

BD argues that the district court erred when it concluded that the claimed "body" is not limited to a onepiece structure. BD argues that the specifications describe "the invention" as including a one-piece body while criticizing prior art syringes that contain a two-piece body. BD also argues that claim differentiation does not apply in light of the written description's limiting statements.

RTI responds that the ordinary meaning of the term "body" is not limited to a one-piece body. RTI points to the different usage of the term "body" in the claims, where some claims recite a "body" and other claims recite a "one piece body."

We agree with BD that the claimed "body" is limited to a one-piece structure in light of the specifications. While the patents contain an independent claim that recites a "body," '224 Patent, claim 25, with a dependent claim that limits the "body" to a "one-piece body," '224 Patent, claim 31, none of the claims expressly recite a body that contains multiple pieces.

Thus, while the claims can be read to imply that a "body" is not limited to a one-piece structure, that implication is not a strong one.

It is axiomatic that the claim construction process entails more than viewing the claim language in isolation. Claim language must always be read in view of the written description, Phillips, 415 F.3d at 1315, and any presumption created by the doctrine of claim differentiation "will be overcome by a contrary construction dictated by the written description or prosecution history," Seachange Int'l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005). Thus, it is necessary to review the specifications to determine if the proper construction of the term "body" is limited to a one-piece body.

The specifications indicate that the claimed "body" refers to a one-piece body.

This legally erroneous claim construction led to reversal of the infringement finding.

Judge Plager brown-nosed in concurrence.

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 17. Judge Lourie articulated that idea more fully in his excellent concurring/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).

Lourie pushed the anti-enforcement bias of many on the CAFC bench into the spotlight.

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 Biochem, Inc. v. Applera Corp., 605 F.3d 1347, 1348-1349 (Fed. Cir. 2010) reh'g denied (Plager, dissenting).

¹The 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.").

Lourie's reference to § 112 went ¶ 1, but his gripe of "the curse of indefinite and ambiguous claims" goes to § 112 ¶ 2. Here we have an apparently addled judge who does not seem to comprehend patent law. But a significant case law conundrum is that the CAFC does not enforce the law of § 112 ¶ 2, instead preferring to curse a claim as indefinite only if it is "insolvably ambiguous." So Lourie wrongly points to § 112 ¶ 1.

Long-standing precedent is not "you should get what you disclose," but instead "you should get what you claim," as Chief Judge Rader pointed out in dissent.

In Phillips v. AWH Corp., this court recognized as "a bedrock principle of patent law" that the claims themselves, not the written description portion of the specification, define the patented invention. 415 F.3d 1303, 1312 (Fed. Cir. 2005). Claim language is to be given its ordinary and customary meaning, as understood by a person of ordinary skill in the art at the time of the invention. Id. at 1312-13. In this case, neither party contends that "body" has a special, technical meaning in the field of art, and thus claim construction requires "little more than the application of the widely accepted meaning of commonly understood words." Id. at 1314. The ordinary and customary meaning of "body" does not inherently contain a one-piece structural limitation. Moreover, neither the claim language nor the written description evinces intent by the patentee to limit the scope of "body" to one-piece bodies.

To the contrary, the language in the claims makes clear that "body" is not limited to a one-piece structure. In order for dependent claims 14 and 57 in the '224 patent to have claim scope different from independent claims 1 and 43, respectively, "body" cannot be limited to a one-piece structure.

Certainly, the claims do not stand alone and must be read in light of the specifications. Phillips, 415 F.3d at 1315. Nothing in the specifications, however, rebuts the strong presumption created by the claim language that "body" does not contain a one-piece structural limitation. The specifications do not reveal a special definition given by the inventor to the word "body." Nor do the specifications contain an intentional disclaimer or disavowal of claim scope by the inventor.

"[T]he fact that a patent asserts that an invention achieves several objectives does not require that each of the claims be construed as limited to structures that are capable of achieving all of the objectives." Phillips, 415 F.3d at 1327 (internal quotations omitted). Accordingly, the fact that a onepiece body would achieve one of the objectives of the patented invention does not mean that such a limitation should be read into every claim. This is particularly true given the fact that a one-piece barrel is explicitly required in some of the dependent claims in the '224 patent.

Conflicting precedents like this allow the courts considerable caprice, more easily allowing arbitrary decisions based on bias, as in this case.

Hal Wegner on this opinion: A "split panel manifests yet another reason as to why the Federal Circuit jurisprudence on claim construction fails to provide a predictable blueprint for the patent community to interpret the scope of claims."