No more Intentional Infringement? A Question for the House…

November 2, 2011

In the dissent from the denial of rehearing en banc in Retractable  Technologies, Inc. v. Beckton, Dickson , October 31, 2011 (see my October 31 post and link to the order), Judge Moore wrote, joined by Chief Judge Rader, the following:

“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), (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, (“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.”

In a separate dissent, Judge O’Malley did not criticize the methodoloy but did criticize the Cybor (de novo) standard of review.  Judge O’Malley underscored that the lack of deference to the factual context of claim construction produced such inconsistent results that there was a split of 2-1 in the panel decision.

Here is the question for the house.  Please comment.  If three Federal Circuit Judges say that claim construction now is so unpredictable as require en banc rearticulation of how to do claim construction (whether due to a split or splits among the panels, or the standard of review under Cybor) + if the panel itself split two to one on this one case + the panel’s 2 to 1 majority, reverses the constructions used by two district judges, THEN how can there be any intentional infringement of a patent?

How can we have a law of willful infringement (short of copying)?  How can we have a law of inducement?  How can we have any intent based infringement if the law of claim construction is in such a mess that multiple experienced judges disagree on the result, methodology and standard of review that should be applied?

How can litigants be found to intentionally infringe when the property right itself is not subject to definition short of a final appellate opinion?

Should defendants move for summary judgment on inducement claims? On willfulness? On the basis that there cannot be a penalty for violation beyond those available for direct infringement, when no one can predict prior to the court of appeals’ decision what will be a violation?

What do you think?

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2 Comments Leave a Comment

  • 1. PatentGuy  |  November 2, 2011 at 9:56 pm

    1. You’re basically right.

    2. But remember that the CAFC, by design hears only the most difficult cases. (Although, some interpret the rate of increase in Rule 36s as indicating that they hear too many not-close cases). In general, though, something like 90% of suits settle, and many district court cases are not appealed. To some extent – which is not very large – the CAFC struggles with these cases because they are *difficult*.

    3. Interesting question: why didn’t Newman, lover of patents and dissents, not join sometimes-allies Rader and Moore? Because they attacked the doctrine that patents should be interpreted to preserve their validity.

  • 2. patentmath  |  November 2, 2011 at 10:13 pm

    Thanks for the thoughtful comments. I hope more people comment.

    Just consider for the sake of argument only, solely for discussion purposes, nothing more:

    1. Claim construction, the very bounds of the invention, is a mess by admission of at least three judges on the Federal Circuit. In the Reflective Technologies, Inc. case, 5 experienced patent judges did not agree with the split panel’s majority result: Two experienced trial judges, the Chief Judge of the Federal Circuit, a former district court judge now on the Federal Circuit, a former professor and distinguished author of artcles on patents practice now a Federal Circuit judge.

    2. Robert Bosch LLC, no presumptions in favor of injunctive relief, on irreparable conduct or otherwise, no short cuts at all: Injunctions must be proven from scratch.

    3. Damages in reasonable royalty, a fictional construct, now the make-believe damages are to be apportioned to the contribution of a patent regardless of how difficult it is to figure out what a patent might contribute to a device?

    So there is not clear law on interpreting the scope of the patents, there is no presumption or short-cut in favor of an injunction, and damages narrowly construed?

    Question: Too much? Too far? I don’t know…..

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Dave Healey

Dave Healey

Dave's Bio

I am a principal in the Houston office of Fish & Richardson, a leading global intellectual property law firm. I have been practicing law for twenty-five years, specializing in patent lawsuits. During that time, I have watched IP become more important than ever as a business asset. And I’ve gained some perspective on the best way to protect and exploit IP assets. I hope my ideas offer a unique perspective, and help you create your own practical solutions.

The ideas and opinions on this blog are my own as of the time of posting, have not been vetted with the firm or its clients, and do not represent the positions of the firm, its other lawyers, or any of its clients. None of these posts is intended as legal advice and if you need a lawyer, you should hire one. If you make a comment on the post, the comment will become public and beyond your control to change or remove it.

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