The Federal Circuit’s recent decision in Hill-Rom Services, Inc. v. Stryker Corp. shows the continued existence of diverging claim construction philosophies at the Court. (The Hill-Rom opinion is nicely summarized here by my colleagues, Craig Countryman and Joanna Fuller.) The Court tried to harmonize its then-competing claim construction approaches in the 2005 en banc Phillips decision, but many believe it was unsuccessful. And, although the Court’s composition has evolved significantly in recent years, as Hill-Rom reveals, continued uncertainty remains.
“Proceduralist” v. “Holistic”
By the early 2000s, most Federal Circuit’s claim construction decisions could be categorized as either proceduralist or holistic. “Proceduralist” constructions are those where the “primary focus [is] on ‘ordinary meaning’ of claim language; [finding the] specification only useful if it provides a clear definition . . . .’” Polk Wagner & Lee Petheridge, Did Phillips Change Anything? Empirical Analysis of the Federal Circuits Claim Construction Jurisprudence (Oct. 27, 2006).
The “holistic” approach, on the other hand, is characterized by a “primary focus on ‘context’ of claim language, via inferences from [the] specification; [and] prosecution history; [with] little interest in dictionaries, [or] ‘plain meaning.’” Id.
Phillips v. AWH Corp.
In 2004, the Federal Circuit “whipp[ed] the bar into a frenzy of expectation” by agreeing to hear en banc the Phillips v. AWH Corp. case, in which the Court would decide, once and for all, whether “the public notice function of patent claims better served by referencing . . . dictionaries and similar sources to interpret a claim term or by looking primarily to the patentee’s use of the term in the specification?” Phillips v. AWH Corp., 415 F.3d 1303, 1330 (Fed. Cir. 2005) (en banc) (Mayer, J., dissenting); Phillips, 376 F.3d 1382, 1383 (Fed. Cir. 2004) (order granting rehearing en banc).
Rejecting the proceduralist, plain meaning-centric approach from Texas Digital Sys. v. Telegenix, Inc., the Court in Phillips concluded that intrinsic evidence—specifically the claim language, specification, and prosecution history—is the most reliable evidence to which courts should look in construing claims; extrinsic evidence, including dictionaries, on the other hand, is less reliable and should thus only be used for limited purposes. 308 F.3d 1193, 1202 (Fed. Cir. 2002).
Nevertheless, the Court’s en banc opinion did not squarely resolve the uncertainty in the Court’s claim construction jurisprudence, as even the Court’s majority conceded: “[W]e recognize that there is no magic formula or catechism for conducting claim construction.” Phillips, 415 at 1324. Going further, Judge Mayer remarked that the Court had “sa[id] nothing new, but merely restate[d] what has become the practice over the last ten years—that we will decide cases according to whatever mode or method results in the outcome we desire . . . .” Id. at 1330 (Mayer J., dissenting).
Despite Phillips’ ambiguity, its rejection of the proceduralist approach in Texas Digital suggested the possible ascendancy of the holistic approach. Phillips emphasized that claim terms must be read in view of the specification of which they are a part, and it explained that “the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” Id. at 1315 (quoting Vitronics). Thus, Federal Circuit-watchers reasonably anticipated some ascendancy of the holistic approach.
That was not to be. As recounted in an article I co-authored in 2007, the cases immediately post-Phillips did not reveal any greater consistency or harmony. See Nagendra Setty & Noah C. Graubart, Developments in Federal Circuit Claim Construction Jurisprudence (Law Seminars Int’l Apr. 27, 2007). “[W]ith the exception of a small time window between the Phillips en banc oral argument (February 2005) and the issuance of the Phillips opinion (July 2005), the percentage of procedural versus holistic opinions remain[ed] virtually unchanged.” Id. According to a 2006 study by Professor R. Polk Wagner, by shortly after Phillips issued the number of proceduralist versus holistic opinions had returned essentially to its pre-Philips level.
See R. Polk Wagner & Lee Petheridge, Did Phillips Change Anything? Empirical Analysis of the Federal Circuit’s Claim Construction Jurisprudence at 24 (Oct. 27, 2006).
Put simply, shortly post-Phillips, little had changed in terms of the prevalence of the two diverging claim construction philosophies at the Federal Circuit.
Hill-Rom v. Stryker
Nine years after Phillips, with seven new active judges since confirmed to the Federal Circuit bench, has the situation changed? Has the Court harmonized the proceduralist and holistic approaches to claim construction? The Court’s recent decision in Hill-Rom suggests not.
As my colleagues explained here, the Court reversed the district court’s grant of summary judgment based on a relatively narrow construction. In so doing, the majority articulated a particularly proceduralist view, emphasizing: “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Slip op. at 4.
According to the majority, nothing in the specification met these “exacting” standards:
There are no words of manifest exclusion or restriction. The patents-in-suit do not describe the invention as limited to a wired datalink. There is no disclosure that, for example, the present invention ‘is,’ ‘includes,’ or ‘refers to’ a wired datalink and there is nothing expressing the advantages, importance, or essentiality of using a wired as opposed to wireless datalink.”
Id. at 5-6. The majority was not swayed by the argument that all described embodiments showed a wired datalink, because “[t]he absence of an embodiment teaching a wireless receiver does not prevent the claimed datalink from being given its plain and ordinary meaning at the relevant time.” Id. at 8.
The dissent saw things very differently. Judge Reyna did not cite any patentee disavowal of claim scope, nor did he expressly conclude that the patentee acted as his own lexicographer. Rather, reviewing the totality of the intrinsic record and reading the claims in light of the specification, Judge Reyna concluded that the claims could not cover a wireless datalink:
Put simply, everything within the intrinsic record identifies the claimed “datalink” as a physical structure. There is nothing in the claims, written description, or file history that indicates the claimed “datalink” embraced wireless communications.
Id. at 3 (Reyna, J., dissenting).
These divergent approaches thus confirm that competing strains of claim construction jurisprudence are alive and well at the Federal Circuit. Unfortunately for litigants and practitioners alike, until the Federal Circuit—or the U.S. Supreme Court—pronounces a uniform approach to claim construction, the likely result will be continued uncertainty, increased litigation costs, and high reversal rates.
Consequently, until the Federal Circuit decides to “whip the bar into a[nother] frenzy of expectation” by agreeing to revisit claim construction en banc, parties and their counsel should remain acutely aware of the various strains of case law and frame their arguments accordingly.