The accused infringers, AWH Corp., et al., have petitioned for review of one part of the en banc ruling on claim construction in the Phillips case. (I hardly can write a sentence without using Latin). Now that all the fanfare over the Federal Circuit’s consideration of that case, and over the 33 amici that weighed in on it, has died down – we see a petition for certiorari devoted to the single issue that the en banc Court did not decide. So, we have case with no final judgment (just reversal of a non-infringement ruling based on a stipulation), that is taken up by an accused infringer (instead of a patentee whose rights were lessened by “interpretation”), on an issue that was not decided by the Circuit Court. I’m deeming this petition to have the chances of a one-hander from outside the three-point line.

Our Supreme Court tends to hear constitutional issues, or cases arising therefrom. Here, the petitioners argue, as have many before them, that their case “illustrates perfectly what has gone wrong in the Federal Circuit.” AWH makes no argument that the Federal Circuit mis-construed Phillips’ patent claims, only that the Circuit should be “deferential to” the claim construction rulings made in the District Courts. Deferential review is proper, AWH argues, because claim construction is a mixed question of fact and law, or is a legal conclusion based on disputed facts.

The petition, in my view, asks that the Markman case be reconsidered (which, in my view, is not likely to happen). The holding in Markman that claim interpretation is a legal issue forms the basis for the Federal Circuit to review those interpretations as a matter of law, using the de novo standard of review. It seems that AWH has asked the Supreme Court to revisit this necessary premise. If I recall correctly (which can be challenging as I age), the Markman cases considered the argument that claim interpretation can present a mix of fact and law – and they held, no matter, patent claims are interpreted as a matter of law. From that, I presume that the AWH petition prays for a change in settled law.

Also, the precedent that AWH relies upon are mostly non-patent cases, with differing interests at stake. Every cert. petitioner, who loses in the Federal Circuit, cites to Anderson v. Bessemer City. That was a civil rights, Title VII case, which tend to get a different level of scrutiny from the Court than nuances of patent law. AWH relies too on the Ornelas case, involving search and seizure, again, a constitutional claim. It cites Pierce v. Underwood, which asked if the same, or a lesser, standard of review applies to a district court’s interpretation of state law questions. The analysis in those cases starts from more compelling interests than the standard of “deference” that was passed on without any ruling in Phillips. Even Markman was a contest over the 7th Amendment right to a jury.

When I first read the order specifying the issues for en banc consideration in the Phillips case, it seemed to augur that auspicious changes in patent claim interpretation would be forthcoming. Then, after the 33 amici and the litigants and many commentators spoke at length about those seven questions, the Federal Circuit’s decision was more a repackaging of precedent than anything remarkable. The present petition for certiorari by AWH also recasts arguments about the settled law of claim interpretation, which for the present is likely to remain unchanged.

Today’s post comes from Guest Barista C. Lee Thomason, a registered patent attorney and IP litigator at Frost Brown Todd’s Louisville office.

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