En banc review denied in Becton case

Note the dissents.

From the dissent of Judge Moore, joined by CJ Rader:

see also Wegner, H.C., Arlington Indus. v. Bridgeport Fittings: The 20 Year Claim Construction Debate, IP Frontline, http://www.ipfrontline.com/depts/printabletemplate.aspx?id=24829 (“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. The familiar mantra is “there is a fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims.” Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011). This case is a good vehicle to address two important claim construction principles: the role of the specification in construing the claims and whether deference should be given to the district court in the claim construction process. Accordingly, I dissent from the denial of rehearing en banc.

Of patentee as lexicographer:

However, the specification cannot be used to narrow a claim term – to deviate from the plain and ordinary meaning – unless the inventor acted as his own lexicographer or intentionally disclaimed or disavowed claim scope. Id. at 1316; see also Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002) (“[C]laim terms take on their ordinary and accustomed meanings unless the patentee demon-strated an intent to deviate . . . [via] expressions of mani-fest exclusion or restriction, representing a clear disavowal of claim scope.”); CCS Fitness, Inc. v. Bruns-wick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“[T]he claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term . . . .”).

Judges are not lexicographers:

If the inventor has chosen a broad claim term that is not supported by his specification, the pat-ent’s validity may be in jeopardy. But we cannot, as the court does in Retractable, redefine a claim term to match our view of the scope of the invention as disclosed in the specification. We are not the lexicographers.

The concept of an intra-circuit split:

If Retractable were an isolated case, en banc review might not be warranted, but it is not. Compare, e.g., Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246 (Fed. Cir. 2011) and Laryngeal Mask Co. Ltd. v. Ambu, 618 F.3d 1367 (Fed. Cir. 2010) (declining to limit claims to what is thought to be the invention contem-plated by the inventors) with Retractable and Fifth Generation Computer Corp. v. Int’l Bus. Mach. Corp., 416 F. App’x 74 (Fed. Cir. 2011) (limiting claims to what is determined to be the actual invention). Retractable illustrates a fundamental split within the court as to the meaning of Phillips and Markman as well as the proper approach to claim interpretation. I would grant en banc review of Retractable to resolve the clear intra-circuit split on the claim construction process.

Judge O'Malley said:

It is time to revisit and reverse our decision in Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc). Because this case presents an appropriate vehicle to do so, and the court’s decision necessarily would change if even minimal deference were afforded to the trial judge’s claim construction, I dissent from the refusal to hear this case en banc.

AND, of unthinking rulings:

While no one would urge deference to cryptic, unthinking rulings born of little or no real inquiry, where, as here, the trial court has thoroughly vetted all relevant aspects of the claim constructions at issue, “careful consideration of the institutional advantages of the district court would counsel deference.” Id. at 1478.