It's the end of the Supreme Court's term, and there were no cert grants in patent cases. A one-year reprieve, maybe, but the high court asked for the views of the Solicitor General in three cases and I'd like to talk about one of them, Retractable Technologies Inc. v. Becton, Dickinson & Co.

The case challenges the Federal Circuit on claim constructions in two ways. The one that has caught the patent community's attention is Retractable's challenge to Cybor de novo appellate review. No one is pleased with, essentially, the incompleteness of a district court decision, with the likelihood the Federal Circuit will overturn at least part of the claim construction judgments remaining high.

I actually think the second question presented is more important, as it points directly at a conflict at the court: At what point can interpretation of a claim term be resolved by the plain language as opposed to consulting the specification? At the very least, two members of the Federal Circuit bench, Randall Rader and Alan Lourie, are on opposite sides of this issue.

This was supposed to have been resolved in 2005 by Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc), but it's clear it was not. Lourie dissented in that case.

In a dissent to the denial of en banc rehearing in the instant case, another Federal Circuit jurist, Kimberly Moore, gave Retractable a reason to tie the two questions together. Moore likened the panel majority's analysis to a written description review, “which is an entirely factual analysis.” More said that “If the majority in Retractable is correct that as part of claim construction, we must determine the nature of the invention described in the specification and ensure that the scope of the claims are limited only to the actual invention disclosed, we must acknowledge the factual underpinnings of this analysis and there should be deference.”

Here's hoping the solicitor general pays attention to that text. These issues need to be resolved.