Cybor De Novo Claim Construction Review

Harold C. Wegner
date: Tuesday, September 26, 2006

To date, none of the certiorari petitions that challenge the Cybor standard of de novo appellate claim construction review has been granted, perhaps in large measure because of the way petitions were drafted and the failure to properly raise the right question. (Neither does the currently pending suggestion for en banc rehearing at the Federal Circuit in the Amgen erythropoietin case raise the critical question in the appropriate context of an inter-circuit split or a violation of the Pullman-Standard proscription on special treatment of certain categories of documents.)

The patent as "documentary evidence" under FRCP 52(a): It is only a matter of time until a certiorari petition is filed which properly considers the split between the Federal Circuit and the regional circuits on applying the appropriate rule for review of documents:

Fact-finding of documentary evidence is always reviewable under the clear error standard of FRCP 52(a): "Findings of fact… based on … documentary evidence[ ] shall not be set aside unless clearly erroneous…" As per Anderson, "[t]hat the Rule goes on to emphasize the special deference to be paid credibility determinations does not alter its clear command: Rule 52(a) 'does not make exceptions or purport to exclude certain categories of factual findings from the obligation of a court of appeals to accept a district court's findings unless clearly erroneous.'" Anderson v. City of Bessemer City, 470 U.S. 564, 574 (1985)(quoting Pullman-Standard v. Swint, 456 U.S. 273, 287 (1982)).

Clearly, the patent claim is one of the more complex forms of documentary evidence that falls squarely within the rule: The "patent claim [is that] portion of the patent document that defines the scope of the patentee's rights[.]". Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). Interpretation of the patent claim is invariably one of the most fact-intensive inquiries a trial court can make that requires determining the meaning of terms to art-skilled worker years back when the invention was made, the contemporaneous state of the art and other factors.

The Inter-Circuit Split, the D.C. Circuit Microsoft case: There is a clear inter-circuit split on document interpretation as perhaps most strikingly seen in the clearly exceptional Microsoft antitrust case where the D.C. Circuit nevertheless strictly applied the "clear error" standard of the rule. United States v. Microsoft Corp., 253 F.3d 34, 117 (D.C. Cir. 2001).

The Appropriate Question that Should be Presented: "Does the Federal Circuit's standard of de novo review of construction of patent documents violate the 'clearly erroneous' standard of review under FRCP 52(a), particularly where it is in conflict with other circuits and in direct violation of the express statement in Pullman-Standard that the rule 'does not make exceptions or purport to exclude certain categories of factual findings'?"

A Last Chance for the Federal Circuit to Erase the Cybor Stain: While it may well be inevitable that the Court will grant certiorari to deal with Cybor at some point in time, at present there is no case on the horizon where the appropriate question has been presented.

The court sua sponte has within its discretion the opportunity – now in Amgen or some other of the many cases coming down the pike on claim construction review – to revisit Cybor and return to the Rule 52(a) mainstream and end the decade of confusion that Cybor has created, a self-evident truth to everyone who works outside Madison Place.