Edward H. Phillips v. Awh Corporation, Hopeman Brothers, Inc., and Lofton Corporation, Defendants-Cross

MAYER, Circuit Judge,

with whom PAULINE NEWMAN, Circuit Judge, joins, dissenting.

Now more than ever I am convinced of the futility, indeed the absurdity, of this court’s persistence in adhering to the falsehood that claim construction is a matter of law devoid of any factual component. Because any attempt to fashion a coherent standard under this regime is pointless, as illustrated by our many failed attempts to do so, I dissent.

This court was created for the purpose of bringing consistency to the patent field. See H.R.Rep. No. 312, 97th Cong., 1st Sess. 20-23 (1981). Instead, we have taken this noble mandate, to reinvigorate the patent and introduce predictability to the field, and focused inappropriate power in this court. In our quest to elevate our importance, we have, however, disregarded our role as an appellate court; the resulting mayhem has seriously undermined the legitimacy of the process, if not the integrity of the institution.

In the name of uniformity, Cybor Corp. v. FAB Technologies, Inc., 138 F.3d 1448 (Fed.Cir.1998) (en banc), held that claim construction does not involve subsidiary or underlying questions of fact and that we are, therefore, unbridled by either the expertise or efforts of the district court. 1 What we have wrought, instead, is the substitution of a black box, as it so pejoratively has been said of the jury, with the black hole of this court. Out of this void we emit “legal” pronouncements by way of “interpretive necromancy” 2 ; these rulings resemble reality, if at all, only by chance. Regardless, and with a blind eye to the consequences, we continue to struggle under this irrational and reckless regime, trying every alternative — dictionaries first, dictionaries second, never dictionaries, etc., etc., etc.

Again today we vainly attempt to establish standards by which this court will interpret claims. But after proposing no fewer than seven questions, receiving more than thirty amici curiae briefs, and whipping the bar into a frenzy of expectation, we say nothing new, but merely restate 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, or at least allows us a seemingly plausible way out of the case. I am not surprised by this. *1331 Indeed, there can be no workable standards by which this court will interpret claims so long as we are blind to the factual component of the task. See Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 405 , 110 S.Ct. 2447 , 110 L.Ed.2d 359 (1990) (“Fact-bound resolutions cannot be made uniform through appellate review, de novo or otherwise.” (quoting Mars Steel Corp. v. Cont’l Bank N.A., 880 F.2d 928 , 936 (7th Cir.1989))). 3

Federal Rule of Civil Procedure 52(a) states that “[fjindmgs of fact ... shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of witnesses.” According to the Supreme Court, this “[rjule means what it says” — that findings of fact, even “those described as ‘ultimate facts’ because they may determine the outcome of litigation,” are to - be reviewed deferentially on appeal. 4 Bose Corp. v. Consumers Union of United States, 466 U.S. 485 , 498 & 501, 104 S.Ct. 1949 , 80 L.Ed.2d 502 (1984); see also Anderson v. Bessemer City, 470 U.S. 564, 575 , 105 S.Ct. 1504 , 84 L.Ed.2d 518 (1985) (“[RJeview of factual findings under the clearly-erroneous standard — -with its deference to the trier of fact — is the rule, not the exception.”); Pullmam-Standard v. Swint, 456 U.S. 273, 287 , 102 S.Ct. 1781 , 72 L.Ed.2d 66 (1982) (“Rule 52(a) broadly requires that findings of fact not be set aside unless clearly erroneous.”); United States v. United States Gypsum Co., 333 U.S. 364, 394 , 68 S.Ct. 525 , 92 L.Ed. 746 (1948). *1332 Even those findings of fact based entirely on documentary evidence are entitled to deference. Anderson, 470 U.S. at 574 , 105 S.Ct. 1504 (“That [Rule 52(a) ] 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.’ ” (quoting Pullman-Standard, 456 U.S. at 287 , 102 S.Ct. 1781 )). In short, we are obligated by Rule 52(a) to review the factual findings of the district court that underlie the determination of claim construction for clear error.

While this court may persist in the delusion that claim construction is a purely legal determination, unaffected by underlying facts, it is plainly not the case. Claim construction is, or should be, made in context: a claim should be interpreted both from the perspective of one of ordinary skill in the art and in view of the state of the art at the time of invention. See Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed.Cir.1998) (“It is the person of ordinary skill in the field of the invention through whose eyes the claims are construed.”). These questions, which are critical to the correct interpretation of a claim, are inherently factual. They are hotly contested by the parties, not by resort to case law as one would expect for legal issues, but based on testimony and documentary evidence. 5 During so called Markman “hearings,” which are often longer than jury trials, parties battle over experts offering conflicting evidence regarding who qualifies as one of ordinary skill in the art; the meaning of patent terms to that person; the state of the art at the time of the invention; contradictory dictionary definitions and which would be consulted by the skilled artisan; the scope of specialized terms; the problem a patent was solving; what is related or pertinent art; whether a construction was disallowed during prosecution; how one of skill in the art would understand statements during prosecution; and on and on. In order to reconcile the parties’ inconsistent submissions and arrive at a sound interpretation, the district court is required to sift through and weigh volumes of evidence. While this court treats the district court as an intake clerk, whose only role is to collect, shuffle and collate evidence, the reality, as revealed by conventional practice, is far different.

Even if the procedures employed by the district court did not show that it is engaging in factfinding, the nature of the questions underlying claim construction illustrate that they are factual and should be reviewed in accordance with Rule 52(a). For each patent, for example, who qualifies as one of ordinary skill in the art will differ, just as the state of the art at the time of invention will differ. These subsidiary determinations are specific, multifarious and not susceptible to generalization; as such their resolution in one case will bear very little, if at all, on the resolution of subsequent cases. See Ornelas, 517 U.S. at 703, 116 S.Ct. 1657 (“Law clarification requires generalization, and some issues lend themselves to generalization much more than others.”); Pierce v. Underwood, 487 U.S. 552, 561-62 , 108 S.Ct. 2541 , 101 L.Ed.2d 490 (1988) (“Many questions that arise in litigation are not amena *1333 ble to regulation by rule because they involve multifarious, fleeting, special, narrow facts that utterly resist generalization.” (quoting. Maurice Rosenberg, Judicial Discretion of the Trial Court, Viewed from Above, 22 Syracuse L.Rev. 635, 662 (1971))); Icicle Seafoods, Inc. v. Worthington, 475 U.S. 709, 714 , 106 S.Ct. 1527 , 89 L.Ed.2d 739 (1986) (rejecting de novo review of factual questions, even when outcome determinative). That the determination of the meaning of a particular term in one patent will not necessarily bear on the interpretation of the same term in a subsequent patent illustrates this point; while the term is the same, the underlying factual context is different. It further proves that these questions (e.g., who qualifies as one of ordinary skill in the art and what was the state of the art at the time of invention, among others) are implicitly being determined in each case; because we refuse to acknowledge either their existence or importance, however, the manner of their resolution is. never elucidated. Finally, that claim construction is dependent on underlying factual determinations has been verified by our experience, which shows that reviewing these questions de novo has not clarified the law, but has instead “distort[ed] the appellate process,” causing confusion among the district courts and bar. See Cooter, 496 U.S. at 404 , 110 S.Ct. 2447 (quoting Pierce, 487 U.S. at 561 , 108 S.Ct. 2541 ); see also Koon v. United States, 518 U.S. 81, 99 , 116 S.Ct. 2035 , 135 L.Ed.2d 392 (1996).

Our purely de novo review of claim interpretation also cannot be reconciled with the Supreme Court’s instructions regarding obviousness. While ultimately a question of law, obviousness depends on several underlying factual inquiries. Graham v. John Deere Co., 383 U.S. 1, 17 , 86 S.Ct. 684 , 15 L.Ed.2d 545 (1966); see also Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809, 811 , 106 S.Ct. 1578 , 89 L.Ed.2d 817 (1986) (holding that Rule 52(a) requires that the district court’s subsidiary factual determinations should be reviewed for clear error); cf. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 336 U.S. 271, 275 , 69 S.Ct. 535 , 93 L.Ed. 672 (1949) (holding that validity, while ultimately a question of law, is founded on factual determinations that are entitled to deference). “Under [section] 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved.” Graham, 383 U.S. at 17 , 86 S.Ct. 684 .

’ To a significant degree, each of these factual inquiries is also necessary to claim construction. Before beginning claim construction, “the scope and content of the prior art [should] be determined,” id., to establish context. The “differences between the prior art and the claims at issue [should] be ascertained,” id., to better define what the inventor holds out as the invention. And, the foundation for both the obviousness and claim construction determinations is “the level of ordinary skill in the pertinent art.” Id.; see Multiform, 133 F.3d at 1477 . These underlying factual considerations receive the level of defer-encé due under Rule 52(a) when considering obviousness, but they are scrutinized de novo in the claim construction context. As directed by the Supreme Court, however, it is especially important in the patent field, “where so much depends upon familiarity with specific scientific problems and principles not usually contained in the general storehouse of knowledge and experience,” to give deference to the district court’s findings of fact. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609-10 , 70 S.Ct. 854 , 94 L.Ed. 1097 (1950).

*1334 While the court flails about in an attempt to solve the claim construction “conundrum,” the solution to our plight is straightforward. We simply must follow the example of every other appellate court, which, regarding the vast majority of factual questions, reviews the trial court for clear error. 6 This equilibrium did not come about as the result of chance or permissive appellate personalities, but because two centuries of experience has shown that the trial court’s factfinding ability is “unchallenged.” Salve Regina Coll. v. Russell, 499 U.S. 225, 233 , 111 S.Ct. 1217 , 113 L.Ed.2d 190 (1991); Inwood, 456 U.S. at 856 , 102 S.Ct. 2182 (“Determining the weight and credibility of the evidence is the special province of the trier of fact.”). Time has similarly revealed that it is more economical for the district court to find facts. Pierce, 487 U.S. at 560 , 108 S.Ct. 2541 (“Moreover, even where the district judge’s full knowledge of the factual setting can be acquired by the appellate court, that acquisition will often come at unusual expense, requiring the court to undertake the unaccustomed task of reviewing the entire record .... ”).

Therefore, not only is it more efficient for the trial court to construct the record, the trial court is better, that is, more accurate, by way of both position and practice, at finding facts than appellate judges. Anderson, 470 U.S. at 574 , 105 S.Ct. 1504 (“The rationale for deference to the original finder of fact is not limited to the superiority of the trial judge’s position to make determinations of credibility. The trial judge’s major role is the determination of fact, and with experience on fulfilling that role comes expertise.”); Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100, 123 , 89 S.Ct. 1562 , 23 L.Ed.2d 129 (1969). Our rejection of this fundamental premise has resulted, not surprisingly, in several serious problems, including increased litigation costs, needless consumption of judicial resources, and uncertainty, as well as diminished respect for the court and less “decisional accuracy.” Salve, 499 U.S. at 233 , 111 S.Ct. 1217 . We should abandon this unsound course. 7

If we persist in deciding the subsidiary factual components of claim construction without deference, there is no reason why litigants should be required to parade their evidence before the district courts or for district courts to waste time and resources evaluating such evidence. It is excessive to require parties, who “have already been forced to concentrate their energies and resources on persuading the trial judge that their account of the facts is the correct one,” to “persuade three more judges at the appellate level.” Anderson, 470 U.S. at 575 , 105 S.Ct. 1504 . If the proceedings before the district court are merely a “tryout on the road,” id. (quoting Wainwright v. Sykes, 433 U.S. 72, 90 , 97 S.Ct. 2497 , 53 L.Ed.2d 594 (1977)), as they are under our current regimen, it is wasteful to require such proceedings at all. Instead, all patent cases could be filed in this court; we would determine whether claim construction is necessary, and, if so, the meaning of the claims. Those few cases in which claim construction is not dispositive can be remanded to the district court for trial. In this way, we would at least eliminate the time and expense of the charade currently played out before the district court.

Eloquent words can mask much mischief. The court’s opinion today is akin to *1335 rearranging the deck chairs on the Titanic' — -the orchestra is playing as if nothing is amiss, but the ship is still heading for Davey Jones’ locker.

. The Supreme Court did not suggest in affirming Markman v. Westview Instruments, Inc., 52 F.3d 967 (1995) (en banc), that claim construction is a purely legal question. 517 U.S. 370 , 116 S.Ct. 1384 , 134 L.Ed.2d 577 (1996). It held only that, as a policy matter, the judge, as opposed to the jury, should determine the meaning of a patent claim. See Cybor, 138 F.3d at 1464 (Mayer, C.J., dissenting) (explaining that "the [Supreme] Court chose not to accept our formulation of claim construction: as a pure question of law to be decided de novo in all cases on appeal”).

. See The Holmes Group, Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826, 833 , 122 S.Ct. 1889 , 153 L.Ed.2d 13 (2002).

. The question asked but not answered by the court which might have allowed it to cure its self-inflicted wound was: "Question 7. Consistent with the Supreme Court’s decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 , 116 S.Ct. 1384 , 134 L.Ed.2d 577 (1996) and our en banc decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed.Cir.1998), is it appropriate for this court to accord any deference to any aspect of trial court claim construction rulings? If so, on what aspects, in what circumstances, and to what extent?”

. Because some facts are so intertwined with a constitutional standard the Supreme Court has held that de novo review is appropriate. For example, whether a defendant has acted with actual malice in a defamation suit is reviewed de novo because, among other reasons, the scope of the First Amendment is shaped and applied by reference to such factual determinations. Bose, 466 U.S. at 502 , 104 S.Ct. 1949 ("[T]he content of the rule is not revealed simply by its literal text, but rather is given meaning through the evolutionary process of common-law adjudication.”). Similarly, whether there is reasonable suspicion to conduct an- investigatory stop or probable cause to perform a search under the Fourth Amendment are reviewed without deference. Ornelas v. United States, 517 U.S. 690, 696 , 116 S.Ct. 1657 , 134 L.Ed.2d 911 (1996) (holding that the protections afforded by the Fourth Amendment are "fluid concepts that take their substantive content from the particular contexts in which the standards are being assessed”). The reasoning behind these limited exceptions surely does not apply to claim construction. While appearing from the perspective of this court’s limited sphere of influence to be dreadfully important, claim construction does not implicate a constitutional value. Cf. Bose, 466 U.S. at 502 , 104 S.Ct. 1949 ("[T]he constitutional values protected by the rule make it imperative that judges — and in some cases judges of [the Supreme] Court — make sure that it is correctly applied.”). This is illustrated by the fact that the outcome of a patent case, unlike a defamation or illegal search case, has little impact on how future cases are decided or on how future parties behave. Cf. id. at 501 n. 17, 104 S.Ct. 1949 ("Regarding certain largely factual questions in some areas of the law, the stakes — in terms of impact on future cases and future conduct — are too great to entrust them finally to the judgment of the trier of fact.”). Even if claim construction did implicate a constitutional value, it, unlike-the decisions underlying the First and Fourth Amendments, could readily be reduced, when distinguished from its factual underpinnings, to "a neat set of legal rules.” Ornelas, 517 U.S. at 695-96 , 116 S.Ct. 1657 (quoting Ill. v. Gates, 462 U.S. 213, 232 , 103 S.Ct. 2317 , 76 L.Ed.2d 527 (1983)).

. That most of the cases now appealed to this court are “summary judgments” is irrelevant. We have artificially renamed findings of fact as legal conclusions; the district courts have dutifully conformed to our fictional characterization, but this does not change the inherent nature of the inquiry. Of course, if the parties do not dispute the material facts, summary judgment is appropriate.

. While jurisprudentially sound, the bar also supports this proposition, as evident by the many amici curiae briefs urging adherence to Rule 52(a).

. There are some scenarios where it is difficult to weed facts from law, see Pullman-Standard, 456 U.S. at 288 , 102 S.Ct. 1781 , but claim construction is not one of them.