Issue 06/66 | November 30, 2006
Federal Circuit Inching Toward Reconsideration of Cybor Deference

The Federal Circuit has taken another step toward a reversal of its en banc pronouncement in Cybor that claim construction determinations by district court judges must be reviewed de novo. In the eight years since Cybor, the decision has been criticized by practitioners and academics, and questioned by an increasing number of Federal Circuit judges. The most recent step in the signaled retreat from Cybor came in Amgen v. Hoechst Marion Roussel, No. 05-1157 (Fed. Cir. Nov. 22, 2006), where the Court denied Amgen's petition for rehearing and rehearing en banc, over written dissents of four Judges.

An earlier panel decision in Amgen (Michel, Clevenger, Schall) resulted in a new claim construction of "therapeutically effective amount," vacatur of the judgment that Claim 1 of Amgen's '422 patent was not invalid, and a remand to determine whether that claim was anticipated by a prior art reference based on the new claim construction. By all accounts, the district court followed Phillips methodology faithfully in construing the claimed term and made findings before issuing its judgment. Judge Michel dissented, based on his view of the correctness of the district court's claim construction.

Dissenting from the denial of rehearing en banc, Judge Michel outlined four problems with the no-deference regime: (1) a steadily high reversal rate; (2) a lack of predictability about appellate outcomes; (3) loss of the comparative advantage of district court judges; and (4) inundation of the federal circuit with "the minutia of construing numerous disputed claim terms." Joining the mainstream of court members, he stated his belief that Cybor should be reconsidered and his expectation that it would be.

Judge Newman dissented, stating that district courts are well suited to evaluate the technologic content and scope of patents, "an analysis whose intermingling of fact and law is well served by the procedures and the adjudicatory skill of the district courts."

Agreeing with Judges Newman and Michel, Judge Rader cited Markman's language that claim construction "falls somewhere between a pristine legal standard and a simple historical fact" Markman, 517 U.S. at 388, and that deference must be accorded to the factual components of the lower court's claim construction.

In her first dissent, the Courts newest member, Judge Moore, also voiced her disagreement with the Cybor rule. As a former academic, empiricist, and prolific writer, Judge Moore has openly criticized the high claim construction reversal rate of the court.

Judges Gajarsa, Linn and Dyk concurred in the denial of rehearing en banc based on the view that the Amgen case was not the right vehicle for revisiting Cybor but stated reconsideration may be appropriate in an atypical case, e.g., one in which the language of the claims, the written description, and the prosecution history on their face did not resolve the question of claim interpretation, and the district court found it necessary to resolve conflicting expert evidence to interpret particular claim terms in the field of the art.

Interestingly, one of Cybor's most open critics, Judge Mayer, declined to voice a dissent in Amgen. Judges Plager and Bryson whose concurrences in Cybor suggest willingness to accord deference to district court fact finding did not favor en banc review of the Cybor rule in Amgen.

Ten of twelve court members have in some measure questioned, criticized and urged review of the Cybor deference rule. When will it happen? Even though Judge Moore's voice changes the calculus of the court and several members await an appropriate case, the change for patent holders, district court judges and practitioners cannot come fast enough.

Please visit http://media.aplf.org/resources/alert2006-66/amgen.pdf for a copy of the case for your reference.

To discuss these topics further, please feel free to contact the author, Michael R. Dzwonczyk (mdzwonczyk@sughrue.com), at Sughrue Mion, PLLC in Washington DC, USA.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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