The Problem with Metaullics
Intellectual Property Practice Group Newsletter - Volume 1, Issue 3, Fall 1997
December 1, 1997Steven Gardner
The Supreme Court's and the Federal Circuit's opinions in Markman v. Westview Instruments, Inc., 116 S. Ct. 1384 (1996), aff'g 52 F.3d 967 (Fed. Cir. 1995] (en banc], are two of the most important opinions in American patent-law jurisprudence. Prior to the Federal Circuit's Markman opinion, some Federal Circuit opinions stated that patent claim construction was a question of law, others indicated it was a mixed question of law and fact, and still others indicated it was a question of fact. The Federal Circuit explained that it decided to hear Markman en banc in order to settle this issue. After analyzing the issue, the en banc Federal Circuit, in a 8-2-1 decision, held that patent claim construction is "solely . . . a question of law," and, as such, is a question for the judge and not the jury. The Supreme Court granted certiorari in Markman to determine whether judicial construction of claims violated the Seventh Amendment, and held that it did not.
A two-member majority of a panel of the Federal Circuit recently generated considerable consternation among the patent bar when it issued an opinion stating that patent "claim construction is a mixed question of law and fact." This article briefly sets forth the substance of that opinion, Metaullics Systems Co., L.E v. Cooper, 100 F.3d 938 (Fed. Cir. 1996), and criticizes it for ignoring the principle of stare decisis and the ramifications of disregarding that principle.
I. The Metaullics Case
A. The Majority Opinion
In Metaullics, the plaintiff accused the corporate defendant of infringing Metaullics's '584 patent, and sought a preliminary injunction against the corporate defendant and an individual defendant. The district court denied the plaintiff's preliminary injunction motion, and the plaintiff appealed that denial to the Federal Circuit.
Circuit Judge H. Robert Mayer wrote for the court, and Circuit Judge Randall R. Rader joined. On appeal, the court explained that "[t]he only relevant fact in this appeal is that the '584 patent has expired. Thus, [the plaintiff] no longer may seek or obtain a preliminary injunction against infringement of the '584 patent." "Accordingly" the court held, "this appeal is moot."
Even though the court found the appeal moot, it went on to discuss Markman and claim construction. The court cited the Supreme Court's opinion in Markman. The court noted that the Supreme Court relied upon "functional considerations"— judges are better suited to construe patent claims than juries—to hold that judges, not juries, are to interpret patent claims. Anticipating that the infringement suit would continue below in the district court even though no preliminary injunction was forthcoming, the corporate defendant requested that the Federal Circuit construe the claims of the '584 patent for the district court's use. The court rejected this request. The court explained that "we are likely to constme claims better when considering, rather than wanting, a developed record." The court further explained that "[t]o construe claims prematurely, as [the corporate defendant] now suggests we proceed, would undermine the wisdom of reserving claim construction for judges."
Then, the court set forth a puzzling paragraph that has become a point of controversy:
Even if this court were to disregard the Supreme Court's functional rationale, because claim construction is a mixed question of law and fact, see Markman, 116 S. Ct. at 1390 (classifying claim construction as 'a mongrel practice' consisting of factual and legal components), we may be required to defer to a trial court's factual findings. Where a district court makes findings of fact as part of claim construction, we may not set them aside absent clear error. See Fed. R. Civ. R 52(a) ('Findings of fact, whether based on oral or documentary evidence, shall not be set aside unless clearly erroneous.')
With that paragraph, the majority opinion ended.
B. Judge Lourie's Concurrence
Circuit Judge Alan D. Lourie concurred in the majority's decision to find the appeal moot and in the majority's decision to refuse to construe the '584 patent's claims without a developed record. Judge Lourie stated that the opinion should have ended there and he stated that he disagreed with the majority's statement that claim construction is a mixed question of law and fact.
Judge Lourie pointed out that the Supreme Court in Markman addressed only whether the Seventh Amendment guarantees that juries will construe patent claims. He explained that the Court "did not expressly characterize elements of claim construction as questions of fact, nor did it address any standard of review." Judge Lourie noted that the Court stated that when an issue, such as patent claim construction, "'falls somewhere between a pristine legal standard and a simple historical fact, the fact/law distinction at times has turned on a determination that, as a matter of the sound administration of justice, one judicial actor is better positioned than another to decide the issue in question.'" Judge Lourie concluded: The Supreme Court "eschewed the fact/law distinction. In any event, it surely did not indicate any standard of review. Not having had the issue argued or briefed in this case, neither should we. There is no basis, even in dictum, for us to state in this case that we would have to defer to the trial court on so-called issues of fact arising in claim construction."
Lastly, Judge Lourie noted that the en banc Federal Circuit held in Markman that "claim construction is . . . solely a question of law." Judge Lourie explained that the "Supreme Court did not criticize or overrule any aspect of our en banc opinion. Thus, the analyses and holdings of our en banc court might preclude a subsequent panel before which the issue properly is presented."
II. The Problem With Metaullics
The issue of whether patent claim construction is a question of law, as the Markman en banc court held, or a mixed question of law and fact, as the Metaullics majority stated, is vitally important. A question of law can provide no genuine issue of material fact to prevent summary judgment, while the factual component of a mixed question can give rise to a genuine issue of material fact and thus prevent summary judgment. Also, while the Federal Circuit reviews a question of law de novo on appeal, the court reviews the factual portion of a mixed question for clear error. Metaullics gives rise to a plethora of questions and a lot of confusion. Should a district court follow the Markman court's statement or the Metaullics court's statement? Which statement should we advise our clients is "the law" when counseling them? The bar thought that this issue was settled by the en banc court. The most disturbing aspect of Metaullics is not the substance of its statement regarding claim construction. The most disturbing thing about Metaullics is that it displays an alarming disregard for stare decisis and all that stare decisis promotes.
In Markman, just a year-and-a-half before Metaullics, the en banc Federal Circuit decided that claim construction is a question of law. The Markman opinion was issued after extensive briefing from the parties and amici, oral argument, and deliberation on the part of the entire court. Yet, in deciding differently, the Metaullics court did not even cite the Federal Circuit's Markman opinion.
The Metaullics court's statement that claim construction is a mixed question is made without meaningful analysis or support. It is highly worrisome that a two-judge majority of the Federal Circuit would depart from the clear holding of the en banc court without meaningful explanation or even a mention of the en banc opinion. Certainly there are occasions when the Supreme Court's analysis of one issue impacts a related issue such that prior circuit court opinions on the related issue are called into question, narrowed, or even invalidated. Such occasions are rare, however. Even on such occasions, it is important for the circuit panel recognizing and acting upon the impacted issue to carefully explain its departure from prior circuit precedent.
The public depends upon the courts to maintain stability in the law and to provide well-reasoned explanations of their decisions, particularly when departing from precedent. The Metaullics majority met neither of these responsibilities. A court's failure to respect its own precedent engenders cynicism about the court. BNA's Patent, Trademark, and Copyright Journal (Nov. 21, 1996] reported that Metaullics is "likely to increase the fears among practitioners that the result one gets at the Federal Circuit depends on the panel one draws." The Journal also noted that the two judges in the majority in Metaullics were the same two judges who concurred in the result of the en banc Markman opinion, but who disagreed with the Markman majority's approach to the claim construction issue. Judge Mayer reaches the same conclusion in Metaullics that he did in his Markman concurrence. Judge Rader stated in his Markman concurrence that it is the duty of the Federal Circuit not to rule on questions not before it, but nonetheless endorsed the examination of the claim construction issue in dictum in Metaullics.
There may be rational arguments that claim construction is a mixed question of law and fact. The Supreme Court or the en banc Federal Circuit itself may one day change the Federal Circuit's en banc holding in Markman to hold that claim construction is a mixed question (only an en banc court can overrule en banc precedent). If such a change is necessary, the process should have—and could have—been a step-by-step, conservative approach, with careful examination of the issue when properly before the court, and only then changing the law. Such an approach would at a minimum include a detailed explanation of why the court is departing from such well-considered precedent as the en banc Markman opinion. The Metaullics majority's approach, though, began the process with a woefully inadequate examination of the issue and a statement of change that certainly cannot be called an approach evidencing judicial restraint. Magnifying the problems with the Metaullics court's statement regarding mixed questions is the fact that the statement is pure dictum. The Metaullics majority found the appeal moot because the patent in suit had expired, but nonetheless went on to make its mixed-question statement. There was absolutely no need or good reason for the majority to make the statement about mixed questions in the Metaullics case. In the face of extremely good reasons not to make the statement—creation of confusion, conflict with an en banc decision, creation of cynicism towards the Federal Circuit—the court's decision to make such a statement is puzzling and disturbing.
The concurrence is a model of judicial restraint. The concurrence would have stopped writing at the point that no further statements were necessary to decide the case, and at the point where the parties had not briefed or argued an issue. Moreover, note that where the concurrence could have said that the Federal Circuit's en banc Markman opinion would bind a subsequent panel on the issue, the concurrence said that it "might" bind a subsequent panel. There was no reason to decide in the Metaullics case whether the en banc opinion would bind a subsequent panel on this issue, and the concurrence did not attempt to decide it. Such an approach is admirable, and stands in stark contrast to the Metaullics majority's approach.
* Steve Gardner is an associate at Kilpatrick Stockton LLP in Winston-Salem, North Carolina.