Judge Plager Points Out Dueling Standards in Mea Culpa Concurrence - Intellectual Property Law - Federal Circuit
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Judge Plager Points Out Dueling Standards in Mea Culpa Concurrence

Yesterday, the Federal Circuit released a titillating published opinion that addressed the merits of adjustable height workstations with, wait for it ... vertical beams. Wow.

The opinion itself wasn't very remarkable. It was a review and affirmation of the USPTO's rejection of reexamined patent claims for Flo Healthcare. There was some enlightening discussion of "means-plus-function" versus descriptive terms, but that wasn't the true gem of the opinion. Judge Plager's concurrence was.

After making their affirmation, the court also published two concurrences full of dirty dicta. The first, by Senior Judge Plager, addressed an ongoing issue with appellate review of PTO claim construction, namely that there are two conflicting lines of authority and rules. Since the conflicting standards were elucidated in 1997 and 2000, both the courts and the parties have chosen whichever standard was convenient at the time and pretended that the other didn't exist.

Girl Covering Ears

Morris Standard (1997)

The Morris standard reaffirmed the prior "broadest reasonable interpretation" deferential standard towards the PTO's interpretation of disputed claim language. "The question then is whether the PTO's interpretation of the disputed claim language is 'reasonable.'"

Because the APA was later required to apply to review standards, Morris' "reasonable," combined with the APA, should mean "not arbitrary and capricious," as under the APA, agency interpretations are given deference unless they fail the arbitrary and capricious standard. And as well all know from Chevron and subsequent cases, that's a pretty high amount of deference to overcome.

This standard has been followed by a line of Federal Circuit cases, including a case in 2010.

Baker Hughes Standard (2000)

The Baker Hughes standard emerged a few years later. It is a "no deference" standard because claim construction by the PTO is a question of law that is to be reviewed de novo, just as the court would review a claim construction by a district court. Baker Hughes cited somewhat questionable authority in making its ruling, as it cited In re Donaldson, which was addressed and dismissed by Morris, which was, of course, ignored.

Baker Hughes has been followed by its own line of cases, including a case this year.

So what's the takeaway? There are two rules. One requires deference to the PTO and review Board, while the other is a de novo review. Judge Plager issued a mea culpa, as he authored one opinion and was on the panel for the other. He also pointed out that under either standard, the result is the same in the present case. Judge Newman's concurrence didn't add much, except for reiterating the need for clarification and bemoaning the possibility that the dueling rules could mean different results depending on which panel heard the case.

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