Rader on "Truth in Advertising" for Deference to Trial Courts

In his dissenting opinion in Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc. (Federal Circuit, January 28, 2005) Circuit Judge Rader explains why he thinks it is time for "truth in advertising" with regard to deference to the claim constructions of the lower courts (citations omitted):

Deference to Trial Courts: Time for "Truth in Advertising?"

This is the classic "close case," so close in fact that ultimately two federal judges (one of whom conducted an entire bench trial on this issue) and the United States Patent and Trademark Office agreed with Merck & Co., and two federal judges agreed with Teva Pharmaceuticals. The United States District Court of Delaware tried this case from March 4 – 7, 2003, then issued a 75-page opinion analyzing the claims and arguments in consummate and accurate detail. This court received the typical briefs from the parties, an appendix containing selected portions of the record, and heard a total of approximately thirty minutes of argument by the parties on the issues before this court. Despite the district court’s superior tools and time to evaluate the complete record, to hear and inquire from expert and fact witnesses, to delve into countless related details, to probe the scientific and semantic context, and to entertain argument as long as necessary for clarity, this court with its reading three briefs before its half-hour hearing becomes enamored with its own analysis of a very close issue and reverses the district court.

This court often hears criticism from district court judges that its reversal rate on claim construction issues far exceeds that of other circuit courts. In response, nearly every judge on this court has publicly professed to accord some level of deference to district courts regardless of this court’s de novo. Either the Federal Circuit accords deference in accordance with its public protestations or it does not in accordance with its legal standard barring any deference. If the former, this court has a "truth in advertising" problem. Its actual practice clashes with its professed legal duty. If the latter, this court has a different kind of "truth in advertising" problem.

In this case, this court eschews all deference, a particularly striking choice in the face of a very close case and a district court whose diligent and intelligent process and resolution earned more respect than it received. I am not entirely sure which aspect of the "truth in advertising" problem this case illustrates, but it certainly makes any
protestations of deference in fact sound rather hollow.