The U.S. Court of Appeals for the Federal Circuit, in a somewhat unusual situation, granted a motion for interlocutory review of a district court claim construction order. The Regents of the University of California et. al., v. Dako North America, Inc. Case No. 07-1202 (Fed. Cir., Feb. 14, 2007) (Lourie, J.). Permission for such a review is rarely granted. Typically, the Federal Circuit reviews claim construction issues only on appeal from final judgment.

The plaintiffs alleged infringement of two patents relating to in situ DNA hybridization. As to an accused kit product, plaintiffs sought a preliminary injunction within three weeks of commencing the litigation. The district court denied the preliminary injunction of the kit product based on the plaintiff’s failure to show either a likelihood of success on the merits or a balance of hardships in its favor. The plaintiffs appealed the denial under 28 U.S.C. § 1292 (a) (1). The plaintiffs also appealed from a subsequent amended order that changed a basis for questioning the validity of a patent-in-suit from lack of novelty to the doctrine of non-statutory double patenting.

After the two pending appeals had been fully briefed, the plaintiffs sought a review of yet another order arising from a motion for summary judgment of non-infringement. In this order, several claim construction issues addressed in the prior orders were revisited by the court based on a more complete record (including the prosecution history). Because the order did not involve an injunction, plaintiffs petitioned for a discretionary interlocutory appeal under 28 U.S.C. § 1292 (b). The district court certified that the order relating to the motion for summary judgment involved a controlling question of law as to which there is substantial ground for difference of opinion and that an immediate appeal from the order may materially advance the ultimate termination of the litigation. The plaintiffs represented that defendants consented to the discretionary appeal.

The Federal Circuit granted the petition for interlocutory appeal of the third order on the grounds of efficient use of judicial resources. The Court explained that, unlike the situations in most petitions for interlocutory appeal, claim construction was already before the Federal Circuit by virtue of the two pending appeals stemming from the preliminary injunction orders. Accordingly, concerns of premature review, or subsequent review of the same issue, are not present. The Court noted that if it refused the petition, the panel in the pending appeals would review the first two district court orders based on a limited (preliminary injunction) record. Thus, the Court reasoned that hearing all three appeals at the same time would facilitate the resolution of all of the claim construction disputes.