PATENT CLAIM CONSTRUCTION: IT S NOT A PURE MATTER OF LAW, SO WHY ISN T THE FEDERAL CIRCUIT GIVING THE DISTRICT COURTS THE DEFERENCE THEY DESERVE?

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1 PATENT CLAIM CONSTRUCTION: IT S NOT A PURE MATTER OF LAW, SO WHY ISN T THE FEDERAL CIRCUIT GIVING THE DISTRICT COURTS THE DEFERENCE THEY DESERVE? Lauren Maida * INTRODUCTION The law of patent claim construction 1 has reached a point of crisis. 2 The rate of Federal Circuit reversals of district court claim constructions is as high as fifty percent. 3 Under its current de novo * Associate Editor, Cardozo Law Review; J.D. Candidate (June 2009), Benjamin N. Cardozo School of Law; B.E., Chemical Engineering, The Cooper Union (May 2004). I would like to thank Professor Alan Wolf for his helpful input and feedback; the Law Review staff for their editorial assistance; my parents, Phyllis and Gary, and my brothers, Gary and Brian, for their lifetime of love and support; and my husband, Carmen Fornarotto, for his unconditional love and for making me so happy, even when I m studying. 1 Claims are statements in a patent in which the inventor defines his or her invention, and claim construction is the process by which courts determine the scope and meaning of those statements. See infra notes and accompanying text. 2 Jeffrey A. Lefstin, The Measure of the Doubt: Dissent, Indeterminacy, and Interpretation at the Federal Circuit, 58 HASTINGS L.J. 1025, 1026 (2007) [hereinafter Lefstin, Measure of Doubt] (citing Joseph S. Miller, Enhancing Patent Disclosure for Faithful Claim Construction, 9 LEWIS & CLARK L. REV. 177, 177 ( Claim construction jurisprudence is in disarray. The United States Court of Appeals for the Federal Circuit reverses trial court claim construction decisions at a worryingly high rate. The proportion of Federal Circuit claim construction opinions that include separate concurrences or dissents continues to grow. )); see also Jeffrey A. Lefstin, Claim Construction, Appeal, and the Predictability of Interpretive Regimes, 61 U. MIAMI L. REV. 1033, 1033 (2007) [hereinafter Lefstin, Interpretive Regimes] ( [I]f [claim] interpretation is at the core of patent law, there are many who claim that core is now rotten. ); Timothy J. Malloy & Patrick V. Bradley, Claim Construction: A Plea for Deference, 7 SEDONA CONF. J. 191, 191 (2006) (suggesting that claim construction remains as unpredictable as ever ). 3 See, e.g., Lefstin, Interpretive Regimes, supra note 2, at 1037 ( [T]he notion that the reversal rate is too high has become firmly ingrained in the minds of commentators, practitioners, and judges alike, and is typically the first premise invoked in support of arguments to overhaul the current system of adjudicating patent infringement disputes. (footnotes omitted)); Paul M. Schoenhard, Reversing the Reversal Rate: Using Real Property Principles to Guide Federal Circuit Patent Jurisprudence, 17 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 299, 299, (2007) ( There is a pervasive perception that the Court of Appeals for the Federal Circuit reverses district court rulings in patent cases at an inordinately high rate.... By the numbers, existing district court judges are reversed no more frequently in patent cases generally than they are in other areas of their dockets.... If one focuses, however, only on the rate at which district court decisions involving claim construction are reversed on appeal, the figure is higher than for patent 1773

2 1774 CARDOZO LAW REVIEW [Vol. 30:4 standard of review, 4 the Federal Circuit need not give deference 5 to district court claim constructions and may arrive at its own claim constructions based on the patent document and the record on appeal. 6 Many feel that the de novo standard of review is the main cause of the high reversal rate, and that changing the standard would help solve the claim construction crisis. 7 After ten years of experience with this problematic standard, 8 nine of the twelve judges on the Federal Circuit have even expressed some desire for change. 9 The question of the proper standard of review is not just an esoteric legal topic that is only important to legal scholars. 10 In most cases, the standard of claim construction review greatly influences the district court judges hearing the patent infringement suit as well as patent practitioners who must be aware of the legal standard in order to properly advise their clients. 11 Under a de novo standard, district judges may grant summary judgment more frequently in order to facilitate an early appeal and avoid wasting judicial resources on a trial given the likelihood of reversal. 12 Practitioners operating under a de novo standard may argue alternative claim constructions in the district court to preserve the arguments on appeal, and advise their clients not to settle after an unfavorable claim construction ruling because of the high chance of receiving a favorable disposition on appeal. 13 In Cybor Corp. v. FAS Technologies, Inc., 14 the case establishing cases generally. ). For the various reversal rate figures, see infra note 115 and accompanying text. 4 See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998). 5 Though the Federal Circuit is not required to defer to district court claim constructions, this does not mean that the Federal Circuit is prohibited from giving deference or that it will not read district court opinions. De novo review simply means that the Federal Circuit is entitled to reject or ignore the analysis and conclusions of the district court. See infra notes and , and accompanying text. 6 See BLACK S LAW DICTIONARY 94 (7th ed. 1999) (defining an appeal de novo, or de novo review, as [a]n appeal in which the appellate court uses the trial court s record but reviews the evidence and law without deference to the trial court s rulings ). 7 See Lefstin, Measure of Doubt, supra note 2, at 1029 ( [C]ommentators often identify the de novo standard of review as the villain principally responsible for high reversal rates and other uncertainties surrounding claim construction. ); Malloy & Bradley, supra note 2, at 191 ( Can reasons for this continued uncertainty include (1) the Federal Circuit s insistence on labeling claim construction as purely a legal question and (2) the de novo standard of review which accompanies it? ). 8 Cybor was decided on March 25, Cybor, 138 F.3d at See infra note 100 and accompanying text. 10 Cybor, 138 F.3d at 1474 (Rader, J., dissenting). 11 Id. ( In most cases... the review standard influences greatly both the trial judges who preside over the trial process and patent practitioners who must advise clients to accommodate their business plans to an uncertain legal regime. ). 12 See infra note 136 and accompanying text. 13 See infra note 67 and accompanying text F.3d 1448 (Fed. Cir. 1998).

3 2009] PATENT CLAIM CONSTRUCTION 1775 de novo review as the standard, Judge Plager wrote in his concurrence that the purpose of the standard is to improve the process of patent litigation by simplifying the method by which trial and appellate courts address claim construction issues. 15 However, he left open the question whether the Cybor standard would actually satisfy those goals, saying that whether such an approach to patent litigation would in the long run be beneficial remains to be seen. 16 This Note argues that ten years of experience with the Cybor rule of de novo review has proved that it is not a beneficial approach to patent litigation. It is a misconception that the reversal rates are high because district court judges get claim constructions wrong 17 and that de novo review is necessary because the Federal Circuit judges have the technical expertise necessary to get claim constructions right. 18 Therefore, the standard of claim construction review, an important aspect of patent litigation, should be changed so that deference is accorded to the district courts. Part I of this Note will discuss the history of the de novo standard, starting with background on the importance of claim construction to patent law jurisprudence and the creation of the Federal Circuit. Part I will then explore the Federal Circuit case law implementing the de novo standard and analyze the various judicial opinions in each case. Part II will examine the goals of the de novo standard and arguments that those goals are not being met. Part III will argue that one of the primary defects with the de novo standard is that it is premised on the incorrect notion that claim construction is a pure matter of law. Since claim construction involves factual inquiries, the proper standard of review should accord deference to the district court judges who devote time and effort to making those factual inquiries and are better suited for the task than the Federal Circuit. Part IV.A will adopt the position that de novo review is the proper standard for ultimate claim construction determinations, but that the proper deferential standard for the factual inquiries underlying claim construction is review for clear error. Part IV.B will support this position by comparing the standard of review for claim construction to the standard of review for obviousness, another inquiry in the field of patent law. 15 Id. at 1463 (Plager, J., concurring). 16 Id. 17 See infra notes and accompanying text. 18 None of the four Senior Circuit judges and only five of the twelve active Federal Circuit judges have technical backgrounds. See infra note 107.

4 1776 CARDOZO LAW REVIEW [Vol. 30:4 I. HISTORY OF THE DE NOVO STANDARD A. Evolution of the Claim Construction Standard of Review A patent gives an inventor the right to prohibit others from making, using, selling, or importing the patentee s invention in the United States 19 for the term of the patent. 20 Claims are concise statements which define what the patentee regards as his invention. 21 They are critical aspects of a patent because they define the metes and bounds of the patentee s exclusive rights. 22 Claim construction is the process by U.S.C. 271(a) (2006); see ROBERT C. KAHRL, PATENT CLAIM CONSTRUCTION 2.01, at 2-3 (2008) ( A patent is a statutorily created right in the United States. It allows a person, upon making a showing to the federal government that he has originated a novel innovation in the useful arts, to exclude others from exploiting his invention for a period of years. The patent creates a property right, and it is treated in law as intangible personal property. ). 20 In the United States, the patent term is generally twenty years from the date the patent application was filed with the Patent and Trademark Office (PTO). 35 U.S.C. 154(a)(2) (2006) U.S.C. 112 (2006) ( The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. ); see KAHRL, supra note 19, 1.01, at 1-3 ( [C]laims are short and concise statements, expressed with great formality, of the metes and bounds of the patented invention. ). For example, the claim at issue in Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) reads: 1. The inventory control and reporting system, comprising; a data input device for manual operation by an attendant, the input device having switch means operable to encode information relating to sequential transactions, each of the transactions having articles associated therewith, said information including transaction identity and descriptions of each of said articles associated with the transactions; a data processor including memory operable to record said information and means to maintain an inventory total, said data processor having means to associate sequential transactions with unique sequential indicia and to generate at least one report of said total and said transactions, the unique sequential indicia and the descriptions of articles in the sequential transactions being reconcilable against one another; a dot matrix printer operable under control of the data processor to generate a written record of the indicia associated with sequential transactions, the written record including optically-detectable bar codes having a series of contrasting spaced bands, the bar codes being printed only in coincidence with each said transaction and at least part of the written record bearing a portion to be attached to said articles; and, at least one optical scanner connected to the data processor and operable to detect said bar codes on all articles passing a predetermined station, whereby said system can detect and localize spurious additions to inventory as well as spurious deletions therefrom. U.S. Reissue Patent No. 33,054 (filed Aug. 28, 1987). 22 See 35 U.S.C. 112 (2006), Interpretive Notes and Decisions 84 ( Purpose of 35 USCS 112 requiring claims in addition to written description is to provide measure of metes and boundaries of asserted monopoly so that public may know definitely boundary line between public domain and patentee s private monopoly. ) (citing Armco Steel Corp. v. United States Steel Corp., 203 F. Supp 654 (W.D. Pa. 1962), aff d, 316 F.2d 472 (3d Cir. 1963)); id. 92

5 2009] PATENT CLAIM CONSTRUCTION 1777 which courts determine the scope and meaning of claims, 23 in order to establish what constitutes the patented invention that persons cannot make, use or sell without the authority of the patent owner. 24 Claim construction is conducted by a judge and is the first step in a patent infringement analysis. In the second step, a jury compares the claims, as construed by the judge, to the accused device to determine if that device infringes the patentee s exclusive rights. 25 For example, assume that at some point in time only shirts without fastening mechanisms existed and someone invented the button to hold shirts together. 26 The inventor s claim might read: I claim a shirt with a front opening, with a row of round plastic discs down one side of the front opening, and a row of holes at corresponding locations down the other side of the front opening into which the round plastic discs can be inserted. 27 If an alleged infringing product was a shirt with wooden buttons, this would be a clear case of non-infringement because the inventor claimed plastic buttons. 28 If, however, an alleged infringing product was a shirt with oval plastic buttons, the outcome would not be so clear. During claim construction, the district judge would have to determine the scope and meaning of the word round so that the jury could determine whether it encompasses oval buttons. If the district judge ( Claims must define patented device with sufficient certainty that one skilled in art can determine whether any particular proposed device falls within their metes and bounds, as well as what features must be omitted if claims are not to be infringed. ) (citing Ingersoll Milling Machine Co. v. General Motors Corp., 110 F. Supp 12 (D. Ill. 1952), aff d 297 F.2d 42 (7th Cir. 1953)); Schoenhard, supra note 3, at 312 (comparing patent claims to real property claims because both define the boundaries of the claim holder s right to exclude ). 23 KAHRL, supra note 19, 1.01, at DONALD S. CHISUM, CHISUM ON PATENTS 8.01 (2007); see KAHRL, supra note 19, 1.02, at 1-8 ( One goal of claim construction is to try to recover from the ambiguities of language a true picture of the invention that was sought to be patented. This is not an inevitable goal of claim construction. Instead of seeking to determine the identity of the invention, the patent system could instead impose a rule that the inventor s patent protects only what the words say.... The present system is a mixture of both concepts, with constant tension between the populist ideal of seeking to protect what the inventor invented, and the desire of competitors to be able to readily perceive from the words of a claim what the exact boundaries of the exclusive rights are. ). 25 See, e.g., Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (describing the two-step infringement analysis); see also Lefstin supra note 3, at ( In nearly all instances, we define what the patent or the invention is solely by reference to the scope of the patent s claims. Once the district court construes the claims, all subsequent determinations of whether the patent is infringed... are governed by that definition. ). 26 This example is based on an example found in Arnoud Engelfriet, Determining the Scope of a Patent, (last visited Aug. 28, 2008). 27 See id. 28 To infringe a patent, every element in the claim must be present. See, e.g., Hutchins v. Zoll Med. Corp., 492 F.3d 1377, 1380 (Fed. Cir. 2007) ( Patent infringement requires that every element and limitation in a correctly construed claim is embodied in the accused system either literally or, if embodied by an equivalent, in compliance with the rules of equivalency.... ).

6 1778 CARDOZO LAW REVIEW [Vol. 30:4 construed round to mean perfectly circular, 29 the accused product would not be infringing since oval buttons are elliptical in shape. If the judge construed round to mean curved in shape as opposed to angular, 30 it is possible that a jury would find the accused product to be infringing. Prior to 1982, the regional Federal Courts of Appeals had jurisdiction over patent appeals. 31 However, these courts varied in their enforcement of patents; some rigorously enforced patents while others rarely upheld their validity. 32 To promote uniformity and reduce the uncertainty and forum shopping caused by the split in the circuit courts, Congress created the Court of Appeals for the Federal Circuit and gave it exclusive jurisdiction over patent appeals. 33 The Federal Circuit, however, developed its own inconsistency problems. A claim must be construed from the perspective of a person having ordinary skill in the art of the patented invention. 34 On the one hand, this requirement supports the practical need for district court judges to increase reliance on expert testimony from persons of ordinary 29 Merriam-Webster s Online Dictionary defines round as having every part of the surface or circumference equidistant from the center. Merriam-Webster Online Dictionary, Round, (last visited Aug. 28, 2008); see Crash Course on Patents: The Procedure for Getting a Patent, (last visited Aug. 28, 2008) ( [I]f a claim uses the word round, then normally that means exclusively perfectly round. ). 30 Dictionary.com defines round as free from angularity; consisting of full, curved lines or shapes. Dictionary.com, Round, (last visited Aug. 28, 2008). 31 KAHRL, supra note 19, 1.04, at Id. 33 Federal Courts Improvement Act of 1982, Pub. L. No , 96 Stat. 25 (1982) (establishing the United States Court of Appeals for the Federal Circuit); KAHRL, supra note 19, 1.04, at 1-13 to -14 ( The resulting non-uniformity of enforcement led to reduced confidence in the patent system, and also caused the selection of forum to become a highly significant event in patent litigation. To reduce the uncertainty and regional disparities in patent enforcement, Congress created the Federal Circuit, explicitly to achieve substantial improvements in uniformity of patent enforcement. ); see Kyle J. Fiet, Restoring the Promise of Markman: Interlocutory Patent Appeals Reevaluated Post-Phillips v. AWH Corp., 84 N.C. L. REV. 1291, 1298 (noting that the disparities between the regional circuits cheapened the value of patents and discouraged investment in research and development of products). 34 This is a statutory standard. 35 U.S.C (2006) ( The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains... to make and use the same.... ); id. 2 ( The specification shall conclude with one or more claims.... ). Since claims are part of the specification, they must also be written to be understood by a person skilled in the art. KAHRL, supra note 19, 4.03[B], at ( The statute thus allows the drafter to assume that the reader has sufficient knowledge to be able to comprehend the subject matter without requiring the specification to incorporate a primer on the relevant technical field.); see also id. 2.04[F], at 2-68 ( The concept of interpreting a patent using the perceptions of a person having ordinary skill in the art to which the invention pertains was endorsed by Congress in 1950 when the new Patent Act incorporated that phrase in the test of obviousness. ).

7 2009] PATENT CLAIM CONSTRUCTION 1779 skill in the art. 35 On the other hand, because a patent is an integrated written instrument, judges should only rely on their internal expertise to construe claims, not the opinion of an expert witness who has his or her client s interests in mind. 36 These inconsistent principles led to a divergent line of cases in the Federal Circuit. 37 The first line of cases stated that claim construction, though a question of law, is built on underlying factual issues which could require extrinsic evidence or resolution by a jury. 38 The opposing line of cases held that claim construction is solely within the judge s authority. 39 The Federal Circuit chose to resolve this conflict in Markman v. Westview Instruments, Inc. (Markman I). 40 In Markman I, the Federal Circuit held that claim construction is a pure question of law for the judge, to be determined without reference to facts, and therefore district court claim constructions would be reviewed de novo on appeal. 41 The case was appealed to the United 35 KAHRL, supra note 19, 2.04[F], at Id. 37 Id. 38 Id. at 2-68 to -69 ( The first set of cases stated that underlying factual issues which arose during claim construction required resolution by the trier of fact. The first case to state this principle clearly was McGill, Inc. v. John Zink Co.... Subsequently, courts repeatedly relied on McGill in holding that factual issues of claim construction could require extrinsic evidence or resolution by a jury. ) (citing McGill, 736 F.2d 666 (Fed. Cir. 1984)). In this line of cases, Kahrl cites Palumbo v. Don-Joy Co., 762 F.2d 969 (Fed. Cir. 1985), Moeller v. Ionetics, Inc., 794 F.2d 653 (Fed. Cir. 1986), Data Line Corp. v. Micro Technologies, Inc., 813 F.2d 1196 (Fed. Cir. 1987), and Tol-O-Matic, Inc. v. Proma Produkt-Und Marketing Gesellschaft m.b.h., 945 F.2d 1546 (Fed. Cir. 1991). KAHRL, supra note 19, 2.04, at 2-69 to KAHRL, supra note 19, 2.04[F], at 2-71 to -72 ( The opposing body of jurisprudence held that claim construction was solely within the purview of the judge.... These opinions appeared to squarely conflict with the mixed question formulations in the opposite line of cases. ). This line of cases included Specialty Composites v. Cabot Corp., 845 F.2d 981 (Fed. Cir. 1988), Senmed, Inc. v. Richard-Allan Medical Industries, Inc., 888 F.2d 815 (Fed. Cir. 1989), and Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992). KAHRL, supra note 19, 2.04[F], at 2-71 to F.3d 967 (Fed.Cir.1995) (en banc) (Markman I); KAHRL, supra note 19, 2.04[F], at In resolving the divergent line, [s]everal principles of claim construction were at stake : 1. A patent is read as any person of skill in the art would read it Courts learn about interpretations of persons of skill in the art through testimony of such persons When the parties experts disagree on a matter of claim interpretation, the court must decide which interpretation to employ Choosing from conflicting interpretations of experts involves a determination of credibility The court that hears the expert testimony is best able to determine how (and whether) to apply it If the expert witnesses disagree as to the interpretation of claims, then summary judgment must be denied Claim construction is a question of law.... Id. 3.01, at 3-3 to Markman I, 52 F.3d at 979. One of the goals of Markman I was to have claim construction be a pure matter of law for the judge in order to give parties an incentive to settle and save money at trial. Once a claim is construed, the issue of infringement is usually dispositive; therefore

8 1780 CARDOZO LAW REVIEW [Vol. 30:4 States Supreme Court, which granted certiorari only on the narrow Seventh Amendment issue and held that there is no right to trial by jury for claim construction. 42 In Markman II, the Supreme Court did not go beyond the Seventh Amendment question to address the proper standard of review and it did not explicitly hold that claim construction is a pure matter of law. 43 The Court avoided the fact/law distinction altogether, calling claim construction a mongrel practice 44 and an issue that falls somewhere between a pristine legal standard and a simple historical fact. 45 The Court instead decided the jury issue by reasoning that judges are the judicial actors best positioned to construe claims because of their training and discipline. 46 The Supreme Court s opinion left the Federal Circuit divided over whether it should apply the de novo standard in all claim construction cases. After Markman II, some panels of the court applied a clearly erroneous standard to district court claim construction findings they summary judgment is granted or the parties settle. Today, patent litigation often starts with a preliminary hearing to interpret the claims, known as a Markman hearing. See KAHRL, supra note 19, 12.02, at 12-7 ( [S]hortly after the Markman decision was announced, some district courts began to hold separate hearings to hear arguments and take testimony concerning disputed meanings of claim terms.... These claim construction hearings quickly came to be known as Markman hearings, even though the Markman case does not mention claim construction hearings, and nothing in Markman directs or even suggests that claim construction hearings be held. ); id [A], at 12-8 ( A Markman hearing may be conducted at any time before the jury is instructed. ); id [C], at ( The testimony presented at Markman hearings usually consists of testimony from persons skilled in the art. These witnesses can be the named inventors, or retained experts, or other persons who can guide the court to a quicker understanding of the often-dense technical prose of the patent specification. ); id , at 13-5 ( Often a claim construction ruling after a Markman hearing will cause one party to concede that the case is lost, and to consent to an adverse judgment in order to obtain an appeal of the ruling. ); Michael Saunders, Note, A Survey of Post-Phillips Claim Construction Cases, 22 BERKELEY TECH L.J. 215, 218 (2007) ( With the judge as the sole interpreter of claim language, Markman hearings, in which the litigants argue solely about the meaning of the claim terms, have become common. However, by holding claim construction to be a matter of law to be reviewed de novo, the Federal Circuit thrust itself into a dominant position in patent infringement suits, creating many... problems.... (footnote omitted)). 42 Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996) (Markman II) ( The question here is whether the interpretation of a... patent claim... is a matter of law reserved entirely for the court, or subject to a Seventh Amendment guarantee that a jury will determine the meaning of any disputed term of art about which expert testimony is offered. We hold that the construction of a patent, including terms of art within its claim, is exclusively within the province of the court. ). 43 See id. 44 Id. at Id. at 388 (citation omitted). The Court did not explain if claim construction was a matter of law in some or all instances. Saunders, supra note 41, at Markman II, 517 U.S. at ( [W]hen an issue 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. So it turns out here, for judges, not juries, are the better suited to find the acquired meaning of patent terms.... The judge, from his training and discipline, is more likely to give a proper interpretation to such instruments than a jury. ) (quoting Miller v. Fenton, 474 U.S. 104, 114 (1985)).

9 2009] PATENT CLAIM CONSTRUCTION 1781 considered factual in nature. 47 The Federal Circuit resolved this division in Cybor, holding that claim construction is a purely legal question to be decided de novo on appeal, including any allegedly fact-based questions relating to claim construction. 48 The Cybor majority reasoned that in Markman II the Supreme Court must have adopted the view that claim construction is a purely legal issue, because the Court endorsed the Federal Circuit s role in providing uniformity in the patent law field, and that role would be impeded if the Federal Circuit had to accord deference to a district judge s asserted factual determinations incident to claim construction. 49 The majority dismissed the Supreme Court s classification of claim construction as a mongrel practice 50 falling somewhere between law and fact as only prefatory comments. 51 B. Analysis of the Cybor Opinions The concurring and dissenting opinions in Cybor demonstrate that the rule of de novo review has been criticized since its inception. In total, five of the twelve judges sitting en banc recognized that a strict de novo review standard, with no deference given to district court judges, is inappropriate. 52 Judge Plager wrote in concurrence that even under de novo review, the trial judge s opinion would carry some weight. 53 Judge Bryson s concurrence also noted that the trial judge s work would be considered 47 Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (citing Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547 (Fed. Cir. 1997); Wiener v. NEC Elecs., Inc., 102 F.3d 534, 539, 541 (Fed. Cir. 1996); Metaullics Sys. Co. v. Cooper, 100 F.3d 938, (Fed. Cir. 1996)); see also Malloy & Bradley, supra note 2, at 191 ( Following Markman II, some panels on the Federal Circuit continued to apply a clearly erroneous standard to factual findings made by the judge during the process of claim construction. Under this standard, a trial judge s findings after listening to expert testimony on how a term was understood by a person skilled in the art would be reviewed with deference. ) (citing Fromson v. Anitec Printing Plates, Inc., 132 F.3d 1437 (Fed. Cir. 1997)). 48 Cybor, 138 F.3d at 1456 ( [W]e conclude that the standard of review in Markman I... was not changed by the Supreme Court s decision in Markman II.... ). This holding has become known as the Cybor rule. 49 Id. at Markman II, 517 U.S. at Cybor, 138 F.3d at The majority went on to say that the Supreme Court does not support the view that... while construction is a legal question for the judge, there may also be underlying fact questions. Id. 52 The seven judges on the Cybor majority who did not write separate opinions included Senior Circuit Judge Archer and Circuit Judges Rich, Michel, Lourie, Clevenger, Schall, and Gajarsa. Id. 53 Cybor, 138 F.3d at 1462 (Plager, J., concurring) ( Though we review [the] record de novo, meaning without applying a formally deferential standard of review, common sense dictates that the trial judge s view will carry weight. ).

10 1782 CARDOZO LAW REVIEW [Vol. 30:4 under this rule, especially regarding certain issues that district court judges are better situated to decide, like credibility judgments of experts. 54 Judge Mayer concurred in the judgment and emphasized that review of claim construction is not governed by Markman I. 55 It is governed by Markman II, in which the Supreme Court chose not to adopt the Federal Circuit s de novo standard of review. 56 He also noted that Markman II does not stand for the proposition that all claim construction issues are legal; instead, Markman II states that when factual claim construction issues arise, they should be decided by the judge, not the jury. 57 Since a de novo standard could involve the Federal Circuit reviewing days of testimony and volumes of record, Judge Mayer argued that claim constructions based on factual findings should be reviewed for clear error. 58 Otherwise, in claim constructions involving factual findings, de novo review would turn the Federal Circuit into a trial court of first resort, 59 without the benefits of trial court procedures like additional discovery and expert testimony Id. at 1463 (Bryson, J., concurring) ( [O]ur adoption of the rule that claim construction is an issue of law does not mean that we intend to disregard the work done by district courts in claim construction or that we will give no weight to a district court s conclusion as to claim construction, no matter how the court may have reached that conclusion.... [W]e approach the legal issue of claim construction recognizing that with respect to certain aspects of the task, the district court may be better situated than we are, and that as to those aspects we should be cautious about substituting our judgment for that of the district court. ). 55 Id. at 1464 (Mayer, J., concurring in the judgment). 56 Id. at 1464, 1464 n.10 ( Though it could have done so easily, the Court chose not to accept our formulation of claim construction: as a pure question of law to be decided de novo in all cases on appeal.... Even a cursory reading of [the Markman II] opinion indicates that the Court meant to determine who should interpret the claims, without mandating a standard of appellate review to be used under all circumstances. ). 57 Id. at 1464 ( The Supreme Court recognized that in some cases there will be conflicting evidence that has to be resolved... such as the understanding of one skilled in the art at the time the patent application was filed. In these cases, all that Markman [II] stands for is that the judge will do the resolving, not the jury. ). 58 Id. at Judge Mayer also discussed Fromson v. Anitec Printing Plates, Inc., 132 F.3d 1437 (Fed. Cir. 1997), in which the trial judge admitted expert testimony to help construe the meaning of a word in the claim, writing: [W]e were not tasked by our standard of review to reexamine de novo each of the days of testimony and volumes of record relating to interpretation of the word.... This court did not affirm the trial court s judgment because it had educed the best meaning of the word.... It did so because the district court s construction... was not clearly erroneous. Cybor, 138 F.3d at Cybor, 138 F.3d at 1466 ( If claim construction is only a question of law to be reviewed by this court de novo, then the absence of review as a matter of right over our claim constructions, which may be new and unsupported by legal analysis, or may never have been tested by the adversarial process, would transform this court into a trial court of first and usually last resort. ). 60 Id. ( Such indiscriminate and conclusive review deprives the parties of important substantive and procedural mechanisms provided in the trial courts, where interpretation can be informed by additional discovery and expert testimony, and where it can be checked by appellate review as a matter of right. ).

11 2009] PATENT CLAIM CONSTRUCTION 1783 However, if no factual findings are involved, Judge Mayer suggested that the Federal Circuit s de novo standard would not be inconsistent with Markman II. 61 Judge Rader s dissent also focused on the fact that the Supreme Court did not adopt the Federal Circuit s theory that claim construction is purely a matter of law. 62 Yet the Federal Circuit continued to rely on its Markman I decision that claim construction is a purely legal question subject to appellate review without deference to the trial judge, thus rejecting the trial process as the main event. 63 Judge Rader also pointed to fault in the Federal Circuit s logic that trial judges may use experts to understand, but not to interpret, the claim terms. 64 According to Judge Rader, the rules of Markman I were already frustrating district courts. 65 Since Markman I, the plenary standard of review of claim constructions had already produced a reversal rate of almost forty percent. 66 Judge Rader argued that the goals of Markman I 61 Id. at 1465 ( Provided that no factual findings about disputed terms were necessarily made in the course of construing the claim, our making a claim construction that supersedes that of the district court is not inconsistent with the Court s opinion. ). 62 Id. at 1473 (Rader, J., dissenting) ( In Markman I, this court en banc declared that claim interpretation resides solely with the judge. The Supreme Court agreed. By removing lay juries from complex technological decisions, these decisions promised to improve the predictability and uniformity of patent law.... [But] the Supreme Court repeatedly intimated that claim construction was not a purely legal matter. (citations omitted)). In support, Judge Rader cited the language from the Markman II decision describing claim construction as a mongrel practice which falls somewhere between a pristine legal standard and simple historical fact, which the Cybor majority dismissed as prefatory. See supra note 48 and accompanying text. 63 Cybor, 138 F.3d at (Rader, J., dissenting) ( [T]his court relies on its earlier en banc decision, Markman I, to make claim construction purely a question of law, subject to independent appellate review without deference to or encumbrance by the trial process. To my eyes, this rejection of the trial process as the main event will undermine, if not destroy, the values of certainty and predictability sought by Markman I. (citation omitted)); see also id. at 1477 ( [T]he trial court becomes a ticket to the real center stage, the Court of Appeals for the Federal Circuit. ). 64 Id. at ( As a matter of logic, this instruction is difficult to grasp. What is the distinction between a trial judge s understanding of the claims and a trial judge s interpretation of the claims to the jury?... What happens when that learning influences a trial judge s interpretation of the claim terms? Are trial judges supposed to disguise the real reasons for their interpretation? ). 65 Id. at 1475 (citing Lucas Aerospace, Ltd. v. Unison Indus., L.P., 890 F. Supp. 329, n.7 (D.Del. 1995)). 66 Id. at 1476 (Rader, J., dissenting) ( The problem with this plan was in its implementation because as a question of law, claim interpretation is subject to free review by the appellate court.... [O]ne study shows that the plenary standard of review has produced reversal, in whole or in part, of almost 40% of all claim constructions since Markman I. A reversal rate in this range... reverses the benefits of Markman I. In fact, this reversal rate, hovering near 50%, is the worst possible. Even a rate that was much higher would provide greater certainty. ). After Judge Rader asserted a 40% reversal rate, many studies were conducted to check its validity. See Lefstin, Measure of Doubt, supra note 2, at 1037 ( Judge Rader may have launched a thousand studies when, dissenting in Cybor, he asserted that the Federal Circuit had reversed nearly 40% of district court claim construction decisions in the two years following Markman I. Since Judge Rader s calculation, computing claim construction reversal rates has become a popular sport: numerous studies have reported claim construction reversal rates from about 25%

12 1784 CARDOZO LAW REVIEW [Vol. 30:4 cannot be achieved with a de novo standard of review. 67 He urged the Federal Circuit to employ the Supreme Court s functional approach from Markman II to determine whether the trial court or the appellate court is better positioned to decide issues of claim construction. 68 Since the trial court is better positioned, deference should be accorded to district court claim interpretations. 69 In this way, the goals of Markman I could be met. 70 Judge Newman joined Judge Mayer s concurring opinion but also issued her own opinion with additional views. She wrote that the goals of Markman I s claim interpretation standard have not been met and that the standard often yields two unwanted results: (1) the first district court trial is unnecessary, and (2) a new claim interpretation by the Federal Circuit requires a second trial on the issue of infringement. 71 Judge Newman argued that in Markman II, by declining to adopt the Federal Circuit s pure matter of law theory while holding that claim construction is a matter for the judge, the Supreme Court gave the Federal Circuit an opening to move away from its pure matter of law theory and its unwanted consequences. 72 She urged the court to take this opening. 73 to 50%. ). 67 For the goals of Markman I, see supra note 41. According to Judge Rader, the Markman hearing no longer provides certainty in the claim construction or an incentive to settle because a de novo review of claim interpretations has postponed the point of certainty to the end of the litigation process, at which point, of course, every outcome is certain anyway. Cybor, 138 F.3d at 1476 (Rader, J., dissenting). As such, the Cybor rule actually provides patent litigants with an incentive to appeal, in the hopes that the Federal Circuit will reverse the district court s claim construction. Id. The focus at trial thus shifts from litigation for the correct claim construction to preserving ways to compel reversal on appeal, increasing the uncertainty, cost, and duration of patent litigation.... Thus, the en banc court s de novo regime belies the purpose and promise of Markman I. Id. 68 Cybor, 138 F.3d at 1477 (Rader, J., dissenting) ( [T]he [Supreme] Court pursued a functional inquiry to determine whether the judge or jury could best balance the complexities of claim construction. ). 69 Id. at ( Applying [the Supreme Court s functional approach], the trial judge enjoys a potentially superior position to engage in claim interpretation.... An appellate court has none of these advantages. It cannot depart from the record of the trial proceedings.... Indeed a careful consideration of the institutional advantages of the district court would counsel deference. ). 70 Id. at 1478 ( If this court accords more deference to trial court interpretations in the complex cases, soon the district courts will provide the desired certainty early in the process. At that point, Markman I will fulfill its promise. Administration of patent law will move toward less costly disputes and earlier settlements. ). 71 Id. at 1479 (Newman, J., additional views). 72 Id. at Id.

13 2009] PATENT CLAIM CONSTRUCTION 1785 C. Cybor Revisited: Amgen v. HMR In 2005, the Federal Circuit again declined its chance to revisit the rule of de novo review of claim construction. In granting a rehearing en banc in Phillips v. AWH Corp., 74 the court asked the parties to brief several questions, including whether it is appropriate and consistent with the Markman II and Cybor decisions for the Federal Circuit to accord deference to any aspect of trial court claim construction rulings. 75 At the end of its opinion, the court decided not to address the issue, leaving its Cybor rule in place. 76 However, two judges addressed the standard in separate opinions. Judge Lourie concurred in part and dissented in part, saying that although claim construction is reviewed without formal deference, the Federal Circuit should affirm claim constructions in the absence of a strong conviction of error. 77 Judge Mayer dissented and reiterated his views stated in Cybor about the absurdity of the Federal Circuit s persistence in falsely characterizing claim construction as a pure matter of law. 78 In 2006, Amgen Inc. v. Hoechst Marion Roussel, Inc. 79 marked another missed opportunity by the Federal Circuit. A petition for rehearing en banc was filed on the argument that the Federal Circuit F.3d 1303 (Fed. Cir. 2005). 75 Id. at Id; see Malloy & Bradley, supra note 2, at 191 ( If the Federal Circuit missed the opportunity in Cybor Corp. to choke down on the standard of review, at least it was a swinging strike. Some have argued that the court never even took the bat off the shoulder in Phillips, or alternatively that the court elected to punt. ); Eric W. Hagen, No Big Change in Claim Construction Since Phillips, NAT L L.J., Oct. 16, 2006, at S4, available at ( The issues put forth in the order granting rehearing en banc sent a shock wave throughout the patent community. No fewer than 36 amici curiae briefs were filed with the court. Conventional wisdom was that something clearly monumental would be decided in this highly anticipated opinion. When the dust settled, the court had answered some questions and sidestepped others. ). It is suggested that, although the Federal Circuit did not answer the certified question, having asked the question in the first place reflects an admission that its standard of review procedure is broken. Mark T. Banner, Footnote 17: Love, Hate and Markman, 6 SEDONA CONF. J. 131, 136 (2005). 77 Phillips, 415 F.3d at 1330 (Lourie, J., concurring in part and dissenting in part). 78 Id. (Mayer, J., dissenting) ( Now more than ever I am convinced of the futility, indeed the absurdity, of this court s persistence in adhering to the falsehood that claim construction is a matter of law devoid of any factual component. ); id. at 1332 ( [A] claim should be interpreted both from the perspective of one of ordinary skill in the art and in view of the state of the art at the time of invention. These questions, which are critical to the correct interpretation of a claim, are inherently factual. (citations omitted)); id. at 1333 ( [T]hat claim construction is dependent on underlying factual determinations has been verified by our experience, which shows that reviewing these questions de novo has not clarified the law, but has instead distort[ed] the appellate process, causing confusion among the district courts and bar. (citations omitted)) F.3d 1039 (Fed. Cir. 2006) reh g and reh g en banc denied, 457 F.3d 1293 (Fed. Cir. 2006), cert. denied, 127 S.Ct (2007).

14 1786 CARDOZO LAW REVIEW [Vol. 30:4 should accord more deference to district court claim constructions. 80 Though the petition was denied, several judges reconsidered the Cybor rule in concurring and dissenting opinions. 81 Notably, Chief Judge Michel, who was in the Cybor majority, 82 filed a dissent. He said that rehearing en banc should have been granted since it would have allowed the Federal Circuit to reconsider the Cybor rule after eight years of experience applying the rule. 83 He noted four problems with the Cybor rule: (1) a high reversal rate; (2) lack of predictability about appellate outcomes, which may discourage settlements; (3) loss of the advantage district judges have over the Federal Circuit because district court judges hear and read all of the evidence and have more time to spend on claim constructions; and (4) overburdening of the Federal Circuit with numerous disputed claim terms in each patent case. 84 Chief Judge Michel recognized that construing claims involves consulting evidence of how a person with ordinary skill in the art would interpret the claims. 85 Since trial judges are better equipped to make such factual determinations, deference should be given to the district courts. 86 Although rehearing en banc was denied, Chief Judge Michel remained hopeful and confident that the court will re-examine its Cybor no-deference rule. 87 Judge Newman s dissent mainly focused on the Federal Circuit s methodology of claim construction, 88 but she also recognized that if the meaning of a claim term is a case-specific finding of fact, the Federal Circuit should give deference to the district court judge who served as 80 Plaintiff-Appellee Amgen Inc. s Combined Petition for Panel Rehearing and Rehearing En Banc, Amgen, 469 F.3d 1039 (No ), 2006 WL Amgen, 469 F.3d at 1040; see also Kevin L. Reiner & Angela C. Ni, Decision Showcases Debate Within Federal Circuit, IP LAW360, Jan. 19, 2007, available at (search for Decision Showcases Debate Within Federal Circuit ; then follow PortfolioMedia Article hyperlink) ( The result of the denial of en banc review in the Amgen case is that the de novo/no deference rule remains the law. This begs the question: Can and will the Federal Circuit fix what even it recognizes are problems with the United States patent system? ). 82 Paul R. Michel was appointed Chief Judge on December 25, At the time of Cybor, he was a Circuit Judge. United States Court of Appeals for the Federal Circuit: Judicial Biographies, (last visited Aug. 28, 2008). 83 Amgen, 469 F.3d at 1040 (Michel, C.J., dissenting). 84 Id. 85 Id. at Id. at 1041 ( [T]rial judges are arguably better equipped than appellate judges to make these factual determinations, especially in close cases. In such instances, perhaps we should routinely give at least some deference to the trial court, given its greater knowledge of the facts. ). 87 Id. 88 Id. at 1041 (Newman, J., dissenting). Methodology of claim construction, especially in light of Phillips, is also an important area of debate in the law of claim construction. This Note, however, only focuses on the claim construction standard of review and does not address this issue.

15 2009] PATENT CLAIM CONSTRUCTION 1787 the trier of fact. 89 According to Judge Newman, claim construction is a mixed question of fact and law. 90 Judge Rader dissented and reiterated many of the arguments from his Cybor dissent. He urged the Federal Circuit to give deference to the factual components of district court claim constructions, because under its current law, it is not according any deference whatsoever. 91 Judge Moore also dissented on the grounds that the Federal Circuit should reconsider its position on deference to district court claim constructions. 92 She argued that the de novo standard is insufficient because the judges on the Federal Circuit cannot even agree among themselves on the proper claim construction. 93 Judges Gajarsa, Linn, and Dyk concurred in the denial of the petition for rehearing, but expressed some willingness to reconsider the Cybor rule in the appropriate case. 94 In their view, the appropriate case would be one in which the district court explicitly relied on conflicting extrinsic evidence to construe the claims. 95 For claim constructions relying purely on intrinsic evidence, they would not accord deference to the district court. 96 Judge Gajarsa is yet another Federal Circuit judge who was on the Cybor majority and reconsidered his position in Amgen so that some deference would be accorded to the district court. The Amgen case represents a remarkable shift in the Federal Circuit s view of the claim construction standard. At the time of Cybor, two judges approved of the de novo standard but noted that the district court might be accorded some deference anyway, and only three judges explicitly argued for a deferential standard. 97 Eight years later in Amgen, seven judges called for some deference to be accorded to the 89 Id. at Id. ( The Federal Circuit s position that patent interpretation requires more rigorous appellate review than other fact/law issues has not well withstood the test of experience. It is time to reopen the question and to rethink, en banc, the optimum approach to accuracy, consistency, and predictability in the resolution of patent disputes, with due attention to judicial structure, litigants needs, and the national interest in invention and innovation. ). 91 Id. at 1044 (Rader, J., dissenting) ( [T]he district court [is often] better positioned than [the Federal Circuit] to reach the proper construction. After all the district court has more tools, more time, and more direct contact with factual evidence.... ). In Amgen, the district court held a nine-day trial, including expert testimony, to construe the meaning of a disputed claim term. Id. 92 Id. at 1046 (Moore, J., dissenting). 93 Id. ( Five judges of this court have written opinions in this case expressing disagreement with the two judge panel majority s claim construction even under the de novo standard of review. ). 94 Id. at 1045 (Gajarsa, Linn, and Dyk, JJ., concurring). 95 Id. Amgen was not the appropriate case because the district court did not rest its interpretation on factual findings concerning conflicting expert evidence. Id. 96 Id. ( No deference is due a district court s legal interpretation of the claim language, written description, and prosecution history that an appellate court is equally competent to interpret. ). 97 See supra Part I.B.

16 1788 CARDOZO LAW REVIEW [Vol. 30:4 district court. 98 Though Judges Lourie and Mayer did not issue separate opinions in Amgen to address the standard of review, based on the views they expressed in Phillips, 99 they can be added to the seven Amgen judges to yield a total of nine out of twelve judges currently on the Federal Circuit who may be willing to revise the de novo standard. 100 II. REACTIONS TO THE CYBOR RULE A. The Goals of the Cybor Rule The rule that claim construction is a pure matter of law and that district court claim constructions should not be accorded deference has been controversial since its inception and continues to be a critical issue today. 101 A proper analysis of the rule s faults must begin with the reasons for its implementation. One important goal of the rule is to promote claim construction uniformity, 102 because de novo review allows the Federal Circuit to be the central arbiter of claim meaning. 103 Furthermore, if deference were given to district court claim constructions, this might result in the same kind of forumshopping that existed before the Federal Circuit s creation See supra notes and accompanying text. 99 See supra notes and accompanying text. 100 Judge Lourie issued a concurring opinion in Amgen because he agreed that rehearing en banc should be denied, though he disagreed with the majority s holding. Amgen, 469 F.3d at (Lourie, J., concurring). Though Judge Mayer was outspoken about his dislike for the de novo standard in Cybor and Phillips, he joined the Amgen majority in denying the petition for rehearing en banc. This does not necessarily mean that Judge Mayer now approves of the de novo standard; he may have merely chosen not to re-express his previously clearly stated views. 101 See KAHRL, supra note 19, 1.05, at 1-15 ( The continued dispute over whether the Federal Circuit should give deference to the district court s claim construction is a critical issue today. ). 102 See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1455 (Fed. Cir. 1998) (arguing that the Federal Circuit s role in providing national uniformity to the construction of a patent claim... would be impeded if the Federal Circuit had to give deference to a district court judge s claim construction). 103 Edward D. Manzo & Betsy J. Levstik, Deference: The Unanswered Question, 3 PAT. LAW. 4 n.1 (2006), available at catpldeference.pdf (noting that under the de novo standard, the Federal circuit can declare a patent claim meaning for all jurisdictions, unencumbered by the clearly erroneous standard, and thus minimize any potential problem of a trial court in one jurisdiction finding the facts in a different way than a trial court in another jurisdiction ). The Federal Circuit was created to provide uniformity in patent law, so the argument is that the Federal Circuit must have the final say over claim construction in order to provide this uniformity. See supra note 33 and accompanying text. 104 See Stephanie Ann Yonker, Post-Phillips Claim Construction: Questions Unresolved, 47 IDEA 301, 339 (2007) (noting that arguments against granting deference include the loss of national uniformity in claim construction and forum-shopping by litigants to choose the most favorable jurisdiction for review of claim term meaning ).

17 2009] PATENT CLAIM CONSTRUCTION 1789 Another goal of the rule is to give certainty to the law of claim construction, so that the public notice function of claims may be served. 105 A patent gives the patentee exclusive rights and treating claim construction as a pure matter of law allows the public to rely on patent documents available in the public record to ensure that they are not infringing those rights. 106 Many feel that because the Federal Circuit has exclusive appellate jurisdiction over patent appeals, its judges have a particular expertise in patent law 107 and are better equipped to apply the patent law doctrine to these public documents than district court judges. 108 Commentators argue that if the standard required deference to be given to district court claim constructions, the Federal Circuit would simply be ignoring district court errors. 109 They 105 See Andrew B. Dzeguze, Did Markman and Phillips Answer the Right Question? A Review of the Fractured State of Claim Construction Law and the Potential Use of Equity to Unify It, 15 TEX. INTELL. PROP. L.J. 457, 487 (2007) (noting that in Markman I, much concern was placed on the public notice function of claims and the ability of people to read the claims and understand their scope). 106 The argument is that if claim construction were a mixed matter of fact and law, then extrinsic evidence could be used to interpret claims and the public could no longer fully rely on intrinsic evidence, like the patent document itself. See David Krinsky, The Supreme Court, Stare Decisis, and the Role of Appellate Deference in Patent Claim Construction Appeals, 66 MD. L. REV. 194, 197 (2006) ( [T]here are compelling reasons to treat claim construction at least in the ordinary case as a matter of pure law. Patent claims delineate the scope of an invention from which the patentee has a government grant of the right to exclude others; as such, the public should be able to rely upon a consistent construction of patent claims based only upon the documents available in the public record. ); see also KAHRL, supra note 19, 12.01, at 12-3 ( The public reads a patent in order to determine the nature and extent of the patentee s exclusive rights. ). 107 Krinsky, supra note 106, at 201. The Federal Circuit judges expertise comes mainly from their greater exposure to patent doctrine and cases rather than their technical backgrounds. It is a common misconception that all the Federal Circuit judges were first engineers or scientists. Kimberly A. Moore, Markman Eight Years Later: Is Claim Construction More Predictable?, 9 LEWIS & CLARK L. REV. 231, 245 (2005). Currently, none of the four Senior Circuit judges and only five of the twelve active Federal Circuit judges have technical backgrounds: Judges Newman (1984), Lourie (1990), Gajarsa (1997), Linn (1999), and Moore (2006) [year of appointment in parentheses]. See id.; United States Court of Appeals for the Federal Circuit: Judicial Biographies, (last visited Aug. 28, 2008). 108 Krinsky, supra note 106, at 201; see KAHRL, supra note 19, 13.03, at 13-3 ( [S]ome commentators have taken the position that the Federal Circuit is in an inherently better position than the lower court to perform claim construction, supposedly because of the appellate court s greater experience in reading patents and construing claims. ); Andrew S. Brown, Note, Amgen v. HMR: A Case for Deference in Claim Construction, 20 HARV. J.L. & TECH. 479, 488 (2007) (noting that defenders of de novo review argue that it increases accuracy in claim construction ); Fiet, supra note 33, at 1321 (arguing that de novo review places the final resolution of claim construction in the hands of an expert tribunal (the Federal Circuit) and improve[s] the accuracy of claim construction ). 109 See Gregory J. Wallace, Note, Toward Certainty and Uniformity in Patent Infringement Cases After Festo and Markman: A Proposal for a Specialized Patent Trial Court with a Rule of Greater Deference, 77 S. CAL. L. REV. 1383, 1401 (2004) ( A rule of... deference may simply be turning a blind eye to the errors of district court judges who have limited experience with patent cases. It seems logical to assume that the Federal Circuit, which has extensive experience with patent cases because of its role as the lone patent appellate court, is correctly applying the

18 1790 CARDOZO LAW REVIEW [Vol. 30:4 argue that although claim construction may involve some factual findings, and district court judges are better suited for this task, these factual findings are merely incident to the claim construction process and carry little weight in the ultimate determination. 110 B. Discontent With the Cybor Rule Even those opposed to the Cybor rule recognize the importance of its underlying goals. 111 They argue, however, that the Cybor rule actually runs counter to its goals and results in less certainty. 112 This is due, in large part, to the Federal Circuit s high reversal rate of district court claim constructions. 113 Federal Circuit Judge Kimberly Moore calculated the claim construction reversal rate to be 34.5 percent for the period after Markman II in 1996, through 2003; 114 in other literature the reversal rate ranges from 25 to 71 percent. 115 According to Judge Moore, the law in patent infringement cases. (footnotes omitted)). 110 See Manzo & Levstik, supra note 103, at 4 ( [T]he fact-finding role in claim construction may be deemed to have little importance in comparison to the overall interpretive process. ). 111 See Brief for The American Bar Association as Amicus Curiae Supporting Petitioner, Amgen, Inc. v. Hoechst Marion Roussel, Inc., cert. denied, 127 S.Ct (2007) (No ), 2007 WL , at *5 [hereinafter ABA Amicus] ( Members of the ABA have observed that instead of having the intended effect of providing national uniformity to the construction of a patent claim, this approach [of de novo review of all aspects of claim constructions] instead has introduced into patent litigation considerable inefficiencies, unpredictability, and added expense. ) (quoting Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1455 (Fed. Cir. 1998)). 112 See id. 113 See supra note 3 and accompanying text. Federal Circuit Judge Moore noted that the reversal rate prompted two prominent practitioners to coin the term judicial hyperactivity to describe how the Federal Circuit usurps the province of the district court in the area of claim construction. Moore, supra note 107, at (citing William C. Rooklidge & Matthew F. Weil, Judicial Hyperactivity: The Federal Circuit s Discomfort with its Appellate Role, 15 BERKELEY TECH. L.J. 725, 727 (2000)). 114 Moore, supra note 107, at 233. Judge Moore s calculation of the reversal rate was conducted before her appointment to the Federal Circuit. At that time, she was a professor at George Mason University School of Law. Id. at 231 n.a See id. at 234 (citing the range as 25% to 50%); Schoenhard, supra note 3, at 303 (citing the general range as 34.5% to 40% and even as high as 71% ); Banner, supra note 76, at 132 (finding the effective reversal rate for 2003 to 2004 for claim construction to be 47%, without including Rule 36 summary affirmances). According to Judge Moore, these other reversal rates suffer from several serious flaws. The most substantial of which is the failure to review the Federal Circuit s Rule 36 summary affirmances. Moore, supra note 107, at 234. Rule 36 summary affirmances are affirmances of the district court without opinion, because the district court got it right and there is no need to explain new law. Id. Studies eliminating Rule 36 summary affirmances had a smaller number of affirmances in their dataset, resulting in artificially high reversal rates. Id. at According to Judge Moore, the reason these studies eliminated Rule 36 summary affirmances is because they are difficult to include since without an opinion, it is hard to determine what issues were involved on appeal. Id. at 236. Including Rule 36 summary affirmances requires the expensive and time consuming task of obtaining and reading the actual briefs, which her study did. Id.

19 2009] PATENT CLAIM CONSTRUCTION 1791 reversal rate has actually been increasing since Markman II, which means that predictability in claim construction has decreased. 116 The high reversal rate and the presumption that district courts get it wrong prompted Judge O Malley of the District Court of the Northern District of Ohio 117 to joke that litigants might be better off on the losing side at the district court level. 118 It is perhaps natural to assume that when the district court is reversed, it means the court got its claim construction wrong. 119 However, many commentators argue that this is just an incorrect presumption, 120 and that the fault actually lies with the Federal Circuit and its failure to provide clear rules of claim construction. 121 One practitioner commented that, based on the lack of certainty caused by the high reversal rate, the period before the creation of the Federal Circuit may have been the good old days. 122 Though the regional circuit courts lacked uniformity in their claim construction laws, the result that one would get at each circuit court was at least predictable. 123 Today s standard of de novo review of claim construction provides no certainty at all, because claim construction at the district court level merely opens the bidding for claim 116 Moore, supra note 107, at ( With judicial claim construction now nearing its adolescence... there should be more predictability. The reversal rate ought to be going down, not up. ); accord Banner, supra note 76, at 131 ( When Markman was new, a high reversal rate could be attributed to lower courts being unaccustomed to the procedures and idiosyncrasies associated with a new process. In the middle years, an explanation for the relatively high reversal rate could be that the appellate court and lower courts were fine-tuning the process.... The fine tuning should be done by now, yet the prevailing belief is that reversal rates on claim construction have remained high. ). 117 United States District Court: Northern District of Ohio: Biographical Information of The Honorable Kathleen McDonald O Malley, O_Malley Kathleen_M /O_Malley_Bio/o_malley_bio.htmlh (last visited Aug. 28, 2008). 118 The Law, Technology, and the Arts Symposium: The Past, Present and Future of the Federal Circuit: A Panel Discussion: Claim Construction from the Perspective of the District Judge, 54 CASE W. RES. 671, 680 (2004) [hereinafter Perspective of District Judge] (comments of Judge O Malley of the Northern District of Ohio). 119 Schoenhard, supra note 3, at 304 ( Trial courts are a convenient target. When a trial court is reversed, that means it got it wrong. Right? Not necessarily. ). 120 See Schoenhard, supra note 3, at (arguing that the assumption that trial courts are reversed because they incorrectly construe patent claims ignores the possibilities... that the Federal Circuit may erroneously construe patent claims and reverse correct decisions of the district court or that the Federal Circuit reverses district court claim constructions on the basis of underlying factual findings which reasonable people could reasonably disagree over); Banner, supra note 76, at 137 ( There is a doctrine in the law called res ipsa loquitur, the thing speaks for itself. The phrase may have significance here. District court judges, so highly talented in assessing facts, evaluating witnesses, judging credibility, and sifting through complex and difficult arguments in areas of law with which they are unfamiliar, simply cannot be... doing the wrong thing nearly half the time. ). 121 See Moore, supra note 107, at 247 ( The fault, at this point, undoubtedly lies with the Federal Circuit itself. ). Judge Moore blames the high reversal rate on the Federal Circuit s failure to provide sufficient guidelines on claim construction. Id. However, the canons of claim construction are not the focus of this Note. See supra note Banner, supra note 76, at Id.

20 1792 CARDOZO LAW REVIEW [Vol. 30:4 construction at the Federal Circuit. 124 The Federal Circuit may arrive at a claim construction sua sponte, 125 choosing a construction that was neither asserted by the district court nor either of the litigating parties. 126 The de novo standard has also failed to result in its promised claim construction uniformity; 127 in some cases the Federal Circuit itself cannot even agree on the proper claim construction. 128 Practitioners and legal scholars are not the only people unhappy with the current rules of claim construction review; the district court judges who invest a vast amount of time and effort in construing claims are also displeased. 129 Regardless of how carefully the district court judges apply the claim construction doctrines, there is a high likelihood that they will be reversed on appeal. 130 Therefore, some 124 Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1476 (Fed. Cir. 1998) (Rader, J., dissenting). 125 M. Reed Staheli, Deserved Deference: Reconsidering the De Novo Standard of Review for Claim Construction, 3 MARQ. INTELL. PROP. L. REV. 181, 201 (1999). 126 See KAHRL, supra note 19, 13.03, at ( One consequence of reviewing claim construction rulings de novo is that the appellate panel, interpreting a claim as a pure question of law, is free to adopt an interpretation not proposed by any party to the litigation, nor by the district court. A notable example of this occurrence arose in Exxon Chemical Patents, Inc. v. Lubrizol Corp.... ) (citing 64 F.3d 1553 (Fed. Cir. 1995)); Staheli, supra note 125, at (describing two cases in which the Federal Circuit overstepped its bounds... by its sua sponte creation of a new interpretation of the claims in a manner not presented by either party during the course of litigation) (citing Exxon, 64 F.3d at 1553; J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563 (Fed. Cir. 1997)). 127 See Yonker, supra note 104, at 334 (arguing that the de novo standard has failed to lead to substantial national uniformity in claim construction ). 128 See id. at 336 (noting that in Phillips, the Federal Circuit panel agreed with the district court s claim construction, but the en banc Federal Circuit then came up with a different claim construction) (citing Phillips v. AWH Corp., 363 F.3d 1207 (Fed. Cir. 2004), vacated, 415 F.3d 1303 (Fed. Cir. 2005) (en banc)); Thomas Chen, Note, Patent Claim Construction: An Appeal for Chevron Deference, 94 VA. L. REV. 1165, 1180 (2008) (describing two related cases involving the same patent in which the Federal Circuit essentially reversed its own earlier interpretation of claim language, in the first case affirming the Maryland district court and later reversing a New York district court which adopted the language previously accepted by the Federal Circuit) (citing CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146 (Fed. Cir. 1997); CVI/Beta Ventures, Inc. v. Custom Optical Frames Inc., 1996 WL (Fed. Cir. 1996) (nonprecedential)). 129 See Manzo & Levstik, supra note 103, at 4 ( The Federal Circuit is overburdened with reviewing claim constructions, district judges are discontent, and litigants are caught in an expensive and time-consuming situation. Can this really be the optimal way to handle the issue? ). 130 Moore, supra note 107, at 232 ( There s a real sense of fatalism among the patent trial bar, shared by the district court judges, that no matter how careful we are in trying to apply what the court says about Markman, there s a high likelihood that on review the [Federal Circuit] will change the construction of the claims. ) (alteration in original) (citing Victoria Slind-Flor, Markman Precedent Holds Up Patents: Ruling Intended to Add Predictability and Speed Fails to Do So, NAT L L.J., Jan. 15, 2001, at A1, A12 (quoting Bradford P. Lyerla, patent litigator) (alteration in original)); see Banner, supra note 76, at (noting that a footnote in a district court opinion about how the judge s law clerk despises patent law is a gentle reminder of the daunting task confronting District Court judges approaching the Markman [hearing] task knowing that there is a 47% chance of reversal if appealed ) (citing Illinois Tool Works, Inc. v. Ion Systems, Inc., 250 F. Supp. 477, 505 n.17 (E.D. Pa. 2003)). But see Letter from Judge Ellis to Hon. Lamar S. Smith, United States House of Representatives, et al., 16 FED. CIR. B.J. 1, 1-2