Interpreting the scope of patent claims can be like trying to parse a novel jointly written by Stephen Hawking and James Joyce. The unenviable task of legally interpreting the scope of patent claims was taken from juries and given exclusively to judges in 1995 in the Markman v. Westview Instruments, Inc. decision.1 But shifting the responsibility did little to make patent litigation a less toxic odyssey of expense and uncertainty. Now the Federal Circuit, the nation's highest patent court, has before it the Philips v. AWH Corporation case, which addresses the fundamental guidelines for the claim construction task.2
On July 21, 2004, the Federal Circuit in the Philips case granted en banc review to consider a host of questions central to patent claim interpretation. It directed the parties and amici to brief such basic issues as whether the primary source for interpreting patents should be the patent itself, technical and public dictionaries, or a combination. What to do with conflicting dictionary definitions, prosecution history and expert testimony in determining the meaning of disputed claim terms was also on the agenda, as well as the extent to which the scope of the patent claims was to be limited by each source. Finally, the court questioned the appropriateness of the de novo appellate standard that Markman applied to claim construction rulings.3
Whether the Federal Circuit can or will provide workable answers to these basic claim construction issues remains to be seen. At least two Federal Circuit judges expressed skepticism, with one suggesting the issues were not susceptible of answers of algorithmitic precision or even of specific guidelines. Federal Circuit Chief Judge Mayer, in dissenting from the en banc order, argued that "shuffling our current precedent merely continues a charade" and continues "(n)early a decade of confusion"4 resulting from Markman's "fiction that claim construction is a matter of law."
Almost 10 years earlier, in 1995, Markman held that claim interpretation was a matter of law, exclusively for the court to decide. The decision presumed that judges were more able to quickly divine the "true" meaning of the patents. It touted removal of the juries from the claim construction process as eliminating uncertainty, leveling the playing field and ending the courtroom antics that made the weakest patent a real litigation threat.
Chief Judge Mayer and others dissented from the Markman decision, finding it inspired by an "elitist" effort to banish unreasoning juries from patent cases and to deprive patent litigants of their constitutionally protected jury rights.5 But their views were rejected in 1996 by the Supreme Court in Markman v. Westview, which found judges better suited than jurors to find the meaning of patents and therefore "more likely to be right in performing such a duty than a jury can be expected to be."6
Since the Markman decisions provided little guidance as to how claim construction was to be done, the courts quickly filled in the gaps with slews of decisions Â– not always consistent Â– on the evidence, procedures and methodologies to be used. For years, the jury was out as to whether Markman changed the landscape of patent litigation for better or worse. Now, after almost a decade of experience under the Markman regime, the empirical evidence shows that the expected wave of positive changes did not materialize. Judges find their claim construction decisions reversed as often as those of juries, with judges getting it wrong at least four times out of 10.7 Worse yet, Markman has spawned its own set of litigation maneuvers that have increased patent litigation costs, with the costs of a typical patent case rising more than 33 percent over the last three years.8
Even if the forthcoming Philips case is able to competently answer even half its agenda items, the Federal Circuit will not be writing on a blank slate, as it has already opined on all the topics in multiple decisions. Therefore, many do not see any possible Philips decision as becoming the lighthouse that will bring clarity to patent claim construction. Rather it appears that the claim construction task may suffer from more fundamental and intractable problems, as indicated by the high reversal rates. Judges, even with their touted "training in exegesis," aided by unlimited amounts of briefings and presentations as well as access to experts, and under no particular deadline, appear unable to respectably fill their appointed claim construction roles. Their failing grades on appeal suggest that the problem is not simply the need for new Â– or, more accurately, different Â– claim construction guidance, as promised in the upcoming Philips case.
Moreover, if neither judge nor jury can accurately assess the metes and bounds of patent claims, the patent system has arguably failed its essential, and constitutionally mandated,
purpose of providing notice to the public. The limits of a patent must be clear so that the public can know the boundaries of infringing activities and to ensure that the subject of the patent will be ultimately dedicated to the public. Without some certainty to the scope of patents, one encounters a "zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims that would discourage invention only a little less than unequivocal foreclosure of the field."9
We may be in that zone. But any hope that the Supreme Court might restore some constitutionally mandated certainty to the patent system received a major setback in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd.10 There the court refused to limit the doctrine of equivalents that exacerbates the uncertainty of patents.
Some argue that if the patents were properly examined to ensure compliance with their constitutional mandate, the claim construction process might have more of an essential transparency. The Federal Trade Commission and Department of Justice have recently devoted months of hearings to possible legislative, patent office and regulatory reforms to reduce questionable and uncertain patents.11 In response, Rep. Berman on October 8, 2004 introduced the Patent Quality Assistance Act (H.R. 5299), designed to improve patent quality and deter abuses. Perhaps the continuing costs and growing uncertainty as to patent coverage Â– with the attendant chilling effect on industry Â– will prompt some needed reforms to the patent system.
Squire Sanders has extensive patent litigation experience. For questions or to receive a copy of the full article "Was Markman Wrong in Tasking Judges with Claim Construction? The Promises and the Reality," call or email Cheryl L. Johnson at firstname.lastname@example.org.
1Markman v. Westview Instruments, 517 U.S. 370 (1996).
2Philips v. AWH Corp., et al., Appeal Nos. 03-1269-1286 (Federal Circuit, 2004).
3Id., opinion of July 21, 2004 at 2-4.
4Id., (dissent of Chief Judge Mayer).
5Markman v. Westview, 52 F.3rd 967, 988-89 [Fed. Cir. 1995] (en banc), aff'd, 517 U.S. 370 (1996).
6Markman, 517 U.S., at 388-89.
7C. Johnson, "Was Markman Wrong in Tasking Judges with Claim Construction? The Promises and the Reality," How to Prepare & Conduct Markman Hearings, 795 PLI/Pat 9,83-91 (2004)
8Id., Markman, 517 U.S., at 388-89.
9Markman, 517 U.S., at 373.
10535 U.S. 722 (2002).
11See report To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy, available at www.ftc.gov/opa.