Corporate Counsel Magazine (forthcoming, October 1997)
Patent litigation is notoriously expensive. In the American Intellectual Property Law Association's (AIPLA) 1995 Economic Survey, it was estimated that in the typical patent infringement suit both sides could expect to spend between 750,000 and 1,000,000 through trial. A fundamental reason for this expense is discovery. (Indeed, according to the AIPLA survey, at least half of the estimated cost could be attributed to discovery expense.)
A substantial factor contributing to discovery expense is claim interpretation, or perhaps more accurately the timing of claim interpretation. Until such time as the claims have been properly construed, the parties have no idea what the legal scope and meaning of the claim terms are, and therefore must out of an abundance of caution conduct discovery and pursue infringement theories on all possible legal interpretations of the claim terms at issue.
Although the courts have been slow to react, the Federal Circuit and Supreme Court decisions in Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, ____ U.S. ___, 116 S. Ct. 1384 (1996), and Vitronics, Inc. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996), provide the opportunity to finally put the horse before the cart.
By taking claim interpretation away from the jury, Markman and its progeny mean that claim interpretation can now occur at any time in the litigation, and no longer just before, during or after trial. Moreover, because the Federal Circuit has squarely held in Vitronics that it is the rare case where patent claims should be interpreted based on anything other than the "public record" (i.e., the patent, the specifications and the administrative history), it only makes sense to have the claims construed early so that the case can either be resolved or at the very least the parties know the proper meaning and scope of the claims before they embark on discovery and the like.
The Pre-Markman Procedure
Prior to Markman, the jury generally interpreted the scope and meaning of claim terms as a question of fact during its deliberations. Even in those rare cases where the court was involved in the interpretation process, the standard procedure was still to construe the claims in connection with instructing the jury. This meant that the parties were forced to operate in the dark with respect to claim interpretation throughout discovery and trial, and thus had no choice but to expend precious time and resources addressing every conceivable interpretation.
In Markman, the Supreme Court unanimously affirmed the Federal Circuit's ruling that the construction of disputed claim terms is a question of law "exclusively within the province of the court." 116 S. Ct. at 1387. The Federal Circuit analogized claim interpretation to statutory construction. Markman, 52 F.3d at 987.
Vitronics
In Vitronics, the Federal Circuit addressed the question of what evidence a court is to consider and rely upon when interpreting patent claims. Under Vitronics, the judge is to generally interpret the claims only according to the "intrinsic evidence" or public record because "[i]n most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term." 90 F.3d at 1583. In such circumstances, it is improper for the court to rely on extrinsic evidence. Id. As the Federal Circuit observed in Markman, "[i]f the patent's claims are sufficiently unambiguous for the PTO, there should exist no factual ambiguity when those same claims are later construed by a court of law in an infringement action." 52 F.3d at 986. It is, of course, never proper for the court to consider an accused device when interpreting the claims of a patent. SRI Int'l v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1118 (Fed. Cir. 1985).
Extrinsic evidence may only be used "to help [the court] understand the underlying technology," or where the "patent documents, taken as a whole, are insufficient to enable the court to construe disputed claim terms." 90 F.3d at 1585.
Although the case does not so hold, the import of Vitronics is that the parties do not need to conduct discovery prior to claim interpretation. The evidence required for claim interpretation is already available to the parties as well as the rest of the public.
The Opportunity for Efficiency and Economy
As with statutory interpretation, the court must first determine what conduct the patent claims prohibit and then determine whether the defendant's conduct falls within that prohibition. Because claim interpretation is the threshold determination in an infringement suit, the issue should be decided at the threshold, and not after the parties have spent hundreds of thousands of dollars on discovery and peripheral issues. Further, the parties must have a legal determination as to what the claims mean before issues such as validity, inventorship or enforceability can be meaningfully addressed.
In most cases, claim interpretation will resolve the dispute. Indeed, it is well-settled that "to decide what the claims mean is nearly always to decide the case." Markman, 52 F.3d at 989 (Mayer, J., concurring). Thus, it makes little sense to engage in extensive discovery where (1) the litigation is likely to be resolved following claim interpretation, and (2) discovery is not necessary for claim interpretation. Courts should proceed with early claim interpretation and consider staying discovery until after the claims have been interpreted.
Conclusion
It no longer has to be business as usual in patent litigation, with the parties devoting years and hundreds of thousands of dollars to needless discovery and motion practice, all the while under a cloud of uncertainty as to how the litigated patent claims will eventually be interpreted during or after trial. The courts now have the authority to conduct early claim interpretation, and the opportunity to finally bring efficiency and economy to patent litigation.