{"id":34281,"date":"2008-03-26T16:35:41","date_gmt":"2008-03-26T21:35:41","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/uncategorized\/the-full-markman-naked-and-revealed.html"},"modified":"2008-03-26T16:35:41","modified_gmt":"2008-03-26T21:35:41","slug":"the-full-markman-naked-and-revealed","status":"publish","type":"corporate","link":"https:\/\/corporate.findlaw.com\/intellectual-property\/the-full-markman-naked-and-revealed.html","title":{"rendered":"The Full Markman: Naked and Revealed"},"content":{"rendered":"
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Few cases in the last twenty years have elicited as much interest as that of Markman v. Westview<\/i>, 52 F. 3d 967, 34 USPQ2d 1321 (Fed. Cir. 1995) ("Markman I<\/i>"), aff'd<\/i> 116 S.Ct. 1384 (1996) ("Markman II<\/i>"). In an opinion of some length, and with the entire Federal Circuit court sitting en banc,<\/i> Markman I<\/i> determined that the proper construction or interpretation of a U.S. patent claim was a pure question of law. Therefore this was not an issue to be decided or determined by a U.S. (fact finding) jury. Markman I<\/i> also asserted that the appellate court could therefore review and determine this question de novo<\/i>.<\/p>

On the other hand, the 1996 unanimous affirmance by the Supreme Court in Markman II<\/i> focused entirely on the question of whether there was any U.S. Seventh Amendment constitutional right to a jury trial on this issue. No other issue was discussed by Justice Souter who wrote for the Court. The holding was simply that there was no historical basis for submission to a jury of such a question and concluded that claim interpretation was ultimately a question of law only for the court. In effect, both courts effectively overturned a practice of many decades of at least submitting to a jury those at least those underlying factual disputes that were perceived to be involved in the patent claim construction question.<\/p>

The Federal Circuit has now gone well beyond the direct result and holdings of both Markman I<\/i> or II.<\/i><\/p>

C<\/i><\/b>YBOR v.<\/i><\/b> F<\/i><\/b>AS TECH<\/i><\/b> H<\/b>OLDS<\/b> N<\/b>O<\/b> F<\/b>ACT<\/b> F<\/b>INDINGS FOR<\/b> C<\/b>LAIM<\/b> I<\/b>NTERPRETATION<\/b><\/p>

On March 25, 1998, the Federal Circuit issued a new en banc<\/i> decision, Cybor Corp. v. Fas Technologies<\/i>, Appeal No. 98-1286,-1287. Curiously, and without advance notice, this case was decided en banc<\/i> by all twelve judges even though the usual panel of only three judges actually heard the appellate argument. Central to the issues considered in Cybor<\/i> is the nature and scope of review available on an appeal from the trial court.<\/p>

The Cybor<\/i> court acknowledges that the Supreme Court's holding was quite limited, but still states:<\/p>

Thus, we conclude that the standard of review in Markman I,<\/i> as discussed above, was not changed by the Supreme Court's decision in Markman II,<\/i> and we therefore reaffirm that, as a purely legal question, we review claim construction de novo<\/i> on appeal including any allegedly fact-based questions relating to claim construction. Accordingly, we today disavow any language in previous opinions of this court that holds, purports to hold, states, or suggests anything to the contrary<\/p><\/blockquote>

Moreover, in Cybor<\/i>, the Federal Circuit specifically pointed to a number of post-Markman<\/i> cases that had (approvingly) followed its general de novo<\/i> review standard for claim construction, but which had nonetheless still given respect and deference to the opinions of the trial judge. In particular, Federal Circuit Judge Newman's recent opinion (December 30, 1997) in Fromson v. Anitec Printing Plates, Inc.,<\/i> 132 F.3d 1437 (Fed. Cir. 1997) ("findings of scientific\/technological fact were material to the issue . . ." Id.<\/i> at 1444) was considered "difficult to reconcile" as to both "language and reasoning." This decision is overruled and firmly repudiated At least four other post-Markman<\/i> appellate cases are also directly criticized as applying a "clearly erroneous" standard in the appellant review of the fact findings by the trial court. See e.g. Eastman Kodak<\/i> [114 F.3d 1547 (Fed. Cir. 1997)] . . .("recognizing the trial court's trained ability to evaluate [expert] testimony . . " Id.<\/i> at 1559.) ; Metaulics<\/i> [100 F.3d 938], ("[C]laim construction is a mixed question of law and fact [and] we may be required to defer to a trial court's factual findings . . . we may not set them aside absent clear error." Id.<\/i> at 939.)<\/p>

Cybor's<\/i> clear purpose was to establish for the Federal Circuit a uniform interpretation of both Markman I<\/i> and II<\/i>. In the event, that purpose may have failed. While nine of the twelve judges of the full court joined in the Cybor<\/i> majority opinion, one filed a separate concurring opinion, a second purportedly concurring opinion (by Chief Judge Mayer) is actually strongly critical of the majority opinion, two other judges joined in a separate opinion concurring only in the judgment, a separate document of "additional views" was filed, and one additional judge (Rader) filed a fully dissenting opinion. Divergent views remain and Chief Judge Mayer and judges Rader and Newman continue to be at distinct odds with the Markman I<\/i> decision.<\/p>

While seemingly involving only a technical procedural legal point, the significance of Cybor<\/i> for U.S. patentees, can hardly be understated. While not only adhering to Markman I<\/i> and II<\/i>, that claim construction is a question of law to be decided solely by the judge and not a question of fact subject to a jury determination, the Federal Circuit now goes on to assert that there are no underlying fact issues to be determined when addressing claim construction. Thus, it has the right and even a judicial responsibility to render a fully de novo<\/i> appellate review of all<\/i> issues pertaining to claim construction as a matter of law. In so holding the Federal Circuit now rejects the notion that it owes any "deference" to whatever rulings the U.S. trial court may have made as to the opposing evidentiary submissions relating to the meaning of the technical terminology employed in the patent claim.<\/p>

In effect, this means that on an appeal the Federal Circuit not only may but should write on the proverbial "clean slate" and make its own independent determination of the meaning of the patent claims. While this may not seem to be a major departure from the original Markman I<\/i> decision, Cybor<\/i> actually takes the significant further step in concluding that there are no underlying questions of fact to be considered for claim interpretation. Thus, the appellate review may now ignore and need not consider whether any "findings of fact" made by the trial court were "clearly erroneous." This is a higher standard for reversal of a lower court's fact findings. Instead, the appellate court now need only find a mere "error" of law in the claim interpretation, a much lower standard for potential reversal of the trial court's decision.<\/p>

Doubtless, the Fromson<\/i> case stimulated the en banc<\/i> treatment given to Cybor.<\/i> Cybor<\/i> firmly rejects any views expressed in Fromson<\/i> that any deference should be given to the trial court's resolution of a clear conflict in the testimony of opposing experts. The issue in Fromson<\/i> was as to the patentee's intended thickness for an "anodizing layer" on an aluminium substrate as recited in the claims. The trial court addressed the merits of the opposing expert testimony and then gave its interpretation of the meaning of the claims, as a matter of law. This exercise at the trial level did not really depart from the principle of Vitronics Corp. v. Conceptronic, Inc.,<\/i> 39 USPQ2d 1573 (Fed. Cir. 1996). Vitronics<\/i> held that claim interpretation should whenever possible be based on the intrinsic evidence of the patent record itself, i.e., the claims, the patent specification and the prosecution history in the U.S. patent office. In Fromson<\/i> however those materials shed no light on the question of how thick an anodized layer might be because this was never expressly defined in these documents. Rather, extrinsic evidence in the form of conflicting expert testimony and extraneous text materials outside of the patent record were utilized to decide that the thickness had to be greater than just the normally present aluminium oxide surface layer. The trial court had resolved the conflict in evidence, and the Fromson<\/i> panel (Judges Newman, Mayer and Plager) gave due deference to that work at trial.<\/p>

T<\/b>HE<\/b> V<\/b>ARYING<\/b> V<\/b>IEWS OF<\/b> F<\/b>IVE<\/b> J<\/b>UDGES<\/b><\/p>

In Cybor<\/i>, Judge Bryson's concurring opinion with the majority is stated to be "without reservation." Nonetheless he emphasizes that merely because "claim construction [is] an issue of law does not mean that we intend to disregard the work done by district courts." Judge Bryson may actually have perpetuated the confusion of fact and law, i.e.<\/i> "[Markman I<\/i>] does not mean that we defer to a district court on legal matters unless we find that the court has committed clear error with respect to an issue that should be characterized as factual."<\/p>

Judge Plager's concurring opinion in Cybor<\/i> is rendered against the interesting background of having appeared on only a few of the panels that could legitimately be viewed as considering a Markman claim construction issue. Plager views indicate that he may not be fully convinced by the majority in Cybor<\/i> since he pleads for more time and patience by the patent bar to see whether or not the "new [Markman<\/i>] regime" will indeed work.<\/p>

On the other hand, Chief Judge Mayer's concurring opinion maintains his disapproval of Markman I<\/i> (wherein he had essentially agreed with Judge Newman's extended dissenting analysis). He continues to advance the view that Markman II<\/i> stands for something less than a carte blanche approval of everything said by the Federal Circuit in Markman I<\/i> (the Cybor<\/i> court "profoundly misapprehends [Markman II<\/i>]" . His comments include such statements as, "[Markman II<\/i>] was a perilous decision of last resort;" "Our review of claim construction is controlled by the Supreme Court's judgment in [Markman II<\/i>], not the opinion of the court it reviewed [Markman I<\/i>]"; and that "Even a cursory reading of [Markman II<\/i>] indicates that the [Supreme] Court meant to determine who should interpret the claims, without mandating a standard of appellate review to be used under all circumstances." Thus, it remains Judge Mayer's view that "all that Markman II<\/i> stands for is that the judge will do the resolving, not the jury"; that is, "the Supreme Court stopped short of authorizing us to find facts de novo<\/i> when evidentiary disputes exist as part of the construction of a patent claim and the district court has made these findings without committing clear error." [Citing both Fromson<\/i> and Eastman Kodak<\/i>]. Thus, "[W]hen the judge finds facts or accepts the factual determinations of a jury, those facts are entitled to greater deference than de novo<\/i> fact finding on appeal."<\/p>

Judge Rader's vigorous dissent asserts that the "values of certainty and predictability sought by Markman I<\/i> " will now be at least undermined, if not destroyed, and is written against the background that Rader sat as a trial judge in Loral Fairchild Corp. v. Victor Co<\/i>., 906 F. Supp. 798 (E.D.N.Y. 1995) (interpreting claims in a Markman<\/i> hearing); and Loral Fairchild Corp. v. Victor Co<\/i>.<\/u>, 911 F. Supp 76, 80-81 (E.D.N.Y. 1996) (sanctioning the plaintiff for attempting to change the theory of infringement in response to that claim interpretation).<\/p>

Judge Rader's dissent presents some interesting statistics. Of a total of 246 patent cases, originating in the Board of Patent Appeals and Interferences (BPAI), the district courts, and the Court of Federal Claims, 141 cases expressly reviewed claim construction issues. Of these 141 decisions, the Federal Circuit reversed, in whole or in part, 54 or 38.3% of the claim construction determinations by the lower tribunals. Further, with respect to cases from trial courts, the rate of reversal of claim constructions is 47 out of 126 or 37.3%.<\/p>

One of those cases was was CVI\/Beta Ventures, Inc. v. Tura LP,<\/i> 112 F.3d 1146 (Fed. Cir. 1997) in which the Federal Circuit construed the same<\/i> patent claims quite oppositely from what it had earlier concluded in CVI\/Beta Ventures, Inc. v. Custom Optical Frames, Inc.,<\/i> 1996 WL 338388 (Fed. Cir. June 19, 1996 (non-precedential opinion). Here, as Judge Rader points out, the Federal Circuit in effect had reversed itself, and he suggests that this does not illustrate the kind of "uniformity" contemplated by Markman II.<\/i> ("[I]f the Federal Circuit's reading of the very same claim can vary from one appeal to the next, every patent litiant has an incentive to appeal every action to the Federal Circuit in the hopes that the statistics will hold up and eventually the appellate court will reverse.")<\/p>

Judge Newman joined Judge Rader's dissent and understandably seeks to defend her own opinion in Fromson.<\/i> In "additional views," joined by Chief Judge Mayer, she flatly states that "enhancing consistency in result" in the Federal Circuit decisions "has not been well achieved." For instance, so far, the Federal Circuit has declined each and every petition for an interlocutory review of a district court's Markman I<\/i> claim interpretation, waiting instead for the final disposition of the case after trial before taking up its de novo<\/i> review of the meaning of the claims. This has led in turn to the granting of early summary judgments. The problem is then compounded by her discussions of the "unexpectedly creative de novo claim interpretations" subsequently rendered by the Federal Circuit at that (usually) last stage of the case. For instance,<\/p>

In a footnote, she cites the 1993 Carnegie Commission on Science, Technology and Government that, "[The U.S.] judicial system is increasingly unable to manage and adjudicate science and technology issues." Her criticism focuses on the Federal Circuit's rejection of evidentiary fact findings on this issue by the trial court noting that "it is now far from clear how the Federal Circuit proposes to reach the correct claim interpretation."<\/p>

H<\/b>AS THE<\/b> F<\/b>EDERAL<\/b> C<\/b>IRCUIT<\/b> I<\/b>GNORED 35<\/b> U.S.C.<\/b> §112?<\/b><\/p>

Throughout the reported cases subsequent to Markman I<\/i> and II<\/i> there seems to have been little attention paid to the provisions of § 112. For instance, Cybor<\/i> itself completely fails to cite § 112 except for paragraph 6, which deals solely with the equivalency infringement analysis for a "means plus function" claim. The present apparent foreclosure by the Federal Circuit of expert extrinsic evidence (at least in the absence of unambiguous claim terminology, see Vitronics Corp.<\/i>) seems inconsistent with the express requirements of 35 U.S.C. § 112, paragraph 1. This paragraph plainly states that the patent specification is to be directed to the understanding of a "person skilled in the art to which it pertains." Moreover, § 112 paragraph 2 directs that the claims are to define what the "applicant regards as his invention."<\/p>

If the Federal Circuit was seeking "clear and unambiguous" language, it could certainly find it in paragraphs 1 and 2 of § 112. The understanding of a person skilled in the art would certainly appear to be a requirement for paragraph 1, yet the trial court's evaluation thereof may now be ignored at the whim of the Federal Circuit. Moreover, the Federal Circuit has also concluded that the testimony of the patentee himself is little or no weight. (see<\/i> Bell & Howell v. Alter Systems,<\/i> 132 F.3d 701, 706 (Fed. Cir. 1997) ("The testimony of an inventor . . . concerning claim construction is entitled to little or no weight." Citing Markman I<\/i>).<\/p>

For all of that, it appears that Cybor<\/i> will remain the controlling case law for U.S. patent litigation. What it necessarily means is patent owners will have to remain uncertain as to the certain meaning of their patent claims until the Federal Circuit has completed its de novo review which will, in turn, be decided free from any deference or regard to whatever claim interpretation may have been applied at the trial court level.<\/p><\/div>","protected":false},"excerpt":{"rendered":"

Few cases in the last twenty years have elicited as much interest as that of Markman v. Westview, 52 F. 3d 967, 34 USPQ2d 1321 (Fed. Cir. 1995) (“Markman I”), aff’d 116 S.Ct. 1384 (1996) (“Markman II”). In an opinion of some length, and with the …<\/p>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_categories":[6492,6495],"class_list":["post-34281","corporate","type-corporate","status-publish","hentry","corporate_categories-intellectual-property","corporate_categories-intellectual-property__patent"],"acf":[],"_links":{"self":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate\/34281","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate"}],"about":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/types\/corporate"}],"wp:attachment":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/media?parent=34281"}],"wp:term":[{"taxonomy":"corporate_categories","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_categories?post=34281"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}