What Reversals and Close Cases Reveal About Claim Construction: The Sequel, 13 J. Marshall Rev. Intell. Prop. L. 525 (2014)

This article updates and elaborates on last year’s What Close Cases and Reversals Reveal About Claim Construction at the Federal Circuit. Like the previous article, this article provides empirical insight into claim construction at the Federal Circuit, by approaching the question with two unique and distinct subsets of data: (1) “reversals” of all district court claim construction decisions since Phillips v. AWH, and (2) “close cases,” or post-Markman claim construction cases that had dissents in which a currently-active judge participated. The past year’s reversals data once again confirms that district courts persistently favor narrow claim interpretations in cases in which they will be reversed. From this, it follows that most “reversals” reflect a failure of the district courts to follow Federal Circuit claim construction principles, rather than arbitrary fact finding by the Federal Circuit. As a result, a rule that awards more deference to district court claim constructions will likely create greater unpredictability, as district courts might be affirmed even if their decisions are not consistent with the Federal Circuit’s claim construction principles. The “close cases” data continues to document vast differences in approach among Federal Circuit judges in their approaches to claim construction. This article is particularly timely in light of the Supreme Court’s grant of certiorari in Teva v. Sandoz, where the Court will consider the Federal Circuit’s standard of review of district court’s claim construction

What Close Cases and Reversals Reveal About Claim Construction at the Federal Circuit, 12 J. Marshall Rev. Intell. Prop. L. 583 (2013)

Claim construction is central to patent litigation and has been the focus of a voluminous body of scholarship. Researchers have collected data from all aspects of claim construction cases, looking for answers to questions such as why the Federal Circuit reverses district courts’ claim constructions so frequently, why Federal Circuit judges reach different conclusions from one another, and what methodologies these judges are utilizing. This paper takes a novel approach to analyze these questions. Rather than focus on all claim construction cases, this paper focuses only on cases where the Federal Circuit was divided and a dissent was written, and cases in which the Federal Circuit reversed the district courts’ constructions. By looking at these two subsets of claim construction cases, we can glean insights from the data that are unapparent when looking at all cases. Specifically, we can observe trends in voting behavior, then compare those trends to different methodologies Federal Circuit judges utilize, whether expressly or impliedly. The data shows that, for reform to claim construction procedures to be meaningful, either the Federal Circuit or the Supreme Court must first address and definitively settle whether it is appropriate to determine “what the inventor actually invented” as a first step to claim construction. Once settled, ideas for reform can be debated. One such idea might involve applying an algorithm for construing claims, an example of which is provided in Appendix C