Markman Twenty Years Later: Twenty Years of Unintended Consequences

• Citation: Vol. 10 No. 4
• Publication year: 2015

Washington Journal of Law, Technology and Arts Volume 10, Issue 4 Spring 2015

Markman Twenty Years Later: Twenty Years of Unintended Consequences

Jerry A. Riedinger(fn*)

ABSTRACT

The Federal Circuit's Markman decision removed juries from the claim interpretation process, thereby revolutionizing patent law. Designed to provide greater certainty and predictability, Markman nevertheless produced unintended consequences, increasing ambiguity and complexity. By declaring claim interpretation an entirely legal issue, the Federal Circuit imposed intricate and even contradictory rules, many resulting from the Federal Circuit's long insistence that no issues of fact existed, so that claim construction was entirely subject to de novo review. The uncertainty was compounded by rules focused on semantic quibbles unrelated to what was invented. Increased burdens and continuing uncertainty followed.

TABLE OF CONTENTS

Introduction .................................................................................. 250

I. The Road to Markman ........................................................ 251

A. The Rise of Patent Juries ................................................ 252

B. Hostility to Patent Juries ................................................ 256

1. Incompetence and Unpredictability ....................... 257

2. The Unreviewable "Black Box" ............................. 259

3. The "Irrational" System ......................................... 260

C. Lockwood ....................................................................... 261

II. Markman ............................................................................. 262

A. The Federal Circuit Markman Decision ......................... 264

B. The Markman Concurring and Dissenting Opinions ..... 270

C. The Supreme Court Affirmance ..................................... 271

III. The Early Fall-Out from Markman ..................................... 272

A. Hearings and When to Hold Them ................................ 272

B. What Can the Court Review? ......................................... 274

IV. De Novo Review Revisited ................................................. 276

A. Cybor .............................................................................. 277

B. The Reversal Rate: Growing Criticism .......................... 280

V. Never-Ending Problems ...................................................... 282

A. Whack-a-Mole: The Unforeseen Problem of Iterative Processes ........................................................................ 282

B. Semantic Antics: The Issues Become Surreal ................ 285

1. Dictionaries ............................................................ 285

2. Nonsensical Decisions ............................................ 287

3. "Plain and Ordinary" Meaning ............................... 289

4. It Depends on the Meaning of "Or" ....................... 291

VI. Other Issues ......................................................................... 292

A. Phillips ........................................................................... 292

B. Preferring Narrow Interpretations .................................. 294

C. Knowledge of the Accused Device ................................ 295

VII. District Court Reactions ...................................................... 296

A. Local Patent Rules ......................................................... 296

B. The Obligation to Construe, and Limits on the Number of Terms ............................................................................. 298

VIII. Teva Pharmaceuticals ......................................................... 299

A. Lighting Ballast .............................................................. 299

B. Teva ................................................................................ 300

Conclusion ................................................................................... 301

INTRODUCTION

Three tectonic shifts have marked the last seventy years in patent litigation. The first resulted from the 1952 patent act, which untangled the law and codified a liberal view of how much "invention" was needed for patentability. The second was the creation of the Federal Circuit, which removed patent appeals from the disinterested or even hostile regional circuit courts, especially the rabidly anti-patent Eighth Circuit. The third came from the Federal Circuit's decision in Markman v. Westview Instruments, Inc.,(fn1) which separated claim construction from the jury's infringement analysis. Of the three, Markman continues to have the greatest impact, with crucial questions still unresolved after twenty years.

Markman was ostensibly intended to produce greater clarity and predictability in patent cases by placing the interpretation of a patent's scope solely in the hands of judges-who were asserted to be better suited to the intricacies of claim interpretation. Underlying the ostensible grounds was a deep enmity toward jurors in patent cases and a desire for unimpeded Federal Circuit review of patent scope, a desire that had been thwarted by the rise of patent juries. Yet Markman produced a host of unexpected results: less predictability, district judge irritation, and ever increasing litigation costs. But most important was the transformation of claim analysis from a focus on the invention to an elaborate manipulation of words unhinged from the purpose of the patent system. Despite twenty years of refinement, Markman's legacy remains a difficult work-in-progress.

I. THE ROAD TO MARKMAN

Markman arose in response to increasing use of juries, especially following the creation of the Federal Circuit. Once jury trials began to predominate, dissatisfaction with the competence of juries mushroomed, especially among losing defendants and attorneys representing companies who had long ignored patents. The dissatisfaction grew further as the Federal Circuit transformed patent law from a mostly-ignored backwater into an economic force, while simultaneously endorsing a broad role for juries. Attorneys, corporate counsel, and academics, appalled at juror attitudes, jury nullification and juror damage awards, thus sought a way to thwart the juror virus. Simultaneously, the limited review of jury decisions frustrated attorneys and some Federal Circuit judges. The United States Constitution's Seventh Amendment(fn2) imposed a serious obstacle to jury elimination,(fn3) so jury opponents looked for a new route to limiting juries. The result was Markman, an inelegant tool that limited the role of juries but created a host of new problems.

A. The Rise of Patent Juries

Juries have long been present in patent cases, even before the adoption of the Constitution in 1789,(fn4) and the passage of the first patent act in 1790.(fn5) Yet until the late 1970s, juries in patent cases were the rare exception. Patent attorneys and their clients had little experience with juries and jury trials, and were reluctant to deviate from common practice. Then, as now, many patent specialists viewed juries with alarm; they were considered incompetent to handle complex technology, and the specialists assumed federal judges, all of whom had higher than average intelligence, were more suited to dealing with the technical and legal esoterica arising in nearly every patent case. Moreover, a general movement challenging the suitability of juries in complex cases gained momentum in the 1970s,(fn6) giving patent litigants further ammunition to try to avoid juries.(fn7)

Despite the common disdain for patent juries, a countermovement arose in the 1970s, based upon a simple belief: jurors decided patent cases differently from judges, and that difference benefited patent owners more than defendants.(fn8) That difference in outcomes swept most opposition aside. Before the 1970s, juries rarely appeared in even 10% of the trials.(fn9) By the end of the 1970s, patent cases were tried to juries in at least 10%,(fn10) and that number steadily increased to 70% by 1994, (fn11) the year before Markman. Despite the ever-present disdain for juror competence, most patent litigators concluded by the mid-1980s that proper representation of patent owners required a jury demand. Patent jury trials then became the norm,(fn12) no doubt spurred by high profile plaintiff jury wins, such as the celebrated decision in Roberts v. Sears, Roebuck and Co.(fn13) Patent litigators were forced to scramble to gain jury skills in the 1980s, as trials conducted by non-patent specialists (who understood juries) produced repeated victories for patent owners-in cases where traditional thinking suggested that judges would have decided for the defendant.

The Federal Circuit's birth in 1982 cemented the role of juries in patent suits.(fn14) Created to provide greater uniformity in patent law (among other things), the Federal Circuit immediately began resolving the patent law differences that had existed among the regional circuits.(fn15) The Federal Circuit, however, did not see a need to limit the role of juries in patent cases. Despite the Seventh Circuit's 1983 holding that juries could not decide patent validity or...