To construe or not to construe: at the interface between claim construction and infringement in patent cases.

• Author: Mudd, Jason R.
• Position: Evolving the Court of Appeals for the Federal Circuit and Its Patent Law Jurisprudence

1. INTRODUCTION

   The United States Court of Appeals for the Federal Circuit is approaching its thirtieth anniversary (1) as the key driving force behind development of patent law in the United States. (2) As a single, specialized appellate court, the Federal Circuit has exclusive jurisdiction to hear patent appeals from U.S. district courts and the International Trade Commission. (3) Its ability to adapt modern patent jurisprudence to address the evolving concerns of the patent law community and the needs of the patent system is unique and powerful. (4) A frequently exercised and somewhat controversial power of the Federal Circuit is its ability to perform de novo review of trial court determinations of claim construction, which assigns a legal scope to patent claims as a matter of law. (5) Claim construction is perhaps the most critical issue in patent disputes and commentators frequently identify it as a key factor underlying high reversal rates and uncertainty in patent law. (6)

   This fundamental issue in how our courts resolve patent disputes involves a difficult line-drawing exercise between two steps: First, the court must construe the legal scope of patent claims as a matter of law, and, second, the fact finder must apply the construed claims to the accused instrumentality to determine infringement as a question of fact. (7) The Federal Circuit recognized this theoretical construct early in its jurisprudence (8) and subsequently said it "requires two separate steps." (9) Further, the Markman v. Westview Instruments, Inc. and Cybor Corp. v. FAS Technologies, Inc. opinions have "invigorated" (10) and "amplified" the first step, claim construction, as a threshold legal inquiry to be performed exclusively by the court prior to addressing the question of infringement. (11) As a consequence, drawing the line between these two inquiries, which occurs in every patent dispute, usually has the effect of determining whether a judge, as a matter of law, or a jury, as a matter of fact, resolves the question of infringement. (12) This line, however, is often difficult to draw and is subject to potential strategic maneuvering. Because of the difficulty in drawing this line, the Federal Circuit's precedents often seem to provide inconsistent guidance on how far the judge's duty to construe claims extends and where the fact finder's role in determining infringement begins. (13) As a result, courts and litigants have substantial leeway in defining the law-fact divide and, perhaps, the judge-jury allocation in individual cases.

   This Article conceptualizes the imaginary "line" or "boundary" that lies at the interface between the legal inquiry of claim construction and the separate, factual inquiry of infringement by analyzing it in two key respects: "procedural" and "substantive." The line exists procedurally as the proximity in time between the act of construing claim scope and the act of applying that claim scope to the accused instrumentality. The line exists substantively in the extent to which claim construction is used to define the boundaries and contours of claim scope in a manner that readily maps to an accused product versus the extent to which "unconstrued" plain claim language is simply compared to the accused product. Whether considered in the procedural or substantive context, the law has difficulty drawing precise boundaries between claim construction and infringement, which are, in theory, separate inquiries of fact and law. As a result, in practice, this boundary may perhaps more appropriately be understood as existing on a continuum, rather than as a line.

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   This Article examines the blurring of this interface in both the "procedural" and "substantive" contexts. Part I discusses the background and modern legal framework for classifying claim construction as a pure question of law that is answered prior to and separate from the issue of infringement. Part II analyzes the claim construction-infringement boundary in a procedural context by examining the stages of a case at which these inquiries are typically performed and the degree to which courts construe claims "in a vacuum," without reference to the accused product. This Part explains that courts are becoming increasingly accepting of and often prefer conducting claim construction in the context of the accused product, which blurs the procedural "line" between claim construction and infringement. Part III analyzes the claim construction-infringement boundary in the substantive context by examining the extent to which a court obliquely can apply the "plain and ordinary meaning" of claim terms to an accused product to assess infringement without further construing claim language to define claim scope. This Part discusses how the Federal Circuit's O2 Micro International Ltd. v. Beyond Innovation Technology, Co. opinion biases the substantive boundary toward deciding liability as a legal question of claim construction. Finally, Part IV concludes with a series of strategic considerations for litigants in light of the conclusion that claim construction and infringement, in practice, lie on a continuum of uncertainty, rather than in separate inquires cleanly divided by a bright line.

2. ESTABLISHMENT OF THE MODERN CLAIM CONSTRUCTION INQUIRY THROUGH MARKMAN AND CYBOR

   1. Markman

      In the landmark U.S. Supreme Court case, Markman v. Westview Instruments, Inc., the patentee contended that the meaning of the claim term "inventory" was a factual issue that he was entitled to present to a jury under the Seventh Amendment. (14) A divided en banc Federal Circuit had held that the right to a jury trial on the question of infringement did not extend to matters of claim construction. (15) The Supreme Court unanimously affirmed the Federal Circuit. (16) As with other Seventh Amendment questions, the Supreme Court conducted a detailed examination of the common law tradition to determine whether issues of claim interpretation (or interpretation of patent documents) were handled by judges or juries. (17) Ultimately, the Court did not find sufficient evidence of juries performing this task and, accordingly, held that the Seventh Amendment did not apply. (18) Next, for predominantly functional and policy reasons, the Court held that interpretation of claim terms should be performed exclusively by judges, rather than juries. (19)

      Since Markman, the issue of claim construction being decided by the court, rather than the finder of fact, has been entrenched firmly in patent law. (20) Subsequent to Markman, a somewhat open question remained as to whether the Federal Circuit should provide any deference to lower courts' claim construction determinations, especially where those constructions were based on substantial factual considerations. Cybor Corp. v. FAS Technologies, Inc. answered this question. (21)

   2. Cybor

      The Federal Circuit's en banc Cybor decision is said to have "amplified" the effect of Markman. (22) Cybor did so by confirming that claim construction is a "purely legal question" that is reviewed de novo on appeal by the Federal Circuit. (23) The majority opinion was premised on the view that the Supreme Court's Markman opinion had left undisturbed the Federal Circuit's holding in Markman that claim construction is purely a matter of law. (24) Several judges, though concurring in the judgment, disagreed with the majority's interpretation of the Supreme Court's Markman opinion. (25) In Judge Rader's view, the Supreme Court did not address appellate review of claim construction and instead "repeatedly intimated that claim construction was not a purely legal matter." (26) Rader disagreed with the view that claim construction was a pure question of law to be reviewed de novo and argued that this holding "will undermine, if not destroy, the values of certainty and predictability sought by Markman I" because no deference would be given to trial court claim interpretations. (27) Judge Newman similarly argued that it was a "fiction" to suggest that claim interpretation was purely legal and does not involve the finding of any facts. (28) In her view, the Supreme Court had not affirmed the Federal Circuit's "fact/law theory" and called it an "artificial construct." (29) Judge Mayer also viewed Markman as not prohibiting the submission of subsidiary factual disputes to a jury even though it requires the judge to make the ultimate determination as to the legal meaning of a claim. (30) He found this interpretation to be especially supported in the case of means-plus-function claim elements, which are construed, as a matter of law, to cover corresponding structure and equivalents thereof, but with the scope of such equivalents being a question of fact for the fact finder. (31) As Mayer acknowledged, the claim construction and infringement inquiries collapse into one in this context. (32)

      Years later, the Federal Circuit remains divided over the fact-law dichotomy that preserves claim construction as a "pure" matter of law. Judge Mayer's dissent in Phillips v. AWH Corp. demonstrated this persistent division in a case that was to resolve differences as to the proper methodology for claim construction. (33) His strong dissent, joined by Judge Newman, stated that they were "convinced of the futility, indeed the absurdity, of this court's persistence in adhering to the falsehood that claim construction is a matter of law devoid of any factual component." (34) The Federal Circuit was presented with the opportunity to re-visit Cybor by a petition for re-hearing en banc in the Amgen Inc. v. Hoechst Marion Roussel, Inc., case in 2006. (35) Though the petition was denied, seven judges expressed a desire to reconsider the Federal Circuit's rule of no deference from Cybor. (36) In the view of then Chief Judge Paul Michel, the Federal Circuit's eight years of experience with the Markman-Cybor regime had revealed several practical problems. (37) These problems included a...