I can do bad all by myself: a proposal for streamlining the claim construction process in patent litigation.

• Author: DeRegnaucourt, Staci R.

INTRODUCTION I. THE EVOLUTION OF CLAIM CONSTRUCTION & ITS ROLE IN PATENT INFRINGEMENT ACTIONS A. The Evolution of Claim Construction 1. Pre Markman v. Post Markman Claim Construction in Patent Cases 2. De Novo Review by the Federal Circuit B. Claim Construction Statistics and Reversal Rates C. The General Inefficiency Problem in Patent Litigation Stemming from Claim Construction II. A COMPARATIVE ANALYSIS OF PREVIOUSLY PROPOSED SOLUTIONS A. Previously Proposed Solutions for Claim Construction Reform 1. Specialized Patent District Courts 2. The Patent Pilot Program H.R. 5418 3. Conferring Jurisdiction Exclusively upon the Court of International Trade 4. Interlocutory Appeals of Right in Claim Construction Matters to the Federal Circuit B. The Essential Components to a Successful Solution III. PROPOSED SOLUTIONS A. Specialized Patent Magistrate Judges Incorporated into the Existing Article III Federal Court System B. Regional Patent Offices that Would Construe Patent Claims Prior to Litigation CONCLUSION INTRODUCTION

"It means just what I choose it to mean" (1) and "[it] depend[s] what the meaning of the word 'is' is." (2) These famous expressions are more likely than not embodied in the sentiments felt among federal district court judges when patent cases come across their desks. The reality is that the feeling is more than appropriate. Regardless of the effort put forth by district judges in the claim construction phase of a patent case, there is a disproportionately high probability (3) that, due to their inexperience in technical matters and the de novo standard of appellate review, the district judge will construe the claims of the asserted patent only to find out that the Federal Circuit thinks he is just plain wrong. This is a foreseeable disagreement, as language is imprecise, and a patent holder or alleged infringer must call on the courts to interpret the exact meaning of the drafting patent attorney's words and the meaning of long since drafted patent claims after shaping by the applicant and examiner amendments during prosecution. (4)

Yet, this disagreement creates an extremely inefficient patent litigation system. (5) It has become extremely difficult, if not impossible, for a patent practitioner to advise his client as to what a given patent protects, and even more difficult for district court judges to correctly render a claim construction that will be upheld throughout the entire patent litigation process. (6) Under the current claim construction regime, parties to a district court patent infringement action are likely to litigate through an entire trial based solely upon the district judge's original claim construction. (7) They will then more than likely have to relitigate the entire case on remand based on a new or recommended claim construction rendered by the Federal Circuit upon de novo appellate review, which reconstrues the minutia of the disputed claim terms. (8)

This Comment discusses the evolution of the law surrounding patent claim construction, the current inefficiencies in patent litigation and the claim construction process, and proposes two practical solutions to the claim construction quagmire. Part I sets forth the evolution of the claim construction process and the relevant law which governs the construction of claim terms, the standard of review on appeal, the incomprehensible reversal rates at the Federal Circuit, and the general inefficiencies in the patent litigation system. (9) Part II analyzes the previously proposed solutions to the inefficiency in patent litigation and claim construction and identifies the pitfalls of each. (10) Moreover, Part II, through its analysis of previously unsuccessful solutions, identifies the necessary components for a feasible solution to the claim construction quagmire. (11) Part III identifies two practical solutions calling for initial claim construction to be performed by a specialized patent agent magistrate within the current Article III court system or, in the alternative, by newly created regional patent offices, which will construe disputed claim terms with subsequent infringement disputes to be litigated in federal district court. (12)

1. THE EVOLUTION OF CLAIM CONSTRUCTION & ITS ROLE IN PATENT INFRINGEMENT ACTIONS

   Modern patent litigation is an adversarial two-step process conducted by (1) construing the patent claims at issue to determine the scope of protection provided by the patent and (2) comparing the construed patent claim with the accused or allegedly infringing product, process, or device. (13) If each element of the construed claim in the issued patent is found literally or by the doctrine of equivalents to be present in the accused product, process, or device, the accused product will infringe. (14) Since claim construction is necessarily the first step in determining whether an accused product infringes, it is an issue in nearly all patent litigation cases. (15) Thus, the parties' respective claim constructions regarding the disputed claim terms are generally hotly contested. (16) Moreover, these disputes over claim construction and the overall claim construction adopted by the court are overwhelmingly the dispositive factor on the issue of infringement. This occurs because once the decision of what the claim terms "actually" mean is rendered, it is often apparent to one of ordinary skill in the art, or even a layperson, whether the accused product, process, or device infringes the asserted patent. (17)

   1. The Evolution of Claim Construction

      Modern claim construction is the process of interpreting the scope of a patent and the claims therein. (18) Historically, courts considered the patent in its entirety in construing the value and scope of the patentee's property right. (19) In 1811, the court saw its first example of a modern patent claim in Robert Fulton's patent on the steamboat. (20) In 1870, patent claims became a requirement for patentees to receive patent protection. (21) Following this evolution and the Patent Act of 1952, courts have determined that the claims of a patent define the patentee's property right, and the scope of patent rights has been construed accordingly. (22) While it may seem quite simple to interpret the language of patent claims, in fact, it is extremely difficult and unpredictable, as words are often imprecise and fluctuate in meaning. (23) This imprecision of language is even more pronounced due to the lexicographic capabilities of the modern patent drafter, and the capacity of patent claims to be reasonably construed in a number of ways by different constructionists through the use of both internal and external sources. (24)

      In order to lend some order to claim construction, the Federal Circuit has articulated several canons to be employed in defining the terms of a patent. (25) The major canons of claim construction are defined as follows: (1) claims should be interpreted such that the preferred embodiment falls within their scope; (26) (2) a patent claim is not necessarily limited to the preferred embodiment, and such limitations from the written description should not be read into the claims; (27) (3) two claims in the same patent should be interpreted as having different scopes; (28) (4) claims should be interpreted to preserve their validity; (29) (5) when there is an equal choice between broad and narrow claim construction, the narrow should be adopted; (30) (6) a term repeatedly used in the patent claims must be construed consistently throughout; (31) (7) a preamble is a limitation when it breathes life and meaning into the claims; (32) (8) a patentee "is free to be his [or her] own lexicographer[;]" (33) and (9) the prosecution history may be used to limit the claim scope where specific meanings have been disclaimed during prosecution to render the claims allowable. (34) While the form of claim construction continued to change, these canons have been used consistently. (35) Although the canons enumerated herein are the major and most widely accepted canons of claim construction, courts may employ various other considerations on a case-by-case basis. (36) Yet, these additional considerations, as well as the major canons of claim construction, can often render contradictory results, and at times may be less than helpful in construing disputed claim terms. (37) The evolution of the form of claim construction is detailed and discussed below based upon two landmark patent claim construction cases Markman v. Westview Instruments (38) and Cybor Corp. v. FAS Technologies, Inc. (39)

      1. Pre Markman v. Post Markman Claim Construction in Patent Cases

         Patent claims, in the various types of litigated patent cases, were originally construed by the jury until the mid-1990s and the decision in Markman I. (40) The untrained lay jury was saddled with the burden of both construing the claims and determining infringement of those claims. (41) Nearly all aspects of a patent case that reached trial were reserved as factual determinations to be made by an untrained and often technically unsophisticated factfinder. (42) The role of judges in patent cases from the early 1990s was almost nonexistent, as they served merely as order keepers fulfilling the routine functions of instructing the jury as to the canons of claim construction as well as the applicable law and determining post trial relief. (43)

         In the mid-1990s the Court looked to streamline the claim construction process, emphasizing a need for predictability and uniformity in patent cases, which could not be achieved through the previous system. (44) Allowing lay juries to hedge their way through the claim construction process often resulted in the injection of far too much uncertainty in patent infringement actions. (45) In the landmark decision of Markman I, the Federal Circuit established that when determining patent infringement allegations, decisions regarding claim construction, determination of the claim's scope, and the...