Simplicity at the cost of clarity: appellate review of claim construction and the failed promise of Cybor.

• Author: Burgess, William H.

In its en banc ruling in Cybor Corp. v. FAS Technologies, Inc., (1) the Federal Circuit attempted to settle much of the confusion surrounding appellate review of claim construction with a simple bright-line rule--it declared that claim construction is a pure matter of law with no underlying factual inquiries, and therefore reviewable de novo on appeal. In the years leading up to Cybor, the federal district courts were struggling to apply the Federal Circuit's rules on claim construction, and the Federal Circuit and the district courts were struggling to parse the issues of fact and law implicated in claim construction. The promise of Cybor was in its simplicity. No longer would the district courts have to separate issues of law and fact in claim construction, and by securing de novo review the Federal Circuit would be freer to lead by example and could ensure consistency and uniformity in claim construction by taking the issue for itself. Further, the Cybor ruling has been understood as wholly consistent with the Supreme Court's prior decision on claim construction in Markman v. Westview Instruments, Inc. (2)

In this Comment, I argue that, counterintuitively, the bright-line rule drawn by Cybor has resulted in a great deal of inconsistency in the Federal Circuit's claim construction jurisprudence. The reason for this, I argue, is that certain issues underlying claim construction are immutably questions of fact rather than law. Once the Federal Circuit made a rule that required it to force fact questions to behave as pure legal issues, the rule became difficult to apply consistently, and had four principal effects: (1) in some cases the rule was impossible to apply without strained logic, such as remands for "lawfinding"; (2) some judges have partially defected and been lax in their application of the rule; (3) the Cybor rule began infecting other areas of patent law and blurring the line between fact and law issues by analogy to claim construction; and (4) these first three results have led to confusion at the district court level. Further, I argue, the Cybor decision is best understood as either tangential to, or inconsistent with, the Supreme Court's Markman decision.

This Comment is in four parts. Part I provides background information on the issues discussed here. Part II discusses the doctrinal inconsistency between Cybor and Federal Circuit and Supreme Court precedent. Part III traces the effects of the Cybor rule on the Federal Circuit's jurisprudence. Finally, the Comment concludes with a call for the Federal Circuit either to overrule Cybor and seek uniformity in claim construction through less drastic bright-line rules that focus on the process of claim construction itself, or to scale back Cybor and acknowledge that it reviews claim construction de novo on appeal because of a useful legal fiction. To the extent that the Federal Circuit has given itself the opportunity to reconsider Cyborwhen it hears Phillips v. AWH Corp. en banc, (3) it should do so with regard for the issues addressed here.

1. BACKGROUND ON THE FEDERAL CIRCUIT, CLAIM CONSTRUCTION, AND CYBOR

   1. The Federal Circuit

      The United States Court of Appeals for the Federal Circuit (Federal Circuit) is likely the most influential actor in the system of patent law, (4) and has exclusive jurisdiction over all appeals from patent cases in the federal district courts and from final decisions of the United States Patent and Trademark Office (PTO). (5) Congress created the Federal Circuit in 1982, (6) largely in response to concerns about the state of patent law in the regional circuits, most notably a lack of inter-circuit uniformity and a lack of deference to the findings of the PTO. (7) By 1982, different regional circuits had developed disparate reputations for being particularly favorable or unfavorable to patentees, resulting in a great deal of forum shopping. (8) Further, the lack of deference to the PTO's determinations of patentability cheapened the general value of patents because of the increased likelihood that patents would be invalidated in litigation. (9) Congress gave the Federal Circuit exclusive jurisdiction over patent appeals to solve these problems and to bring greater uniformity to patent law. (10) For reasons of efficiency, and to alleviate concern that the Federal Circuit would become too narrowly specialized and develop an institutional bias, (11) the Federal Circuit was also given responsibility for appeals from various administrative and specialty courts (e.g., the Court of Veterans' Appeals). (12)

      As the lone appellate court in the federal system whose jurisdiction is based on subject matter rather than geography, the Federal Circuit is a sustained experiment, (13) and its unique aspects raise questions about whether it should fill the same role in the federal court system as the regional circuits, relative to the district courts and the Supreme Court. Professor Rochelle Cooper Dreyfuss wrote the seminal article on the Federal Circuit in 1989. (14) In the article, she assessed the court's performance over the previous years, predicted some of its challenges for the future, and argued that its most significant overall challenge would be "to develop a concept of itself as a court." (15) Professor Dreyfuss noted that the Federal Circuit's superior expertise and experience in patent law strained the assumption underlying Rule 52 (a) of the Federal Rules of Civil Procedure (16)--that district courts are in a better position to decide factual issues. (17) Rule 52(a)'s requirement of deference to factual findings of trial courts also "puts pressure on the distinction between fact and law." (18) Thus, the article stated, the challenge to the Federal Circuit in developing a concept of itself as a court would include the resolution of procedural issues (19) and finding "some method for reversing [district court] decisions that it believes are unresponsive to the spirit of its teachings." (20) The article seems to have accurately predicted the future of the Federal Circuit in this regard, for one of the procedural issues that has risen to great importance recently is the Federal Circuit's review of claim construction. This Comment argues that, through its decision in Cybor, the Federal Circuit has found a way to reverse district court decisions that are unresponsive to its teachings, but has done so in a way that has clouded the clarity of its teachings.

   2. Claim Construction

      Claim construction is probably the most important issue in patent infringement litigation. (21) Like the interpretation of a statute or a contract, claim construction is the process by which a court determines the meaning of the words in a patent claim for the purposes of the litigation. This is important because the scope of an inventor's patent, and consequently her right to sue others for infringement, is determined entirely by the meaning that the court gives to the claims of the patent document, not by the physical invention, the history of the inventive process, or anything else filed in the patent office. (22)

      When an inventor files for a patent, her application must include: (1) a written description of the invention, including a description of the field (e.g., chemistry, circuit design, microbiology, etc.), a description of the prior art, and a detailed description of the invention that the inventor seeks to patent; (23) (2) drawings of the invention, if necessary; (24) and (3) claims. (25) In the claims portion of the application, the inventor cabins the scope of the patent by "particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." (26) When an inventor accuses another of infringing her patent, the question of infringement hinges on whether the accused infringer's device contains "all elements" of the patent claim that is allegedly infringed. (27) Thus, if an inventor were to claim "a writing implement comprising: (a) a wooden cylinder with a hollow core, (b) a cylinder of graphite in said hollow core, and (c) a small cylinder of eraser material attached to one end of the wooden cylinder," a typical wooden pencil with a metal shirt-pocket clip added to it would literally infringe the claim because it contains all three elements of the claim, while a typical pencil without an eraser would not, because it lacks element (c). (28)

      Most patent infringement trials, however, involve technology more complex than wooden pencils, and the first step of any patent infringement trial is for the trial court to read the patent claims and determine their meaning. (29) Once the trial court construes the claims, the next step is to compare the claims to the accused device. (30) It often happens that the trial court's claim construction either clearly does or does not encompass the infringer's device, and it becomes unnecessary to proceed further to the question of infringement. Judge Mayer has asserted that "to decide what the claims mean is nearly always to decide the case." (31) Unfortunately, claim construction is a complicated and contentious process, and recent studies have shown that district courts' claim constructions are reversed by the Federal Circuit in as many as forty percent of the appeals in which the issue arises. (32)

   3. Markman and Cybor and the Federal Circuit's Review of Claim Construction

      In its review of claim construction, as with all other issues appealed from the district courts, the Federal Circuit is constrained by Rule 52(a) of the Federal Rules of Civil Procedure, and is thus bound to defer to the district courts on issues of fact. (33) Although the Federal Circuit's special expertise puts pressure on this notion of deference, (34) the Panduit cases, spanning from 1985 through 1987, established that Rule 52(a) applies equally to the Federal Circuit as to the regional circuits.

      In 1985, in Panduit Corp. v. Dennison Manufacturing Co., the Federal Circuit considered...