Academic

Herlihy on Appellate Review of Patent Cliam Construction

By Lawrence Solum

Eileen M. Herlihy (New England Law) has posted Appellate Review of Patent Claim Construction: Should the Federal Circuit Be its Own Lexicographer In Matters Related to The Seventh Amendment? (Michigan Telecommunications and Technology Law Review, Vol. 15, p. 469, 2009) on SSRN. Here is the abstract:

This article addresses the need for a principled standard of appellate review of patent claim construction, emphasizing the necessity for such a standard to be compatible with Seventh Amendment law.

In Cybor Corp. v. FAS Technologies, Inc., the Federal Circuit resolved internal conflict regarding the appropriate standard of appellate review by establishing a de novo standard and overruling its past inconsistent precedent. The appropriateness of this de novo standard of appellate review has generated extensive debate and disagreement within the judiciary, the patent bar and academia. It has been over ten years since a majority of the Federal Circuit endorsed this standard of review, taking the position that it was in line with the Supreme Court's seminal Seventh Amendment Markman case, which holds that judges, rather than juries, should construe patent claims. Over the years since the Federal Circuit endorsed the de novo standard of review, the dissenting voices on the Federal Circuit have persisted and the number of Federal Circuit judges who are on record as indicating that the standard should be revisited has steadily grown.

Part I of this Article examines whether the Cybor rule of de novo appellate review of patent claim construction is consistent with Supreme Court precedent, focusing primarily on Seventh Amendment decisions. Part II discusses whether or not it is appropriate for the Federal Circuit to set the boundary between issues of fact and issues of law in patent cases. Finally, Part III addresses the extent to which various proposed standards of appellate review of claim construction are principled, with particular emphasis on their compatibility with the Seventh Amendment.

Full post as published by Legal Theory Blog on July 23, 2009 (boomark / email).