Academic

Herlihy on the Seventh Amendment & Patent Law

By Lawrence Solum

Eileen M. Herlihy (New England Law) has posted The Ripple Effect of Seventh Amendment Decisions on the Development of Substantive Patent Law (Santa Clara Computer and High Technology Law Journal, Vol. 27, 2011 ) on SSRN. Here is the abstract:

In determining whether a judge or jury should decide particular issues in patent cases, the Federal Circuit has placed too much emphasis on reaching outcomes perceived to be beneficial from a policy perspective and too little emphasis on performing analyses that are consistent with Supreme Court Seventh Amendment precedent. The irony is that in the course of reaching Seventh Amendment outcomes perceived to foster certainty and uniformity, the Federal Circuit has engaged in expedient and unprincipled analyses that have themselves spawned widespread problems in substantive patent law.

This article examines the ripple effect of statements and intermediate conclusions set forth in the course of flawed Seventh Amendment analyses in the Federal Circuit's decisions in Markman and Hilton Davis. In relying principally on a fact versus law approach to Seventh Amendment issues in patent cases, an approach not employed by the Supreme Court in addressing such issues, the Federal Circuit has generated faulty and inadequately supported statements and intermediate conclusions that have adversely affected substantive law. Compounding the problem, the Supreme Court has shown excessive deference to the Federal Circuit in this area.

This article addresses the impact of the Federal Circuit's faulty Seventh Amendment analyses on the substantive law in three areas related to claim scope: claim construction, the doctrine of equivalents and prosecution history estoppel. In each of these areas, statements and intermediate conclusions contained in the flawed Seventh Amendment analyses have created confusion, tension and conflict in the substantive law. The adverse impact has affected a host of issues ranging from the proper role of one of ordinary skill in the art, to the tension between claim scope under the doctrine of equivalents and claim construction. As a result, there is a pressing need to correct the Federal Circuit's faulty statements and intermediate conclusions, which have been consistently applied and reapplied in cases, and revisit the Seventh Amendment issue in Hilton Davis which was left undecided by the Supreme Court.

Full post as published by Legal Theory Blog on January 10, 2011 (boomark / email).