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Quote of the Week (on De Novo Claim Construction at the Federal Circuit)

By William F. Heinze

From Federal Circuit Judge Bryson in Tivo v. Echostar Communications (January 31, 2008) at footnote 2:

As noted, the district court based its construction of the software claims on its conclusion as to what the critical claim terms would mean to a person of skill in the art. That conclusion in turn was largely based on the court?s assessment of extrinsic evidence. Although we have characterized claim construction as a question of law even when it involves competing presentations of extrinsic evidence, Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc), we recognize that there is substantial force to the proposition that such a conclusion is indistinguishable in any significant respect from a conventional finding of fact, to which we typically accord deference. See Amgen Inc. v. Hoechst Marion Rousel, Inc., 469 F.3d 1039, 1041 (Fed. Cir. 2006) (Michel, C.J., dissenting from denial of rehearing en banc); id. at 1043 (Newman, J., dissenting from denial of rehearing en banc); id. at 1044 (Rader, J., dissenting from denial of rehearing en banc); id. at 1045 (Gajarsa, J., concurring in denial of rehearing en banc); id. at 1046 (Moore, J., dissenting from denial of rehearing en banc). Applying our governing non-deferential standard of review, we uphold the district court?s conclusion in this case. If we were to treat that ruling as a finding of fact, we would uphold the district court?s ruling a fortiori in light of the more deferential ?clear error? standard applicable to factual findings.

Full post as published by I/P Updates on February 04, 2008 (boomark / email).