The Only Certainty is Uncertainty: Patent Claim Construction in the United States Court of Appeals for the Federal Circuit

Authors

• Rainey C. Booth Jr.

Document Type

Note

Abstract

The law of patent claim construction has been in flux over the past twenty years. Patent claim construction is integral to the function of the patent system. Patent claims are the elements of the patent document that define the boundaries of the holder’s property rights. As such, claim construction has the potential to be outcome determinative in a majority of patent litigation. The U.S. Court of Appeals for the Federal Circuit, originally created by Congress with the intent to provide uniformity and predictability to this area of the law, has been increasingly reviewed and reversed by the Supreme Court. Concurrently, the Federal Circuit has been reversing the district courts on matters of claim construction at very high rate. The Federal Circuit’s high reversal rate, combined with the increasing intervention by the Supreme Court in cases concerning intellectual property law, has frustrated the objectives of Congress in creating the court. The law surrounding patent claim construction is particularly uncertain, creating inefficiencies by increasing litigation.

All this uncertainty sprouted from one case, Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (Markman II). A close reading of this case reveals a fundamental flaw in reasoning that, when reexamined, leads to the conclusion that this uncertainty could be remedied. This Note argues that the decision in Markman II was based substantially on a faulty premise: that judges, as opposed to juries, are better equipped to construe patent claims. Part I of this Note summarizes the law of patent claim construction, with an emphasis on the Court’s opinion in Markman II. In Part II, this Note suggests this premise of judicial superiority espoused in Markman II has been refuted by the data on the analysis of the U.S. Court of Appeals for the Federal Circuit. In Part III, this Note argues in favor of reversing Markman II and extending the Seventh Amendment right to a jury trial on issues of patent claim construction.

Recommended Citation

Rainey C. Booth Jr., The Only Certainty is Uncertainty: Patent Claim Construction in the United States Court of Appeals for the Federal Circuit, 21 J. Tech. L. & Pol'y (2016).
Available at: https://scholarship.law.ufl.edu/jtlp/vol21/iss2/4