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18 IPL Newsl. 1 (1999-2000)

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FALL 1999

   The Federal Circuit's De Novo Review
            of Patent Claim Construction:
A Need for a More Balanced Approach

                                  BY LUKE L. DAUCHOT

                   The question of appellate defer-
                 ence to the claim construction
                 process at the trial level long has been
                 a source of deep division within the
                 Court of Appeals for the Federal
                 Circuit (CAFC). At the root of the
                 division lie two competing interests:
                 consistency and certainty in the inter-
 Luko Dauchot    pretation of patents, on the one hand,
 and the primacy of trial courts in resolving factual dis-
 putes, on the other.
   In Cybor Corp. v. FAS Techs., Inc.,' the CAFC sought
to quell the division by disavow[ing] any language in
previous opinions of th[e] court that holds, purports to
hold, states, or suggests anything . . . contrary'2 to the
proposition that patent claim interpretation is purely a
question of law, subject to de novo review. The en banc
opinion, however, was diluted by concurring opinions
that signal varying degrees of discomfort with the con-
cept of absolute appellate dominion over the claim
construction process, particularly, the reasoning that
patent claim interpretation is a question of law alone,
devoid of fact-based issues.
   The controversial premise that trial courts resolve no
factual issues when interpreting patent claims reverber-
ates beyond the question of appellate de novo review and
reaches the use of extrinsic evidence to interpret a
patent. If trial courts resolve no factual questions when
construction patent claims, why is evidence extrinsic to
the four corners of the patent and its prosecution history
ever needed or appropriate to interpret patents?
   Indeed, the proliferation of seemingly conflicting
decisions regarding the proper use of extrinsic evidence
since the advent of the CAFC's de novo regime is no
historical accident. For example, three years ago in
Vitronics Corp. it Conceptvtnic, hnc.,3 the court branded
the use of extrinsic evidence-particularly expert testi-

   Luke Dauchot is a partner with the firm of Thompson, Hine &
Fiory LLP in Cleveland.

mony-as an interpretational tool of last resort, to be
avoided in all but the rare instance where the intrin-
sic record (i.e., the patent and prosecution history), left
sufficient ambiguity about the meaning of claim lan-
guage to justify its use. In June 1999, the CAFC reversed
course, stating that the use of expert testimony as a tool
for patent claim construction was preferable, even in the
context of an unambiguous intrinsic record.4
  Markman v Westview Instruments, Inc.,1 was the
court's first attempt to deal head-on with the 'fact-law'
dichotomy6 of claim interpretation and its impact on
appellate review. Aiming to settle inconsistencies in our
precedent'7 the court held that claim construction was a
matter exclusively within the province of the court and
not subject to the Seventh Amendment right to a jury.
But the court went beyond shifting the claim interpreta-
tion process from jury to judge and concluded that the
claim interpretation process was one purely of law and,
therefore, subject to de novo review on appeal.' To ratio-
nalize its complete dominion over claim interpretation,
notwithstanding the long-standing practice of employing
extrinsic evidence to construct patents, the court rea-
soned that resort to extrinsic evidence was a disfavored
practice that did not, in any event, involve fact-finding.9
   Although the rationale ran afoul of the court's own
precedent, even precedent authored by then-Chief Judge
Archer, the author of Markman 1,10 it was a sine qua non
                                (continued on page 4)

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