Two themes echoed throughout yesterday’s Senate Subcommittee hearing on patent reform. First is the need to improve patent quality. Second is the need to improve efficiency in patent litigation.

Given these laudable goals, last week’s Federal Circuit decision in Hoffer v. Microsoft, et al. left me scratching my head.

After spending considerable time construing the claims of the patent in suit, the District Court concluded on summary judgment that some claims were invalid and that none were infringed.

On appeal, the Federal Circuit concluded that the District Court was wrong to invalidate some of the claims, but that its non-infringement holding was entirely proper given that the accused products lacked an essential element required by the claims. The Federal Circuit thus upheld the summary judgment finding of non-infringement and the defendants were off the hook. Case closed.

But what about the future? Should both the patent owner and the public be deprived of the benefit of the considerable work already put into claim construction?

In a well-reasoned concurring opinion, Judge Newman questioned whether the Federal Circuit shirked its duties by not reviewing and passing judgment on the full claim construction determined by the District Court. The panel majority considered just enough of the claim construction to affirm the finding of non-infringement and no more. As to the remaining claim terms — the ones the parties spent considerable time and money developing and the ones the District Court spent considerable time analyzing and deciding — the majority simply conducted no review and passed no judgment. Should the same patent ever be litigated again, the District Court (most likely a different one) will begin the claim construction process all over again. Is this efficient? Does this promote predictability and certainty in patent cases? Does this make sense? Judge Newman, correctly in my view, said “no, it does not.”

One of the biggest time and money wasters in modern patent litigation is this business of Markman claim construction in the district court, with de novo review by the Federal Circuit perhaps years later. After literally years of litigation and millions in fees and costs, cases are often sent back to the beginning by a Federal Circuit panel that finds “error” in the district court’s claim construction made in the earliest stages. It’s almost as if we let the baseball game get into the ninth inning before the plate umpire decides whether that 3-2 pitch back in the first was a ball or strike. It doesn’t make sense. And given the near unanimous agreement that patent litigation takes far too long, costs far too much, and is far too uncertain, why the Federal Circuit seems loath actually to decide important issues of patent scope leaves me baffled.

On a personal note, I’m happy to see that one of my professional acquaintances, Neil A. Smith, represented one of the successful defendants.