Who says claim construction is difficult? Who says it’s unpredictable? Nonsense! Claim construction is easy! Anyone can do it. You simply follow the clear guidelines set out by the Federal Circuit.
And where do you find those?
That’s easy too. The Federal Circuit has helpfully set them out in today’s en banc decision in Phillips v. AWH Corporation. Just read it — all fifty-six pages of it.
Start with the majority opinion by Judges Bryson, Michel, Clevenger, Rader, Schall, Gajarsa, Linn, Dyk and Prost. And check out the additional views of Judge Lourie, who joins with respect to parts I, II, III, V and VI, and those of Judge Newman who joins with respect to parts I, II, III, and V. But don’t forget Judge Lourie’s dissent-in-part in which Judge Newman joins. And then there’s the dissent from Judge Mayer, in which Judge Newman joins. But trust me, it makes sense. It really does. I’m so grateful the court has made things clear.
Seriously, I have not had a chance to do much more than skim the opinion, but my first reaction is, “you’ve got to be kidding.” Although the shorthand description of the holding might well be that “the specification takes precedence over dictionaries when interpreting claims,” if the court thinks it has somehow clarified the muddled body of law governing claim construction, it is greatly mistaken. With thirty-eight pages of “clarity” in the majority opinion alone, any moderately creative litigator can find ample support for just about any claim construction argument he’d like to advance. And at the end of the day, even though a majority of the judges claimed to agree on the law of construction, they still parted ways as to how the underlying case should ultimately be decided.
Personally, I think the dissenting opinion of Judges Mayer states far more eloquently than I can what is wrong here. In his words, “Now more than ever I am convinced of the futility, indeed the absurdity, of this court’s persistence in adhering to the falsehood that claim construction is a matter of law devoid of any factual component.” In a rare moment of judicial honesty, he recognizes that, “any attempt to fashion a coherent standard under this regime is pointless, as illustrated by our many failed attempts to do so.”
The judges haven’t asked me for advice on how to straighten out this mess, but I’ll offer some anyway. How about going back to basics, as Judge Markey did so effectively in the early days of the court’s existence? How about defining the scope of the patent by focusing on the words of the claims, not obscure statements in the specification? How about remembering that the Seventh Amendment still exists and once again letting juries decide the factual questions of what a patent actually discloses, what the inventor actually invented, and what his claims actually cover?
It’s wishful thinking, of course, to believe the court will ever voluntarily give up its self-created power to make the ultimate decision in every patent case. Judge Mayer’s dissent points out in stark terms the reality of modern patent litigation: “But after proposing no fewer than seven questions, receiving more than thirty amici curiae briefs, and whipping the bar into a frenzy of expectation, we say nothing new but merely restate what has become the practice over the last ten years — that we will decide cases according to whatever mode or method results in the outcome we desire, or at least allows us a seemingly plausible way out of the case.”
After a promising start, the Federal Circuit has lost its way in bringing stability and predictability to patent jurisprudence. Today’s decision confirms that things are likely to get worse before they get better.