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September 29, 2014

Comments

Andrew,

I won't be too distressed (if at all) if the Cybor standard for review of claim construction is overturned or at least modified. To say that claim construction is strictly a question of law fails to reflect that many of the terms in the claim are based on technological definitions which are inherently factual and require factual evidence to understand properly. It also gave each Federal Circuit panel essentially carte blanche to construe the claims without regard to how the district court judge construed them. May be our Royal Nine should take that as a "hint" that they've being doing the same thing to the Federal Circuit when it comes to patent law jurisprudence generally.

While I agree that the practice of having the Federal Circuit construe claims de novo has led to inconsistencies, I think we also need to recognize that in many instances determining the factual meaning of a claim term is dispositive of the legal question. So just saying that the Court should defer to the district court's construction as a matter of fact swallows the principle.

Part of the solution is the same solution that applies to the Supreme Court's forays into patent law - overturn the lower court when it is clear there has been a mistake made but forswear acting if the question seems to be one best decided below (either because there are issues of witness credibility or the court's special expertise, respectively). Regarding claim construction, the Court can also direct the parties in disputing construction to a term or terms of particular relevance (which usually happens anyway).

Finally, the Federal Circuit has developed a tendency to try to "do what's right" over the past few years, and while the sentiment is admirable sometimes the law requires that the nefarious infringer prevail or the virtuous patentee fail (sometimes at the same time). Less trying to avoid an unjust result and more adhering to patent law principles would go a long way towards fixing the current situation.

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