Patent claim construction: An appeal for Chevron deference

Virginia Law Review

Volumn 94, Issue 5, 2008, Pages 1165-1212

  Chen, Thomas ^a  

^a NONE

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EID: 55349115104     PISSN: 00426601     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Review

References (210)

1. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc); Markman v. Westview Instruments, Inc. (Markman I), 52 F.3d 967 (Fed. Cir. 1995) (en banc).
2. See Markman v. Westview Instruments, Inc. (Markman II), 517 U.S. 370 (1996).
3. Cybor, 138 F.3d 1448.
4. Phillips, 415 F.3d 1303.
5. Id. at 1328.
6. Amgen Inc. v. Hoechst Marion Roussel, Inc., 469 F.3d 1039 (Fed. Cir. 2006), cert. denied, 127 S. Ct. 2270 (2007).
7. See Dennis Crouch, In Fractured Decision, CAFC Refuses to Reexamine De Novo Claim Construction, Patently-O Patent Law Blog (2006), http://www. patentlyo.com/patent/2006/11/in_fractured_de.html;
8. Harold C. Wegner, Wegner's Top Ten Supreme Court Patent Cases 1 (2006), http://cs.foley.com/06.2689_tacpi/tacp_downloads/Top10/TopTenNOV30.pdf.
9. See Christopher A. Cotropia, Patent Claim Interpretation and Information Costs, 9 Lewis & Clark L. Rev. 57, 72 (2005).
10. John F. Duffy, On Improving the Legal Process of Claim Interpretation: Administrative Alternatives, 2 Wash. U. J.L. & Pol'y 109, 109 (2000).
11. Giles S. Rich, Extent of Protection and Interpretation of Claims - American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499 (1990).
12. Markman v. Westview Instruments, Inc. (Markman I), 52 F.3d 967, 989 (Fed. Cir. 1995) (en banc) (Mayer, J., concurring).
13. See Joseph Scott Miller, Enhancing Patent Disclosure for Faithful Claim Construction, 9 Lewis & Clark L. Rev. 177, 192 (2005); see also 35 U.S.C. §§ 102-103, 112 (2000).
14. Cotropia, supra note 8, at 63.
15. See Miller, supra note 12, at 199.
16. See Kimberly A. Moore, Are District Court Judges Equipped to Resolve Patent Cases?, 15 Harv. J.L. & Tech. 1, 2 (2001) ("[C]laim construction is the touchstone for any infringement or validity analysis.").
17. See Markman I, 52 F.3d at 976.
18. Cotropia, supra note 8, at 74-75.
19. Markman I, 52 F.3d at 976.
20. Id. at 979.
21. See id. at 987.
22. See Markman v. Westview Instruments, Inc. (Markman II), 517 U.S. 370, 372 (1996) ("[T]he construction of a patent, including terms of art within its claim, is exclusively within the province of the court.").
23. Id. at 388.
24. See id. at 384.
25. Id. at 388-89.
26. Id. at 390-91.
27. Markman I, 52 F.3d at 979.
28. See Cybor, 138 F.3d at 1454.
29. Markman II, 517 U.S. at 378.
30. Cybor, 138 F.3d at 1451.
31. For instance, Judge Plager concurred with the qualification that, although claim interpretations would be reviewed de novo in the formal sense, "common sense dictates that the trial judge's view will carry weight. That weight may vary depending on the care, as shown in the record, with which that view was developed, and the information on which it is based." Id. at 1462 (Plager, J., concurring). Likewise, Judge Bryson felt it was important to note that de novo review does not mean that we intend to disregard the work done by district courts in claim construction or that we will give no weight to a district court's conclusion as to claim construction . . . . Simply because a particular issue is denominated a question of law does not mean that the reviewing court will attach no weight to the conclusion reached by the tribunal it reviews. Id. at 1463 (Bryson, J., concurring). Judge Mayer, joined by Judge Newman, criticized the Cybor decision for misapprehending Markman II, noting that in cases involving conflicting factual determinations and evidence, as claim construction often does, "all that Markman stands for is that the judge will do the resolving, not the jury. Wisely, the Supreme Court stopped short of authorizing us to find facts de novo when evidentiary disputes exist as part of the construction of a patent claim . . . ." Id. at 1464 (Mayer, C.J., concurring). Judge Rader, in his dissent, agreed that the Supreme Court "did not address appellate review of claim construction" in its Markman II decision and cautioned that de novo review "has the potential to undercut the benefits of Markman I." Id. at 1473, 1475 (Rader, J., dissenting).
32. See Christian A. Chu, Empirical Analysis of the Federal Circuit's Claim Construction Trends, 16 Berkeley Tech. L.J. 1075, 1075 (2001) ("This study reveals an increasing trend in claim construction modifications and claim interpretation-based reversals since Cybor Corp.'s reaffirmation of the de novo review standard.");
33. Kimberly A. Moore, Markman Eight Years Later: Is Claim Construction More Predictable?, 9 Lewis & Clark L. Rev. 231, 231 (2005) ("[An] analysis of the reversal rate supports the growing criticism that Markman has created confusion, not guidance, in claim construction cases, and the confusion is getting worse.");
34. M. Reed Staheli, Deserved Deference: Reconsidering the De Novo Standard of Review for Claim Construction, 3 Marq. Intell. Prop. L. Rev. 181, 183 (1999);
35. William H. Burgess, Comment, Simplicity at the Cost of Clarity: Appellate Review of Claim Construction and the Failed Promise of Cybor, 153 U. Pa. L. Rev. 763, 763-64 (2004) (criticizing Cybor for its doctrinal inconsistency and unintended practical effects).
36. Chu, supra note 31, at 1104; Moore, supra note 31, at 233.
37. See Moore, supra note 31, at 246-47.
38. Alan R. Madry, Legal Indeterminacy and the Bivalence of Legal Truth, 82 Marq. L. Rev. 581, 588 (1999);
39. see also R. Polk Wagner & Lee Petherbridge, Is the Federal Circuit Succeeding? An Empirical Assessment of Judicial Performance, 152 U. Pa. L. Rev. 1105, 1117-20 (2004).
40. Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005).
41. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
42. Id. at 1582.
43. Markman I, 52 F.3d at 980.
44. See Vitronics, 90 F.3d at 1583.
45. See Phillips, 415 F.3d at 1319-20.
46. 376 F.3d at 1382-83.
47. See id. at 1383.
48. See Phillips, 415 F.3d at 1318-19. The court noted that extrinsic evidence was less reliable than the intrinsic record for several reasons. First, because extrinsic evidence was divorced from the patent document itself, it lacked the intrinsic record's benefit "of being created at the time of patent prosecution for the purpose of explaining the patent's scope and meaning." Id. at 1318. Second, whereas claims are construed from the vantage point of a skilled artisan, extrinsic evidence is frequently not written from this perspective and therefore creates potential inaccuracy. Id. Third, the court noted that "extrinsic evidence consisting of expert reports and testimony is generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence." Id. Fourth, because "there is a virtually unbounded universe of potential extrinsic evidence," any of which might be introduced during litigation, "each party will naturally choose the pieces of extrinsic evidence most favorable to its cause, leaving the court with the considerable task of filtering" through it for the appropriate evidence. Id. Finally, the court felt that "undue reliance on extrinsic evidence" posed the risk of claim interpretations inconsistent with the intrinsic record, "thereby undermining the public notice function of patents." Id. at 1319.
49. See id. at 1328.
50. Amgen Inc. v. Hoechst Marion Roussel, Inc., 469 F.3d 1039, 1040 (Fed. Cir. 2006), cert. denied, 127 S. Ct. 2270 (2007).
51. Id. at 1040-41 (Michel, C.J., dissenting) ("[F]our practical problems have emerged under the Markman-Cybor regime: (1) a steadily high reversal rate; (2) a lack of predictability about appellate outcomes, which may confound trial judges and discourage settlements; (3) loss of the comparative advantage often enjoyed by the district judges who heard or read all of the evidence and may have spent more time on the claim constructions than we ever could on appeal; and (4) inundation of our court with the minutia of construing numerous disputed claim terms (in multiple claims and patents) in nearly every patent case.").
52. Id. at 1046 (Moore, J., dissenting).
53. Id. at 1045 (Gajarsa, Linn & Dyk, JJ., concurring) ("In an appropriate case we would be willing to reconsider limited aspects of the Cybor decision.").
54. Some Federal Circuit judges apparently predicted the potential need to reconsider de novo review as early as the Cybor decision itself. For instance, Judge Plager noted that "[w]hether this approach to patent litigation will in the long run prove beneficial remains to be seen. . . . But it may be some time before we have enough experience with 'Markman hearings' and with appellate review under the new regime to draw any empirically sound conclusions." Cybor, 138 F.3d at 1463 (Plager, J., concurring). Likewise, Judge Rader noted that the Cybor majority's "enthusiastic assertion of . . . [de novo review] has the potential to undercut the benefits of Markman I." Id. at 1475 (Rader, J., dissenting).
55. Id. at 1476 (Rader, J., dissenting).
56. See Moore, supra note 15, at 2.
57. See id. at 18 ("Is it possible that it is the Federal Circuit judges' constructions that are in error and the district court judges are actually correct?").
58. District court judges experienced in patent litigation have previously suggested the existence of multiple reasonable interpretations. See The Honorable Kathleen M. O'Malley, The Honorable Patti Saris & The Honorable Ronald H. Whyte, A Panel Discussion: Claim Construction from the Perspective of the District Judge, 54 Case W. Res. L. Rev. 671, 676 (2004) (Judge Saris: "Often when I get to claim construction . . . I see a couple of reasonable interpretations. Rarely is there only one possible way to construe a claim.").
59. See Dan L. Burk & Mark A. Lemley, Quantum Patent Mechanics, 9 Lewis & Clark L. Rev. 29, 56 (noting the "inherent indeterminacy of patent claims");
60. Kenneth Kress, Legal Indeterminacy, 77 Cal. L. Rev. 283, 283 (1989) ("Law is indeterminate to the extent that legal questions lack single right answers.");
61. Andrew S. Brown, Note, Amgen v. HMR: A Case for Deference in Claim Construction, 20 Harv. J.L. & Tech. 479, 492 (2007) ("[T]here might not be a single 'correct' construction of any given claim term. . . . [R]easonable minds could disagree without being wrong . . . .").
62. Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005).
63. See Craig Allen Nard, Deference, Defiance, and the Useful Arts, 56 Ohio St. L.J. 1415, 1481 (1995).
64. See Gretchen Ann Bender, Uncertainty and Unpredictability in Patent Litigation: The Time is Ripe for a Consistent Claim Construction Methodology, 8 J. Intell. Prop. L. 175, 210-211 (2001). Bender notes that "some commentators instruct patent practitioners to draft claims as vaguely as possible." Id at 210. She cites one practical treatise's advice: The greatest possible effort should be exerted to avoid adopting a position in which the applicant may later be placed in a corner. It is much better technique, when possible, not to pinpoint the essence of patentability to a particular feature and, instead, to attempt to leave a certain amount of ambiguity or room to maneuver should very pertinent prior art be subsequently unearthed . . . . Id. at 210-11
65. (quoting Arthur H. Seidel et al., What the General Practitioner Should Know About Patent Law and Practice 65 (5th ed. 1993)). Bender thus finds that "the patentee and the patent drafter have practical reasons to keep the scope and subject matter of the patent fluid and malleable." Id. at 211.
66. See also Michael Risch, The Failure of Public Notice in Patent Prosecution, 21 Harv. J.L. & Tech. 179, 188 (2007) ("[Patent applicants intentionally draft vague claims] so that they can mold the claims to fit the future product of a currently unknown, potential infringer or to avoid invalidation if previously undiscovered prior art comes to light.").
67. See Jennifer Gordon & Victor G. Hardy, After the Markman Hearing - Practical Guidance to the Problems Caused By the Timing, Lack of Finality and Preclusive Effect of Claim Construction Rulings, in How to Prepare & Conduct Markman Hearings 2006, at 255-56 (2006).
68. See Wagner & Petherbridge, supra note 34. As part of a larger study of claim construction, in which they examined a sample of Federal Circuit opinions from 1996 to 2002, the authors found that the Federal Circuit is "sharply divided between two basic methodological approaches to claim construction, each of which leads to distinct results." Id. at 1105. The authors also noted that these "significantly different approaches to claim construction followed by individual Federal Circuit judges has led to panel dependency . . . ." Id. Stated differently, the authors found that their "data reveals that the composition of the panel that hears and decides an appeal has a statistically significant effect on the claim construction analysis." Id. at 1112.
69. See CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1157-58 (Fed. Cir. 1997).
70. CVI/Beta Ventures, Inc. v. Custom Optical Frames Inc., Nos. 96-1070, 95-1486, 1996 WL 338388, at *1 (Fed. Cir. June 19, 1996).
71. See Cybor, 138 F.3d at 1476-77 (Rader, J., dissenting).
72. The disparity between the two panels in CVI/Beta was noteworthy in light of the Supreme Court's endorsement of applying stare decisis to Federal Circuit claim constructions, in addition to the well-established rule that Federal Circuit panel decisions are binding upon subsequent panels. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The second Federal Circuit CVI/Beta panel justified its departure from the previous panel's construction by noting that the earlier decision was both " nonprecedential" and decided in the preliminary injunction context. CVI/Beta, 112 F.3d at 1160 n.7.
73. See E. Donald Elliott, Symposium, Chevron Matters: How the Chevron Doctrine Redefined the Roles of Congress, Courts and Agencies in Environmental Law, 16 Vill. Envtl. L.J. 1, 11-12 (2005).
74. 467 U.S. 837 (1984).
75. See The Honorable Antonin Scalia, Lecture, Judicial Deference to Administrative Interpretations of Law, 1989 Duke L.J. 511, 511.
76. Chevron, 467 U.S. at 842-43.
77. See id. at 843.
78. See Kenneth W. Starr, Judicial Review in the Post-Chevron Era, 3 Yale J. on Reg. 283, 288 (1986).
79. See United States v. Mead Corp., 533 U.S. 218, 229-31 (2001).
80. Starr, supra note 69, at 309.
81. Cybor, 138 F.3d at 1477 (Rader, J., dissenting) (emphasis added).
82. See Starr, supra note 69, at 309 ("Chevron vindicates the appropriate and traditional function of judicial review. It confirms the judiciary's historic role of declaring what the law is, but prevents the judiciary from going beyond that venerable, legitimate role . . . ."); id. at 312 ("Chevron chastens the excessive intrusion of courts into the business of agency policy-making.").
83. Markman II, 517 U.S. at 378.
84. Id. at 390.
85. Id. at 388 (quoting Miller v. Fenton, 474 U.S. 104, 114 (1985)).
86. See Markman I, 52 F.3d at 1003 (Newman, J., dissenting).
87. See Starr, supra note 69, at 311.
88. See id.
89. Moore, supra note 15, at 28-29.
90. Cybor, 138 F.3d at 1477 (Rader, J., dissenting).
91. Id. at 1478 (Rader, J., dissenting).
92. See Starr, supra note 69, at 310 ("Many statutes, moreover, contain terms that are intentionally imprecise.").
93. See Scalia, supra note 66, at 517.
94. See Starr, supra note 69, at 311.
95. Smoot-Hawley Tariff Act of 1930, Pub. L. No. 71-361, § 337, 46 Stat. 590, 703-04 (codified as amended at 19 U.S.C. § 1337 (2000)).
96. See Robert W. Hahn, Assessing Bias in Patent Infringement Cases: A Review of International Trade Commission Decisions 1, 12 (2007), http://ssrn.com/ abstract=950583.
97. See id. at 3-4.
98. See id. at 2.
99. See Markman I, 52 F.3d at 987.
100. Id.
101. Stuart Minor Benjamin & Arti K. Rai, Who's Afraid of the APA? What the Patent System Can Learn from Administrative Law, 95 Geo. L.J. 269, 298 (2007).
102. See, e.g., United States v. Mead Corp., 533 U.S. 218, 243 (2001). ("The most formal of the procedures the Court refers to - formal adjudication - is modeled after the process used in trial courts . . . .").
103. See Burgess, supra note 31, at 765-66.
104. See Hahn, supra note 87, at 3.
105. See Robert G. Krupka, Philip C. Swain & Russell E. Levine, Section 337 and the GATT: The Problem or the Solution?, 42 Am. U. L. Rev. 779, 789-90 (1993).
106. See id. at 795.
107. See Kimberly A. Moore, Forum Shopping in Patent Cases: Does Geographic Choice Affect Innovation?, 79 N.C. L. Rev. 889, 908 (2001).
108. Hahn, supra note 87, at 6.
109. Id. at 7.
110. 547 U.S. 388, 390 (2006).
111. See Hahn, supra note 87, at 12 ("[T]he core purpose of Section 337 is to provide U.S. companies with a remedy against foreign companies that fail to respect patent rights and other U.S. intellectual property. . . . The ITC's historic mission was to protect U.S. industry from 'unfair' competition and imports.").
112. See id.
113. Id. at 13-14.
114. See Robert L. Harmon, Patents and the Federal Circuit 817 (7th ed. 2005).
115. Benjamin & Rai, supra note 92, at 297.
116. See United States Patent and Trademark Office, Online Job Search, http://www.usptocareers.gov/Pages/PEPositions/Jobs.aspx (last visited Apr. 5, 2008) ("Basic qualifications for Patent Examiners include United States citizenship and a minimum of a bachelor's degree in physical science, life science, engineering discipline or computer science.").
117. Cf. Markman II, 517 U.S. at 388-89 ("The construction of written instruments is one of those things that judges often do and are likely to do better than jurors unburdened by training in exegesis.").
118. See Miller, supra note 12, at 200.
119. Autogiro Co. of Am. v. United States, 384 F.2d 391, 399 (1967).
120. 90 F.3d 1576, 1584 (Fed. Cir. 1996).
121. Mark A. Lemley, Rational Ignorance at the Patent Office, 95 Nw. U. L. Rev. 1495, 1502 (2001).
122. John R. Allison & Mark A. Lemley, Empirical Evidence on the Validity of Litigated Patents, 26 AIPLA Q.J. 185, 234 (1998).
123. See Jay P. Kesan & Gwendolyn G. Ball, How Are Patent Cases Resolved? An Empirical Examination of the Adjudication and Settlement of Patent Disputes, 84 Wash. U. L. Rev. 237, 241 (2006).
124. Lemley, supra note 112, at 1502.
125. In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) ("It is axiomatic that, in proceedings before the PTO, claims in an application are to be given their broadest reasonable interpretation consistent with the specification."). For a convincing discussion of the shortcomings of the "broadest reasonable construction" rule, see Michael Risch, The Failure of Public Notice in Patent Prosecution, 21 Harv. J.L. & Tech. 179, 180 (2007) (arguing for "the abandonment of the 'broadest reasonable construction' rule for interpreting claims in pending patent applications in order to enhance certainty in claim construction for those who rely on patents").
126. See Ian A. Lampl, Comment, Establishing Rules for Resolving Markman Failures, 72 U. Chi. L. Rev. 1025, 1037-38 (2005).
127. Cotropia, supra note 8, at 59.
128. See id. at 63.
129. See Miller, supra note 12, at 192.
130. See 35 U.S.C. § 112 (2000) ("The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.") (emphasis added); see also Cotropia, supra note 8, at 68.
131. See Cotropia, supra note 8, at 68.
132. See id. at 68-69.
133. See id. at 69.
134. See id. at 70.
135. See Lemley, supra note 112, at 1502.
136. See R. Polk Wagner, Reconsidering Estoppel: Patent Administration and the Failure of Festo, 151 U. Pa. L. Rev. 159, 214-15 (2002).
137. Id. at 216.
138. Arti K. Rai, Engaging Facts and Policy: A Multi-Institutional Approach to Patent System Reform, 103 Colum. L. Rev. 1035, 1079 (2003).
139. Moore, supra note 98, at 928.
140. See Cotropia, supra note 8, at 67.
141. See generally Lampl, supra note 117. Lampl has previously suggested a narrow meaning default rule to assist courts faced with "two competing and equally plausible definitions." Id. at 1026 (emphasis added). Likewise, Professors Burk and Lemley have proposed that ambiguous claim terms should be initially interpreted narrowly, and subsequently enhanced via the doctrine of equivalents. Dan L. Burk & Mark A. Lemley, Quantum Patent Mechanics, 9 Lewis & Clark L. Rev. 29, 32 (2005). The proposal set forth in this Note is conceptually similar, but provides potentially greater information-forcing effects for two reasons. First, the narrowest reasonable construction imposes the narrowest interpretation reasonably possible, rather than simply selecting the narrower of two equally plausible definitions. Second, it applies in all cases of ambiguity, not just when there are "equally plausible definitions."
142. Under the proposed regime, partitioning the narrowest reasonable meaning rule and Chevron deference between the trial and appellate courts, respectively, is necessary to preserve the Chevron standard of review. The Federal Circuit cannot itself reapply the narrowest reasonable meaning rule on appeal, because this would involve a de novo search for a single best answer, in conflict with Chevron deference, which contemplates a reasonable range of permissible meanings. Therefore, the narrowest reasonable meaning rule must be the exclusive domain of the trial court who applies it in the first instance; the Federal Circuit on appeal simply inquires whether the trial court acted reasonably in applying that rule, together with the other canons of claim construction.
143. See Lampl, supra note 117, at 1039.
144. Halliburton Energy Servs., Inc. v. M-I LLC, No. 2007-1149, 2008 WL 216294, at *9 (Fed. Cir. Jan. 25, 2008).
145. Wagner, supra note 127, at 167 ("The basic insight here - the benefits that flow from shifting the analytic focus from the doctrine as an ex post (after the patent issues) attempt to cabin patent scope to an instrumental tool with important ex ante effects - is generalizable. That is, features of the patent administration system make many of the doctrines particularly amenable to a similar form of exegesis, where a legal rule is evaluated by its impact on ex ante incentives rather than solely on the basis of ex post factors. Accordingly, the analysis here might be seen as a template, suggesting further avenues of inquiry across the patent law.").
146. Id. at 243.
147. Id. at 208.
148. Id. at 168.
149. See id. at 210.
150. Id. at 212 (emphasis omitted).
151. Id. at 221.
152. Lampl, supra note 117, at 1039.
153. Id. at 1039 (quoting in part Tex. Digital Sys. v. Telegenix, Inc., 308 F.3d 1193, 1204 (Fed. Cir. 2002)).
154. See Miller, supra note 12, at 198-99.
155. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).
156. See O'Malley, Saris & Whyte, supra note 53, at 679 ("Many times judges are asked to construe a term and to define what one of ordinary skill in the art at the time would have understood. The problem is that 'at the time' may have been fifteen years ago.").
157. Amber Hatfield Rovner, Canons of Patent Claim Construction, in How to Prepare & Conduct Markman Hearings 2006, supra note 58, at 118.
158. See Gordon & Hardy, supra note 58, at 255-56.
159. See id. at 256-57.
160. Id. at 256.
161. See id.
162. Id. at 262-63.
163. See Athletic Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1581 (Fed. Cir. 1996) ("Where there is an equal choice between a broader and a narrower meaning of a claim, and there is an enabling disclosure that indicates that the applicant is at least entitled to a claim having the narrower meaning, we consider the notice function of the claim to be best served by adopting the narrower meaning.").
164. See Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999) ("'[C]laims should be so construed, if possible, as to sustain their validity.'") (quoting Carman Indus., Inc. v. Wahl, 742 F.2d 932, 937 n.5 (Fed. Cir. 1983)).
165. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1384 (Fed. Cir. 2001) (emphasis added).
166. Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004)) (emphasis added).
167. See John Calvin Jeffries, Jr., Legality, Vagueness, and the Construction of Penal Statutes, 71 Va. L. Rev. 189, 198 (1985).
168. Id. at 210.
169. See id. at 219-20.
170. See id. at 231.
171. See Edward J. DeBartolo Corp. v. Fla. Gulf Coast Bldg. & Constr. Trades Council, 485 U.S. 568, 575 (1988) ("[W]here an otherwise acceptable construction of a statute would raise serious constitutional problems, the Court will construe the statute to avoid such problems unless such construction is plainly contrary to the intent of Congress.").
172. 35 U.S.C. § 282 (2000).
173. See Blonder-Tongue Lab. v. Univ. of Ill. Found., 402 U.S. 313, 350 (1971).
174. This is particularly true for prolific patent applicants like IBM that typically file thousands of patent applications each year. See Martyn Williams, IBM Leads 2005 U.S. Patent Ranking, InfoWorld, Jan. 13, 2006, http://www.infoworld.com/article/06/01/13/73895_HNpatentranking_1.html ("[IBM] filed for 2,941 patents in 2005, which is down from 3,248 applications in 2004 . . . .").
175. See Lemley, supra note 112, at 1501 ("[A]t most only about two percent of all patents are ever litigated, and less than two-tenths of one percent of all issued patents actually go to court.").
176. John R. Allison et al., Valuable Patents, 92 Geo. L.J. 435, 438 (2004).
177. See id.
178. Id. at 460.
179. Id. at 461.
180. See Craig Allen Nard, A Theory of Claim Interpretation, 14 Harv. J.L. & Tech. 1, 75 (2000); see also Staheli, supra note 31, at 195-96.
181. See Kyle J. Fiet, Restoring the Promise of Markman: Interlocutory Patent Appeals Reevaluated Post-Phillips v. AWH Corp., 84 N.C. L. Rev. 1291, 1314 (2006). But cf. Nard, supra note 171, at 75 (arguing that a deferential review standard would promote certainty and uniformity).
182. See Nard, supra note 171, at 75.
183. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).
184. Id.
185. Fed. R. Civ. P. 52(a).
186. See Markman I, 52 F.3d at 991 (Mayer, J., concurring) ("[A]ny facts found in the course of interpreting the claims must be subject to the same standard by which we review any other factual determinations: for clear error in facts found by a court."); see also David Krinsky, The Supreme Court, Stare Decisis, and the Role of Appellate Deference in Patent Claim Construction Appeals, 66 Md. L. Rev. 194, 202-03 (2006) ("An appellate court that emphasized the technical nature of patent documents would likely review claim interpretation only for clear error.");
187. Timothy J. Malloy & Patrick V. Bradley, Claim Construction: A Plea for Deference, 7 Sedona Conf. J. 191, 200 (2006) ("[T]his paper's primary position is that certain district court claim construction findings, i.e. those based upon the weighing of extrinsic evidence as well as the application of that evidence to the claim language, should similarly be reviewed for clear error."); Rai, supra note 129, at 1057 ("Federal Rule of Civil Procedure 52(a) provides that factual findings made by trial court judges are to be reviewed under the clearly erroneous standard . . . . [W]hen a court is reviewing questions of law application that involve subsidiary findings of fact, the doctrinal framework suggests that the court should review the underlying factual findings deferentially.").
188. United States v. U.S. Gypsum Co., 333 U.S. 364, 395 (1948).
189. See Krinsky, supra note 177, at 226 ("The various forms of estoppel achieve many of the same goals while better assuring a result that has been derived in the correct context and through adversarial advocacy by the interested parties. Nonmutual collateral estoppel may always be employed against a patentee on issues of claim construction; judicial estoppel may bind a patentee to the patentee's previous proposed constructions even where that patentee did not originally prevail.").
190. Rai, supra note 129, at 1042.
191. Nard, supra note 56, at 1423.
192. Rai, supra note 129, at 1057; see also Martin B. Louis, Allocating Adjudicative Decision Making Authority Between the Trial and Appellate Levels: A Unified View of the Scope of Review, the Judge/Jury Question, and Procedural Discretion, 64 N.C. L. Rev. 993, 1018 (1986).
193. See Nard, supra note 56, at 1424-25 ("[T]he Chevron decision did away with this law-fact distinction.").
194. See Moore, supra note 15, at 33; see also Fiet, supra note 172, at 1326.
195. See Cybor, 138 F.3d at 1479 (Newman, J., dissenting).
196. See Moore, supra note 15, at 34 ("[Whereas] patent appeals only represent about 20% of the Federal Circuit's docket in terms of the number of cases, they are the most complex and time consuming of the cases the court hears."); see also Marcia Coyle, Critics Target Federal Circuit, Nat'l L.J., Oct. 19, 2006, http://www.law.com/jsp/article.jsp?id=1161162317072 ("Patent cases represent about one-third of the court's total caseload . . . but if time devoted to those cases is measured, instead of just number of cases, the judges spend 50 percent more time adjudicating the patent cases than others on the docket.").
197. See Moore, supra note 15, at 34-35.
198. Id. at 35.
199. See Rai, supra note 129, at 1097. See generally Gregory J. Wallace, Note, Toward Certainty and Uniformity in Patent Infringement Cases After Festo and Markman: A Proposal for a Specialized Patent Trial Court with a Rule of Greater Deference, 77 S. Cal. L. Rev. 1383 (2004).
200. See Rai, supra note 129, at 1097.
201. Chu, supra note 31, at 1121-23. At first glance, this empirical finding that experienced district courts have failed to acquire expertise over time would seemingly undermine the argument for Chevron deference, which is premised upon the initial tribunal's expertise. However, the narrowest reasonable meaning rule helps mitigate such concerns over expertise because it simplifies the process of claim construction and thus artificially increases the trial court's relative "expertise." Rather than canvassing the entire universe of potential claim meanings in search of a single best answer, trial courts would now need only select the narrowest reasonable meaning, something they should perform with much greater success.
202. Rai, supra note 129, at 1098.
203. Id. at 1099.
204. See Benjamin & Rai, supra note 92, at 320-21.
205. See Beth Simone Noveck, "Peer to Patent": Collective Intelligence, Open Review, and Patent Reform, 20 Harv. J.L. & Tech. 123, 128 (2006) ("[T]he USPTO will implement the model of 'Peer-to-Patent' open review as a pilot called Community Patent Review. The pilot focuses on integrating an open peer review process with the USPTO, creating and amalgamating a vetted database of prior art references to inform examination, and developing deliberation methodologies and technologies that allow community ranking of the data forwarded to the patent examiner.").
206. See Benjamin & Rai, supra note 92, at 320-21.
207. See Noveck, supra note 195, at 127.
208. See John R. Thomas, Collusion and Collective Action in the Patent System: A Proposal for Patent Bounties, 2001 U. Ill. L. Rev. 305, 333.
209. Benjamin & Rai, supra note 92, at 325; see also Thomas, supra note 198, at 345.
210. See, e.g., In re Icon Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) ("[T]he Board's construction properly represents the broadest reasonable construction.").