Fence posts or sign posts? Rethinking patent claim construction

University of Pennsylvania Law Review

Volumn 157, Issue 6, 2009, Pages 1743-1799

  Burk, Dan L ^a   Lemley, Mark A ^b  

^a UNIVERSITY OF CALIFORNIA   (United States)

^b NONE

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EID: 69849084074     PISSN: 00419907     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Review

References (292)

1. See, e.g., CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1319 (Fed. Cir. 2000) (drawing diis analogy).
2. While patents are sometimes referred to as property rights, in fact they are not property in the way we traditionally uiink of land or chattels. See JAMES BESSEN & MICHAEL J. MEURER, PATENT FAILURE: HOW JUDGES, BUREAUCRATS, AND LAWYERS PUT INNOVATORS AT RISK ch. 2 (2008) (discussing ways in which patents differ from traditional notions of property);
3. Mark A Lemley, Property, Intellectual Property, and Free Riding 83 TEX. L. REV. 1031, 1036-37 (2005) (listing problems created by treating and thinking about patents in the same manner as traditional property).
4. But cf. Michael A Carrier, Cabining Intellectual Property Through a Property Paradigm, 54 DUKE L.J. 1 (2004) (arguing diat real property doctrines can be used by analogy to limit intellectual property (JP)).
5. The procedure is named after Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), in which the Supreme Court found diat the interpretation of patent claims is a matter of law to be decided by the judge.
6. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
7. SeeN. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1581 (Fed. Qr. 1993).
8. See Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326, 1331 (Fed. Cir. 2001).
9. See Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004);
10. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1459 (Fed. Cir. 1998) (en banc).
11. See Toro Co. v. White Consol. Indus., Inc., 199 F.Sd 1295, 1300-02 (Fed. Cir. 1999).
12. See Sage Prods., Inc. v. Devon Indus., Inc., 126 F.Sd 1420, 1430-31 (Fed. Cir. 1997).
13. See David L. Schwartz, Practice Makes Perfect? An Empirical Study of Claim Construction Reversal Rates in Patent Cases, 107 MlCH. L., REV. 223, 259 (2008) (" [C]laim construction may be inherendy indeterminate." ). As philosopher Bertrand Russell put it " [e]verydiing is vague to a degree you do not realize till you have tried to make it precise."
14. BERTRAND RUSSELL, THE PHILOSOPHY OF LOGICAL ATOMISM 38 (David Pears ed., Open Court 1985).
15. The Supreme Court recognized the problem in Festo, noting diat " [u]nfortunately, the nature of language makes it impossible to capture the essence of a diing in a patent application." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731 (2002).
16. See, e.g, PSC Computer Prods., Inc. v. Foxconn Int'l, Inc., 355 F.3d 1353, 1358 (Fed. Cir. 2004) (" One important purpose of the written description is to provide notice to the public as to the subject matter of the patent, while the claim provides notice as to the scope of the invention." );
17. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1369-70 (Fed. Cir. 2003);
18. Sage Prods., 126 F.3d at 1429-30 (discussing how prosecution history estoppel helps to fulfill the public-notice function of patents).
19. Long before the creation of the Federal Circuit, the Supreme Court itself emphasized the notice function, and expressed concern about a " zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims." United Carbon Co. v. Binney & Smidi Co., 317 U.S. 228, 236 (1942).
20. Jim Bessen and Mike Meurer have colorfully characterized diis problem in their assertion that " if you can't tell the boundaries, it ain't property." BESSEN & MEURER, supra note 2, at 8. Aldiough this catch phrase captures a fundamental difference between patents and real property, as a matter of property theory it is at best incomplete; we note the rather large body of legal and economic scholarship discussing the important benefits of vagueness in the boundaries of bodi real and intellectual property.
21. See, e.g, Dan L. Burk, moddy Rules for Cyberspace, 21 CARDOZO L. REV. 121 (1999);
22. Jason Scott Johnston, Bargaining Under Rules Versus Standards, 11 J.L. ECON. & ORG. 256 (1995);
23. Marc R. Poirier, The Virtue of Vagueness in Takings Doctrine, 24 CARDOZO L. REV. 93 (2002);
24. Carol M. Rose, Crystals and Mud in Property Law, 40 STAN. L. REV. 577, 594 (1988);
25. Michael Spence & Timodiy Endicott Vagueness in the Scope of Copyright, 121 L.Q. REV. 657, 661 (2005).
26. This is the now-moribund doctrine of " pioneer patents," under which important advances received broader protection dian more modest improvements. See, e.g., Miller v. Eagle Mfg. Co., 151 U.S. 186, 207 (1894) (" If the invention is broad or primary in its character, the range of equivalents will be correspondingly broad, under the liberal construction which the courts give to such inventions." );
27. Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1532 (Fed. Cir. 1987) (" A pioneer invention is entided to a broad range of equivalents." );
28. John R. Thomas, The Question Concerning Patent Law and Pioneer Inventions, 10 HIGH TECH. L.J. 35, 37 (1995).
29. But see Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 987 (Fed. Qr. 1989) (referring to the pioneer-patents rule as " ancient jurisprudence" ),
30. overruled on other grounds by AC. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992).
31. See TOSHIKO TAKENAKA, INTERPRETING PATENT CLAIMS: THE UNITED STATES, GERMANY AND JAPAN (1995) (describing Germany's " central claiming" system).
32. For a discussion, see Jeanne C. Fromer, Claiming Intellectual Property, 76 U. CHI. L. REV. (forthcoming 2009), available at http://papers.ssrn.com/ abstract-id=1273449.
33. Fromer correcdy identifies design patents and means-plus-function claims as being based in central claiming, aldiough we are less persuaded by her characterization of dependent claims and best-mode jurisprudence as elements of central claiming. In addition, plant patents employ central claiming. See 37 CF.R. §1.163(c) (10) (allowing only a single claim on an application for a plant patent).
34. We borrow this terminology from W. R. CORNISH, INTELLECTUAL PROPERTY: PATENTA, COPYRIGHT, TRADE MARKS AND ALLIED RIGHTS 165 (4thed. 1999).
35. See John R. Allison & Mark A Lemley, The (Unnoticed) Demise of the Doctrine of Equivalents, 59 STAN. L. REV. 955, 958 (2007) (" The doctrine of equivalents was alive and well before Markman, but has been in decline ever since." ).
36. On the many industry-specific differences between these industries, see, for example, DAN L, BURK & MARK A LEMLEY, THE PATENT CRISIS AND How THE COURTS CAN SOLVE IT (2009). While one possibility is to make claiming optional, giving the option to the patentee rather dian to, say, the courts, would solve only one side of the problems widi claim construction. A patentee who wanted to claim beyond the bounds of the actual invention might choose to rely on peripheral rather dian central claiming.
37. Indeed, any analogy between real and intellectual property is fraught widi peril. See Lemley, supra note 2, at 1036-37.
38. See, e.g, RIDSDALE EILLIS, PATENT CLAIMS 41 (1949). Henry Smidi suggests that the definitional problems " are not fundamentally different from diose... in property."
39. Henry E. Smidi, Intellectual Property as Property: Delineating Entitlements in Information, 116YALELJ. 1742, 1795-99 (2007).
40. As we delineate in diis Section, diat argument is simply wrong. Cf. Michael A Carrier, Why Modularity Does Not (and Should Not) Explain Intellectual Property, 117 YALE LJ. POCKET PART 95, 97 (2007) http://thepocketpart.org/2007/ 10/10/carrier.html (rejecting Smith's assertion: " boundaries are not as lucid in IP" ).
41. Indeed, ironically, while GPS technology may give us clear boundaries in the real world, courts have been unable to agree over the meaning of GPS coordinate systems in patent law. Compare Vehicle IP, LLC v. Gen. Motors Corp., No. 2008-1259, slip op. at 3-7 (Fed. Cir. Jan. 6, 2009),
42. with id. at 1-2 (Mayer, J., dissenting) (disputing the meaning of the word " coordinates" in a vehicle navigation system).
43. Markman v. Westview Instruments, Inc., 52 F.Sd 967 (Fed. Cir. 1995), a-T¿517 U.S. 370 (1996).
44. Id at388.
45. See, e.g, Phillips v. AWH Corp., 415 F.3d 1303, 1313-24 (Fed. Gr. 2005) (en banc);
46. ROBERT P. MERGES ET AL., INTELLECTUAL PROPERTY IN THE NEW TECHNOLOGICAL AGE 263-68 (rev. 4di ed. 2007) (discussing canons of claim construction).
47. This is common in the District of Delaware, for instance.
48. See, e.g., N.D. CAL. PAT. L.R., available at http://www.cand.uscourts. gov/ (follow " Rules" hyperlink on left menu; then follow " Patent Local Rules 3/1/2008" hyperlink).
49. See, e.g., ChriMar Sys., Inc. v. PowerDsine, Ltd., No. 01-74081, 2008 WL 2966470 (E.D. Mich. July 30, 2008) (construing thirteen terms in one order). To the extent diat it is relevant Professor Lemley serves as the special master in diis case.
50. See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.Sd 1351, 1360-62 (Fed. Qr. 2008).
51. The definitive study is Kimberly A Moore, Are District Court Judges Equipped to Resolve Patent Cases?, 15 HARV. J.L. & TECH. 1, 12 fig.2, 15 tbl.l (2001);
52. see also Christian A Chu, Empirical Analysis of the Federal Circuit's Claim Construction Trends, 16 BERKELEY TECH. L.J. 1075, 1089-90, 1096-1107 (2001) (finding a reversal rate between 29% and 38%, depending on the period examined). More recent work by Judge Moore suggests diat the reversal rate is increasing, not decreasing, over time.
53. Kimberly A Moore, Markman Eight Years Later: Is Claim Construction More Predictable?, 9 LEWIS & CLARK L. REV. 231, 246 fig. (2005) (finding a reversal rate of around forty percent);
54. cf. Schwartz, supra note 10, at 267-68 (finding data consistent widi Judge Moore's in a study directed at learning effects among district judges).
55. See David L. Schwartz, Courting Specialization: An Empirical Study of Claim Construction Comparing Patent Litigation Before Federal District Courts and the International Trade Commission, 50 WM. & MARY L. REV. (forthcoming 2009) (manuscript at 30, on file widi audiors) (suggesting diat the reason experienced judges can't get claim construction right may be " diat claim construction is indeterminate" );
56. Schwartz, supra note 10, at 267-68.
57. R. Polk Wagner & Lee Petherbridge, Did Phillips Change Anything? Empirical Analysis of the Federal Circuit's Claim Construction Jurisprudence 24 (Mar. 30, 2008);
58. see aiso R. Polk Wagner & Lee Petherbridge, Is the Federal Circuit Succeeding? An Empirical Assessment of Judicial Performance, 152 U. PA. L. REV. 1105, 1111-13 (2004) (suggesting diat agreement on the interpretive tools of claim construction masks mediodological differences in the act of interpretation).
59. See Michael Saunders, A Survey of Posť-Phillips Claim Construction Cases, 22 BERKELEY TECH. L.J. 215, 236 (2007) (finding a claim-construction reversal rate of 39.5% after Phillips). Notably, Saunders's study excludes Rule 36 affirmances, and so should bias the reversal rate upwards.
60. Cf. Brenner v. Manson, 383 U.S. 519, 534 (1966) (noting the " highly developed" art of writing patents diat actually disclose very little).
61. See, e.g, Chiron Corp. v. Genentech, Inc., 363 F.Sd 1247, 1257-58 (Fed. Cir. 2004) (discussing the scope of possible definitions for " monoclonal antibothes" ).
62. Compare the meaning of " a" in the expressions " I want a job" and " I want a birthday present"
63. Forgive the expression.
64. Compare the meaning of " or" in the expressions " I will vote for Obama or McCain" and " it will rain or snow today."
65. See, RICHARD A. POSNER, THE PROBLEMS OF JURISPRUDENCE 296 (1990) (" [M]eaning does not reside simply in the words of a text, for the words are always pointing to somediing outside." ).
66. See, e.g., Voda v. Cordis Corp., 536 F.3d 1311, 1320 (Fed. Cir. 2008).
67. See Mark A Lemley, The Limits of Claim Differentiation, 22 BERKELEY TECH. L.J. 1389, 1394-95 (2007).
68. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.Sd 1351, 1360-62 (Fed. Cir. 2008).
69. But cf. IP Cleaning S.p.A. v. Annovi Reverberi, S.p.A., No. 08-0147, slip op. at 2-3 (W.D. Wis. Dec. 3, 2008) (requiring evidence that the claim dispute is relevant to validity or infringement in order to avoid issuing an advisory opinion).
70. See, e.g, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 399 (2007) (emphasizing the abilities of the PHOSITA in obviousness);
71. Adas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984) (noting the importance of the PHOSITA in enablement);
72. see also Dan L. Burk & Mark A Lemley, Is Patent Law Technology-Specific?, 17 BERKELEY TECH. LJ. 1155, 1185-96 (2002) (discussing the role that the PHOSITA plays in various patent doctrines).
73. See Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed. Cir. 2002) (" [Dictionaries, encyclopedias and treatises are particularly useful resources to assist the court in [claim construction]." ).
74. Texas Digital was substantially limited in diis respect by Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). The use of dictionaries or other " plain meaning" raises significant problems of hermeneutics; there is no guarantee diat the dictionary or common definition of a term necessarily reflects the intent of the inventor, let alone what the inventor conceived.
75. See, e.g., Johnson Worldwide Assoes., Inc. v. Zebco Corp., 175 F.3d 985, 990 (Fed. Cir. 1999).
76. See, e.g., Phillips, 415 F.3d at 1313. Indeed, patentees who cite only a single example or examples diat all fit into one category in a specification may find diat their claims are limited to diat category.
77. See, e.g., Warner-Lambert Co. v. Teva Pharms. USA Inc., 418 F.3d 1326, 1336-38 (Fed. Cir. 2005).
78. See Phillips, 415 F.3d at 1317;
79. Astrazeneca AB, Inc. v. Mutual Pharm. Co., 384 F.3d 1333, 1341-42 (Fed. Cir. 2004).
80. " Comprising" means diat the patented invention contains at least the elements listed, but may also contain others; " consisting of" means diat the invention contains only diose elements listed. See, e.g., KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000).
81. There are other examples of claim construction based on a lawyer's understanding. For instance, the Federal Circuit's definition of " a" owes more to the rule of patent law diat a claim diat uses the term " comprising" is open (and so is infringed by any product diat includes the patented elements even if it also includes other tilings not listed in the patent) dian it does to any PHOSITA's understanding of the term " a" in context See id.;
82. Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 977 (Fed. Qr. 1999) (" [O]ur cases emphasize diat 'a' or 'an' can mean 'one' or 'more dian one,' depending on the context in which the article is used." ). Judicial interpretation of weaselword claim terms such as " about" also seem to owe more to a legal interest in defining claim scope dian the way in which any particular PHOSITA would understand diose words.
83. See, e.g., Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1369-72 (Fed. Cir. 2005) (holding diat the term " about" should " be given its ordinary meaning of 'approximately'" );
84. BJ Sen's. Co. v. Halliburton Energy Servs., Inc., 338 F.3d 1368, 1373 (Fed. Cir. 2003) (agreeing diat a jury should be instructed to give " about" its plain and ordinary meaning).
85. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454-56 (Fed. Cir. 1998) (en banc) (holding diat claim construction is an issue of law forjudges to decide). For strident criticism of that rule,
86. see PhiUips, 415 F.3d at 1330-35 (Mayer, J., dissenting), which notes diat " [w]hile diis court may persist in the delusion diat claim construction is a purely legal determination, unaffected by underlying facts, it is plainly not the case." That issue may still be revisited by the Federal Circuit en banc.
87. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 469 F.3d 1039, 1044-45 (Fed. Qr. 2006) (Rader, J., dissenting from denial of petition for rehearing en banc).
88. See, e.g., Jansen v. Rexall Sundown, Inc., 342 F.3d 1329, 1332 (Fed. Cir. 2003).
89. Dan L. Burk & Mark A Lemley, Quantum Patent Mechanics, 9 LEWIS & CLARK L. REV. 29, 29-30 (2005) (italics omitted).
90. See, e.g. Bridge Proprietors v. Hoboken Co., 68 U.S. (1 Wall.) 116, 147-48 (1863) (resolving a dispute over whether the term " bridge" as used in a 1790 statute encompassed railroad bridges not contemplated at the dme of enactment).
91. 363 F.3d 1247, 1257 (Fed. Qr. 2004).
92. For detailed discussion of diis issue, see Mark A Lemley, The Changing Meaning of Patent Claim Terms, 104 MlCH. L. REV. 105, 117(2005).
93. 358 F.3d 870, 896 (Fed. Qr. 2004);
94. see also In re Hogan, 559 F.2d 595, 605-06 (CCPA. 1977).
95. See Lemley, supra note 53, at 105-10 (citing cases).
96. See id. at 116.
97. In an article on diis issue, one of us took the position that peripheral-claim construction required collapsing these date dichotomies. Id. at 117-25. While diat is true, the fact diat peripheral claiming requires diat modification, and the fact diat courts have not yet grappled widi diat issue demonstrates some of the uncertainty inherent in peripheral claiming.
98. See supra Section I.B.
99. It is true diat we care about prior-art references for different reasons dian we care about patent claims. We read a prior-art reference for everytiiing diat it teaches, while we limit patent claims to what the inventor actually possessed at the time of invention. But the fact diat we should construe prior-art references differentiy dian we do claims for some purposes doesn't explain why we don't seem to construe them at all.
100. See Burk & Lemley, supra note 51, at 36. This naturally also occurs in some other areas of law, such as determining whether a contractual provision is satisfied by the goods delivered.
101. See Frigaliment Importing Co. v. B.N.S. Int'l Sales Corp., 190 F. Supp. 116, 118-21 (S.D.N.Y. 1960) (parsing the meaning of the word " chicken" ).
102. See, e.g., Sri Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1118 (Fed. Cir. 1985).
103. See Ronald K.L. Collins & David M. Skover, Paraiexts, 44 STAN. L. REV. 509, 533 (1992) (" The format of the printed text enframes the process of creating and identifying the legal reality...." ).
104. 35 U.S.C. §102(a) (2006).
105. See Dan L. Burk, The Role of Patent Law in Knowledge Codification, 23 BERKELEY TECH. L.J. 1009, 1031 (2008).
106. See, e.g., Wilson Sporting Goods Co. v. David Geoffrey & Assoes., 904 F.2d 677, 683-85 (Fed. Cir. 1990),
107. overruled in part on other grounds by Cardinal Chem. Co. v. Morton Int'l, Inc., 508 U.S. 83 (1993).
108. See, e.g, Dix-Seal Corp. v. New Haven Trap Rock Co., 236 F. Supp. 914, 919 (D. Conn. 1964);
109. see also In re Foster, 343 F.2d 980, 988 (CCPA 1965) (holding diat there need not be precise identity between the claimed invention and 102(b) prior-art reference). To be sure, this seems to be an effort to ensure diat section 102(b) prior art fits within the obviousness framework despite the literal language of section 103, which refers to obviousness " at the time the invention was made," not after diat time.
110. 35 U.S.C. §103(a).
111. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
112. An exception involves " weasel words" -terms like " about" or " substantially" diat vary the scope of a genus.
113. This is just one of the many industry-specific characteristics of the patent system. For a broader discussion, see BURK & LEMLEY, supra note 18.
114. Schwartz, supra note 10, at 260-61.
115. In this decade, organic chemistry and biotechnology patents account for only four percent of applications filed. Mark A Lemley & Bhaven Sampat Essay, Is the Patent Office a Rubber Stamp?, 58 EMORYLJ. 181, 195 tbl.7 (2008).
116. According to a February 12, 2009, Wesdaw search, the Federal Circuit has referred to " claim construction" 1407 times in its twenty-seven-year history. Of diose references, 141 occurred before 1995 and 1266 occurred in 1995 or later.
117. SeeMarkman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996).
118. See02 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.Sd 1351, 1360-62 (Fed. Cir. 2008).
119. See Mark A Lemley & Josh Walker, Does Markman Drive Setdements? Trial Rates in Patent Cases Across Districts (vaporware 2009).
120. In Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 908 (Fed. Cir. 2004), for instance, the Federal Circuit accepted the patentee's claim-construction argument that its claims were not limited to the invention disclosed in the specification. But on remand, the district court held the broadened claims invalid, No. 98-0858 2005 WL 2840744 (S.D. Ohio Oct. 28, 2005), and the Federal Circuit affirmed, finding diat the claims were not enabled when construed diat broadly.
121. Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1380 (Fed. Cir. 2007).
122. To be fair, the patentee has multiple bites at the apple too, since she files multiple claims in each patent and often obtains a family of patents.
123. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950).
124. See Wilson Sporting Goods Co. v. David Geoffrey & Assoes., 904 F.2d 677, 684 (Fed. Cir. 1990) (" To say diat the doctrine of equivalents extends or enlarges the claims is a contradiction in terms. The claims ... remain the same and application of the doctrine expands the right to exclude to 'equivalents' of what is claimed." (italics omitted)),
125. overruled in part on other grounds by Cardinal Chem. Co. v. Morton Int'l, Inc., 508U.S.83(1993).
126. Allison & Lemley, supra note 17, at 966-67 (" [PJatentees won only 24% of the doctrine of equivalents cases decided [from 1999 to 2007]." ).
127. See id. at 978 (finding diat patentees won 40% of doctrine-of-equivalents cases prior to Markman)
128. See, e.g, Bernard Chao, Rethinking Enablement in the Predictable Arts: Fully Scoping the New Rule, 2009 STAN. TECH. L. REV. 3, available at http://sdr.stanford.edu/ pdf/chao-rediinking-enablementpdf.
129. Jeffrey A Lefstin, The Formal Structure of Patent Law and the Limits of Enablement, 23 BERKELEY TECH. LJ. 1141 (2009).
130. Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1529 (Fed. Cir. 1987);
131. Atlas Powder Co. v. E.I. DuPont de Nemours & Co., 750 F.2d 1569, 1576 (Fed. Qr. 1984).
132. In TiHogan, 559 F.2d 595, 605-06 (C.C.P.A. 1977).
133. See, e.g., Sitrick v. Dreamworks, LLC, 516 F.3d 993 (Fed. Qr. 2008);
134. Automotive Techs. Int'l v. BMW of N. Am., Inc., 501 F.3d 1274 (Fed. Cir. 2007);
135. Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.Sd 1371 (Fed. Cir. 2007).
136. Cf. Autogiro Co. of Am. v. United States, 384 F.2d 391, 397 (Ct Cl. 1967) (" An invention exists most importantly as a tangible structure or a series of drawings. A verbal portrayal is usually an afterthought written to satisfy the requirements of patent law. This conversion of machine to words allows for unintended idea gaps which cannot be satisfactorily filled." ).
137. Allison & Lemley, supra note 17, at 978-79.
138. See William Redin Woodward, Definiteness and Particularity in Patent Claims, 46 MICH. L. REV. 755, 757-58 (1948).
139. Id at 758.
140. U.S. Patent Act of 1790, ch. 7, §2, 1 Stat. 109.
141. See Karl B. Lutz, Evolution of the Claims of U.S. Patents (pt. 1), 20 J. PAT. OFF. SOCY 134, 139-41 (1938) [hereinafterLutz,Evolution].
142. Presumably, had history proceeded a bit differendy, instead of claims we might now have " disclaims" at the end of every patent, see t¿ at 141, as indeed we now do in trademark law.
143. See id. at 142-43 (tracing the development of the Act of 1836);
144. see also EILLIS, supra note 20, at 2-4 (analyzing the claim requirement).
145. See Lutz, Evolution (pt 3), supra note 92, at 471.
146. See Lutz, Evolution (pt 2), supra note 92, at 384 (comparing approaches in Supreme Court cases from the 1853 Term).
147. 56 U.S. (15 How.) 62 (1854).
148. 126 U.S. 1 (1888).
149. O'ReiUy, 56 U.S. (15 How.) at 119-20.
150. The Telephone Cases, 126 U.S. 1, 534-35.
151. See ROBERT C KAHRL, PATENT CLAIM CONSTRUCTION §2.04[A], at 2-37 (2001).
152. ELLIS, supra note 20, at 4-5.
153. Patent Act of 1870, ch. 230 §26, 16 Stat 198. John Duffy describes the patent office practice before diat time in establishing the boundaries of claims.
154. John F. Duffy, The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 S. CT. REV. 273.313n.131.
155. See Woodward, supra note 89, at 758;
156. see also Lutz, Evolution (pt 3), supra note 92, at 464-66.
157. See EILLIS, supra note 20, at 253.
158. See id. at 123-24.
159. KAHRL, supra note 101, §2.04[D], at 2-58.
160. Id Sect; 2.04[B], at 2-49.
161. Melville Church, Commentary, Comments on Recent Articles, 13 J. PAT. OFF. SOCY 459, 459 (1931);
162. see also ELLIS, supra note 20, at 7 (" As a result, patents had fewer claims before 1870 dian they had later." ).
163. See Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).
164. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605 (1950) (establishing the propriety of the doctrine of equivalents and explaining how and when it was tobe used).
165. See E.I. du Pont de Nemours & Co. v. Phillips Petrol. Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988) (applying both rules).
166. See, e.g., ELLIS, supra note 20, §10.
167. Thus, Judge Rich, one of the drafters of the current Patent Act goes to some pains to insist diat the doctrine of equivalents gives the patentee only what she would have been entided to had the language of her claims been properly precise. See Wilson Sporting Goods Go. v. David Geoffrey & Assoes., 904 F.2d 677, 684 (Fed. Cir. 1990) (Rich, J.), overruled in part on other grounds by Cardinal Chem. Co. v. Morton Int'l, Inc., 508 U.S. 83 (1993).
168. 520 U.S. 17(1997).
169. Id at 26 n.S & 27 n.4.
170. Id. at 27 n.4.
171. See Lutz, Evolution (pt 3), supra note 92, at 473-74.
172. 170 U.S. 537 (1898).
173. Id at537-38.
174. Id at 583.
175. The doctrine is rarely applied, and the Federal Circuit in Tate Access Floors, Inc. v. Interface Architectural Resources, Inc., 279 F.3d 1357, 1368 (Fed. Cir. 2002), suggested diat the doctrine had no continued meaning after the passage of the 1952 Patent Act The court also (misleadingly) suggested diat it had never applied the doctrine.
176. Cf. Scripps Clinic & Research Found, v. Genentech, Inc., 927 F.2d 1565, 1581 (Fed. Cir. 1991) (applying the reverse doctrine of equivalents). The Federal Circuit has since backed off from this crabbed and ahistorical reading.
177. See Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1351 (Fed. Qr. 2003) (rejecting the dictum from Tate Access).
178. 35U.S.C§112(2006).
179. See ELLIS, supra note 20, §24;
180. Lutz, Evolution (pt. 3), supra note 92, at 470.
181. But many judicial opinions concerning copyright infringement might be described as such " metatexts," as they typically spend a considerable number of words describing the scope and protected features of the copyrighted text
182. See, e.g., Steinberg v. Columbia Pictures Indus., Inc., 663 F. Supp. 706, 711 (S.D.N.Y. 1987).
183. See 15 U.S.C. §1114;
184. see also, e.g, Jessica Litman, Breakfast with Batman: ThePubUc Interest in the Advertising Age, 108 YALE LJ. 1717 (1999) (discussing the standard set forth in the Lanham Act).
185. See Kevin R. Casey, Identification of Trade Secrets During Discovery: Timing and Spetificity, 24 AIPLA Q.J. 191, 254 (1996).
186. Eg., CAL. CIV. PROC. CODE §2019.210 (West 2007);
187. see also AutoMed Techs., Inc. v. Eller, 160 F. Supp. 2d 915, 926 (N.D. 111. 2001) (applying the requirement diat a plaintiff first identify the trade secret widi reasonable particularity);
188. Porous Media Corp. v. Midland Brake, Inc., 187 F.R.D. 598, 599-600 (D. Minn. 1999) (same);
189. Engelhard Corp. v. Savin Corp., 505 A2d 30, 33 (Del. Ch. 1986) (same).
190. CAL. Crv. PROC. CODE §2019.210.
191. See, e.g., Selle v. Gibb, 741 F.2d 896 (7th Cir. 1984) (finding, due in part to the fact diat plaintiffs song was not commercially successful, diat there was no access and therefore no copying to support an infringement claim);
192. UNTF. TRADE SECRETS ACT § 1, 14 U.LA. 538 (2006) (amended 1985).
193. But cf. Barton Beebe, An Empirical Study of the MuUiJactor Tests for Trademark Infringement, 94 CAL. L. REV. 1581, 1626-31 (2006) (finding diat intent one of many factors relevant to a finding of likelihood of confusion, is in fact the most important one).
194. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Qr. 2008).
195. 35 U.S.C. §162 (2006).
196. See C. Leon Kim, Transition from Central to Peripheral Definition Patent Claim Interpretation System in Korea, 77 J. PAT. & TRADEMARK OFF. SOCV401, 411 (1995).
197. See WILFRIED STOCKMAIR, THE PROTECTION OF TECHNICAL INNOVATIONS AND DESIGNS IN GERMANY 93 (1994);
198. TAKENAKA, supra note 14, at 36-38.
199. See TAKENAKA, supra note 14, at 36-38;
200. Allan M. Soobert, Analyzing Infringement by Equivalents: A Proposal to Focus the Scope of International Patent Protection, 22 RUTGERS COMPUTER & TECH. L.J. 189, 207-11 (1996).
201. Bundesgerichtshof [BGH] [Federal Court of Justice] Apr. 29, 1986, 98 Entscheidungen des Bundesgerichtshofes in Zivilsachen [BGHZ] 12 (14) (F.R.G.),
202. translated and excerpted in 18 INT'L REV. INDUS. PROP. & COPYRIGHT L. 795, 798 (1987).
203. For a detailed discussion of claim construction in Germany, see TAKENAKA, supra note 14, at 26-38.
204. [2004] UKHL 46 (appeal taken from EWCA (Civ.)) (U.K.).
205. John M. Golden, Construing Patent Claims According to Their " Interpretive Community" : A Call for an Attorney-Plus-Artisan Perspective, 21 HARV. J.L. ScTECH. 321, 349, 35255 (2008);
206. see also Paul M. Janicke, Heat of Passion: What ReaUy Happened in Graver Tank, 24 AIPLA Q.J. 1 (1996) (describing the hybrid system diat existed before the 1950 decision in Graver Tank).
207. For example, Jeff Lefstin traces current doctrinal tensions between the writtendescription requirement and claim definiteness to unresolved incongruities arising in the shift from central to peripheral claiming. Lefstin, supra note 83 (manuscript at 8889). Lefstin has identified a fundamental disjunction in modern patent doctrine diat may only be resolvable by a return to central claiming.
208. Jeanne Fromer has made a similar point See Fromer, supra note 15 (manuscript at 28-31).
209. The body of literature on diis topic is extensive. See, e.g, FREDERICK SCHAUER, PLAYING BY THE RULES: A PHILOSOPHICAL EXAMINATION OF RULE-BASED DECISIONMAKING IN LAW AND IN LIFE (1991);
210. Louis Kaplow, Rules Versus Standards: An Economic Analysis, 42 DUKE L.J. 557 (1992);
211. Duncan Kennedy, Form and Substance in Private Law Adjudication, 89 HARV. L. REV. 1685 (1976);
212. Russell B. Korobkin, Behavioral Analysis and Legal Form: Rules vs. Standards Revisited, 79 OR. L. REV. 23 (2000);
213. Eric A Posner, Standards, Rules, and Social Norms, 21 HARV. J.L. & PuB. POLV 101 (1997);
214. Pierre Schlag, Rules and Standards, 33 UCLA L. REV. 379 (1985);
215. Cass R. Sunstein, Problems with Rules, 83 CAL. L. REV. 953 (1995).
216. For a debate on the merits of rules and standards in patent law, see ROBERT PATRICK MERGES & JOHN FITZGERALD DUFFY, PATENT LAW AND POLICY: CASES AND MATERIALS 805-06 (3d ed. 2002);
217. John R. Thomas, Formalism at the Federal Circuit, 52 AM. U. L. REV. 771, 792-96 (2003);
218. R. Polk Wagner, Reconsidering Estoppel- Patent Administration and the Failure of Festo, 151 U. PA. L. REV. 159, 234-37 (2002).
219. See also Thomas Chen, Note, Patent Claim Construction: An Appeal for Chevron Deference, 94 VA. L. REV. 1165, 1175 (2008) (noting the need to trade off the " simultaneous challenges of inefficiency, indeterminacy, and information costs" ).
220. See, e.g, MindGames, Inc. v. Western Pub. Co., 218 F.3d 652, 657 (7th Cir. 2000) (Posner, J.) (" No sensible person supposes diat rules are always superior to standards, or vice versa." ).
221. See Rose, supra note 12, at 580-90.
222. Lefstin, supra note 83 (manuscript at 63).
223. The question of boundary coincidence bears on Fromer's argument diat dependent patent claims are central embodiments of broader independent claims. See Fromer, supra note 15 (manuscript at 16). Certainly because dependent claims are usually narrowed claims, perhaps even reading on a single embodiment of the invention, their legal boundaries may tend to coincide more nearly widi the physical boundary of a given embodiment of the invention. But under current practice they are still clearly peripherally construed.
224. See Lefstin, supra note 83.
225. See Mark A Lemley, Essay, Rational Ignorance at the Patent Office, 95 Nw. U. L. REV. 1495, 1497 (2001) (" Because so few patents are ever asserted against a competitor, it is much cheaper for society to make detailed validity determinations in diose few cases dian to invest in additional resources examining patents diat will never be heard from again." ).
226. See BURK & LEMLEY, supra note 18, at 95 (noting diat courts are the right place for conducting a " sensitive policy analysis" for the patent system).
227. Cf. Christopher A Cotropia & Mark A Lemley, Copying in Patent Law, 87 N.C L. REV. (forthcoming 2009), available at http://ssrn.com/abstract=1270160 (finding diat only a tiny percentage of patent cases involve copying as opposed to independent invention by defendants).
228. See supra notes 5-9.
229. Terry Fisher put it this way to us: peripheral claiming is a local maximum. We have spent enormous effort getting to the top of the hill, but we
230. See supra notes 136-139 and accompanying text.
231. 35 U.S.C. § 112(2006).
232. See supra note 103 and accompanying text.
233. Lutz, Evolution (pt 3), supra note 92, at 470.
234. Cf. ELLIS, supra note 20, at 3;
235. Lutz, Evolution (pt.1), supra note 92, at 142;
236. Lutz, Evolution (pt. 3), supra note 92, at 467.
237. See supra notes 94-105 and accompanying text.
238. See, e.g., Ron D. Katznelson, President Bi-Level Techs., Presentation at Fenwick & West Lecture Series Inaugural Symposium, UC Davis School of Law: The Perfect Storm of Patent Reform? (Nov. 7, 2008), available at http://works.bepress.com/ rkatznelson/54.
239. For suggestions that the PTO should be more involved in claim construction, see, for example, Joseph Scott Miller, Enhancing Patent Disclosure for Faithful Claim Construction, 9 LEWIS & CLARK L. REV. 177 (2005);
240. see also Chen, supra note 144. But see
241. William R. Hubbard, Efficient Definition and Communication of Patent Rights: The Importance of Ex Post Delineation, 25 SANTA CLARA COMP. Sc HIGH TECH. L.J. 327 (2009) (arguing that ex ante scope determinations will not work and that we must wait to define patent scope in the context of particular disputes). We are inclined to Hubbard's view on this point.
242. See, e.g, In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (applying the rule that the PTO gives patents their "broadest reasonable interpretation" rather than choosing a specific construction). For a discussion of that rule and its problems, see
243. Michael Risch, The Failure ofPublic Notice in Patent Prosecution, 21 HARV. J.L. & TECH. 179 (2007).
244. See, e.g., Lemley, supra note 150, at 1499-1500.
245. On the growdi of patent continuations over time, see, for example, Stuart J.H. Graham & David C Mowery, Submarines in Software? Continuations in U.S. Software Patenting in the 1980s and 1990s, 13 ECON. INNOVATION & NEW TECH. 443 (2004);
246. Lemley Sc Sampat supra note 71. On the role of continuations in causing delay in patent prosecution,
247. see, for example, Mark A Lemley & Kimberly A. Moore, Ending Abuse of Patent Continuations, 84 B.U. L. REV. 63 (2004). One form of continuation-the continuation-in-part (CIP) application-would presumably continue in a central-claiming regime.
248. Cf. Samson Vermont, Taming the Doctrine of Equivalents in Light of Patent Failure, 16 J. INTELL. PROP. L. 83, 91 (2008) (noting that the doctrine of equivalents reduces the cost of drafting claims by avoiding the need to anticipate every eventuality).
249. See, e.g., Dana Wang, A Process Model of Creating and Out-Licensing Intellectual Property (2009) (unpublished manuscript, on file with authors) (employing a case study to investigate the various contributors to the creation of a patent beyond the inventor).
250. A striking example is Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004), where the Federal Circuit held that a patent claim that mistakenly called for heating dough "to" 400 degrees rather than "at" 400 degrees was infringed only if defendants actually incinerated their bread. While Chef America is extreme in its reliance on form over substance in claim construction, there are any number of cases in which words collateral to the main dispute are given meaning that renders thje claim ineffective. See, e.g., Larami Corp. v. Amron, 27 U.S.P.Q.2d (BNA) 1280, 1283 (E.D. Pa. 1993) (interpreting "chamber therein for a liquid" in a toy water gun patent in such a way that an external liquid reservoir does not literally infringe the claim, when in fact the main dispute was over the use of air pressure). Claim constructions also often render the invention less valuable than intended by excluding from scope things the patentee clearly intended to include. See, e.g., Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1562-64 (Fed. Cir. 1991) (construing the term "right angle corner pieces," in a patent for a method of affixing fabric to a wall, as encompassing only preformed corner pieces and not mitered linear pieces); Helmsderfer v. Bobrick Washroom Equip. Inc., No.08-1027 (Fed. Cir. June 4, 2008) (relying on language "partially hidden from view" to exclude plaintiffs own embodiment from the scope of its patent); Superior Fireplace Co. v. Majestic Prods. Co., 270 F.3d 1358 (Fed. Qr. 2001) (refusing to correct a patent claim for a fireplace that included the phrase "rear walls" rather than "rear wall"). This can't be good public policy. As Chief Justice Marshall put it in one of the earliest Supreme Court patent cases, "If, by an innocent mistake, the [patent] fails in its object the public ought not to avail itself of this mistake, and to appropriate the discovery without paying." Grant v. Raymond, 31 U.S. (6 Pet) 218, 244 (1832).
251. Examples here are legion. Acacia claims to have invented video on demand, In re Acacia Media Techs. Corp., No.05-1114, 2005 U.S. Dist LEXIS 37009 (N.D. Ca. Jul. 19, 2005), Caritas to have invented VoIP, Caritas Techs., Inc. v. Comcast Corp., No. 050339, 2006 U.S. Dist. LEXIS 98006 (E.D. Tex. Oct 18, 2006), Rembrandt to have invented digital television, Harris Corp. v. Rembrandt Techs., No. 07-0796, 2007 U.S. Dist LEXIS 69680 (M.D. Fla., Sept 20, 2007), Freeny to have invented multimedia, Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323 (Fed. Cir. 2001), and BT to have invented global e-commerce, British Telecomm. PLC v. Prodigy Communs. Corp., 189 F. Supp. 2d 101 (2002), all based not on what they actually designed or described in the patent but on the fact that the language of their patent claims can be read in hindsight to cover diose later-developed technologies.
252. 35 U.S.C. § 102(2006).
253. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 39&400.
254. Central claiming may also have implications for PTO interference practice. Interferences are proceedings conducted by the Patent Office to determine priority of invention when there is more than one claimant to a patent 35 U.S.C. §146. Interferences are conducted with reference to a "count"-a manufactured claim constructed for purposes of the interference-against which evidence of priority is assessed. In some cases, the junior party will provoke an interference by copying the claims of the published senior-party patent to ensure complete overlap of the claims. In such cases, the count will be the copied claims because of the complete overlap. But where the claims are not identical, the PTO must construct the count from the coincident portions of the contested claims. This is quintessentially an exercise in peripheral-boundary drawing, as the count represents the overlapping coverage of the competing patent claims, like the overlapping spaces represented by intersecting circles in a Venn diagram. It is possible that interference practice could eventually be eliminated by a change in American patent law to "first to file" patent granting, but that reform to American law has proved elusive and seems unlikely at any time in the near future. In the interim, a shift back to central claiming might eliminate the relevance of a peripherally constructed count. In the cases where a junior party had copied claims, both parties would necessarily have claimed the "heart" or central principles of the invention. But outside of copied claims, the question to be resolved would be whether the later inven- tor had first conceived the central characteristics or features of the claimed invention, rather than whether the elements of the count were found in an earlier conception. Shared central features, rater than intersecting peripheral boundaries, would determine whether the same invention had been conceived earlier by one inventor than by another.
255. See, e.g, In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
256. See Adiletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996) (holding that, when two constructions are equally likely, courts are to pick the narrower one); cf. In re Donaldson Co., 16 F.3d 1189, 1194-1195 (Fed. Cir. 1994) (en banc) (holding that the broadest-reasonable- construction rule did not apply to meansplus-function claims).
257. See, e.g., Fromer, supra note 15 (manuscript at 47).
258. See Mark A Lemley, Ignoring Patents, 2008 MICH. ST. L. REV. 18, 21 ("[B]oth researchers and companies in component industries simply ignore patents. Virtually everyone does it").
259. GEORGE TICKNOR CURTIS, A TREATISE ON THE LAW OF PATENTS FOR USEFUL INVENTIONS IN THE UNITED STATES OF AMERICA §§ 122, 130, 133 (2d ed. 1854).
260. E.g., Timothy R. Holbrook, Possession in Patent Law, 59 SMU L. REV. 123 (2006);
261. Lefstin, supra note 83.
262. See, e.g., Mark D. Janis, On Courts Herding Cats: Contending with the "Written Description" Requirement (and Other Unruly Patent Disclosure Doctrines), 2 WASH. U. J.L. & POL'Y 55, 61 (2000);
263. Robert P. Merges, Software and Patent Scope: A Report From the Middle Innings, 85 TEX. L. REV. 1627, 1649-52 (2007);
264. Harris A Pitlick, The Mutation on the Description Requirement Gene, 80 J. PAT. Sc TRADEMARK OFF. SOCY 209, 222 (1998).
265. Cf. Sean B. Seymore, The Enablement Pendulum Swings Back, 6 Nw. J. TECH. Sc INTEIX. PROP. 278, 290 (2008) (arguing that the increased enforcement of disclosure doctrines is effectively driving patentees away from broad peripheral claims).
266. See supra note 12.
267. 35U.S.C § 112(2006).
268. York Prods., Inc. v. Cent Tractor Farm Sc Family Ctr., 99 F.3d 1568, 1574 (Fed. Cir. 1996). Similarly, claims that don't use the term "means" may nonetheless be means-plus-function claims. See, e.g., Welker Bearing v. PhD, Inc., 550 F.3d 1096, 1096 (Fed. Cir. 2008) (holding that the phrase "mechanism for" presumptively invokes means-plus-function claims).
269. Compare Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996) (finding that "perforation means ... for tearing" included structure and so was not a meansplus-function claim (omission in original)), with Unidynamics Corp. v. Automatic Prods. Int'l, Ltd., 157 F.3d 1311, 1318-19 (Fed. Cir. 1998) (concluding that "spring means tending to keep the door closed" did not disclose structure and so was subject to 35 U.S.C. § 112, 6), abrogated on other grounds by Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008).
270. See, e.g., Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir. 2004) (holding that "consisting of does not signify a closed claim where a defendant added a spatula to a dental repair kit "consisting of" certain chemicals).
271. See, e.g, N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1581 (Fed. Cir. 1993) (holding that "linkage to a terminal portion" of a polysaccharide means linkage to one and only one terminal portion); see also KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (stating that the word "a" generally means "one or more" in open-ended claims). Chisum reports no fewer than seventeen Federal Circuit decisions construing the term "a." DONALD S. CHISUM, PATENT LAW DIGEST §§ 1529-1536 (2007).
272. See BURK & LEMLEY, supra note 18, at 104-108
273. Compare Kinetic Concepts, Inc. v. Blue Sky Med. Group, Inc., 554 F.3d 1010, 1018-19 (Fed. Cir. 2009) (relying on the specification in construing the definition of "wound" narrowly), with id. at 1025 (Dyk, J., dissenting) (disputing the meaning of the term "wound" as described in the specification).
274. See Lefstin, supra note 83.
275. According to a search conducted February 24, 2009, via Stanford IP Litigation Clearinghouse, http://lexmachina.stanford.edu, 446 of the 24,307 patent cases filed between 2008 and February 2009, or 1.8%, went to jury verdict. This number likely understates the number of cases that went to trial, both because the denominator includes pending cases that might go to trial and because some patent cases, such as pharmaceutical suits against generics, go to bench trial instead. But this number is likely in the right range.
276. See, e.g., Allison & Lemley, supra note 17, at 958 (noting that Markman drives summary judgments);
277. Lemley & Walker, supra note 75 (investigating the relationship between Markman and settlement).
278. Giles S. Rich, The Extent of the Protection and Interpretation of Claims-American Perspectives, 21 INT'L REV. INDUS. PROP. & COPYRIGHT L. 497, 499 (1990).
279. See supra notes 93-104 and accompanying text
280. Compare BURK Sc LEMLEY, supra note 18 (manuscript at 142-55),
281. with BURK & LEMLEY, supra note 18 (manuscript at 156-65).
282. A particular type of patent claim, called a "Markush" claim, specifies components that can be combined. It takes the form X+ Y+ Z where Xis selected from the group A, B, C; Y is selected from the group D, E F; and Z is selected from the group G, H, I. See ROBERT C. FABER, LANDIS ON MECHANICS OF PATENT CLAIM DRAFTING § 50 (4th ed. 1996). Markush claims uniquely define a group by identifying all its members.
283. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc).
284. The Wright brothers, for example, won their patent-infringement suit against Glenn Curtiss in 1914 because they were pioneering inventors, and the court accordingly afforded them broad protection even against the somewhat different Curtiss plane. Wright Co. v. Herring-Curtiss Co., 211 F. 654, 655 (2d Cir. 1914). The Court of Customs and Patent Appeals, the predecessor to the Federal Circuit, applied the pioneer-patent doctrine, see Autogiro Co. v. United States, 384 F.2d 391, 400 (C.C.P.A. 1967), and the Supreme Court continues to talk about patent scope under the doctrine of equivalents as a function of how pioneering the patent is. See WamerJenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 27 n.4 (1997). To some extent broadened claim scope follows naturally from the situation of a pioneering patent: there is litde prior art in a newly opened field that would prevent the inventor from claiming broadly. Broad literal claims may not anticipate later-invented technologies that could be substituted for elements of the claim, however; such substitutions may instead be captured under the doctrine of equivalents, if applied broadly. The pioneer-patent rule has not been invoked by the Federal Circuit in recent years, leading some to consider it moribund. Compare Augustine Med., Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1301 (Fed. Cir. 1999) (stating that "pioneering inventions deserve a broader range of equivalents"), with Sun Studs, Inc. v. ATA Equip. Leasing, Inc., 872 F.2d 978, 987 (Fed. Cir. 1989) (holding that "the 'pioneer' is not a separate class of invention"), overruled on other grounds by AC. Aukerman Co. v. R.L. Chaides Const Co., 960 F.2d 1020, 1038 (Fed. Cir. 1992). The Federal Circuit did endorse the pioneering-patent doctrine in an unpublished opinion in 2003. See Molten Metal Equip. Innovations, Inc. v. Metaullics Sys. Co., 56 F. App'x 475, 480 (Fed. Cir. 2003). And the doctrine provides at least one factor to consider in deciding how broadly to apply the doctrine of equivalents. Some scholars have argued that it should play a greater role in doctrine-of-equivalents cases than it does today.
285. See, e.g., Michael J. Meurer & Craig Allen Nard, Invention, Refinement, and Patent Claim Scope: A New Perspective on the Doctrine of Equivalents, 93 GEO. L.J. 1947, 2002-05 (2005);
286. Thomas, supra note 13, at 58-59.
287. See supra note 168.
288. See supranote 169 (givingexamples).
289. Nasty stuff. See U.S. DEP'T OF LABOR, OCCUPATIONAL SAFETY Sc HEALTH ADMIN., OCCUPATIONAL SAFETY AND HEALTH GUIDELINE FOR 1,2-DICHLOROETHYLENE, http://www.osha.gov/SLTC/healdiguidelines/1-2-dichloroediylene/recognition.html (last visited April 15, 2009).
290. These are, approximately, the facts of Lorami Corp. v. Amron, 27 U.S.P.Q.2d (BNA) 1280 (E.D. Pa. Mar. 11, 1993).
291. See, e.g., W.L. Gore & Assoes, v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983) (rejecting a gist- or heart-of-the-invention concept in patent law). By contrast, the test was routine in design-patent law until last year. See, e.g., Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc) (rejecting the test).
292. See, e.g., W.L. Gore, 721 F.2d at 1548. We acknowledge that not every invention will have a "point of novelty" as such; for many inventions, the novel feature is a unique combination of known elements. But the fact that the point of novelty limitation won't always work to cabin unnecessary claim construction doesn't mean it can't be helpful in particular cases.