In this work we are going to cover the issue concerning the standard of review by the Federal Circuit court of the claim construction. It makes sense to start from general question of the standard of review by the court of appeal.

 “The concern on appeal is that the judgment that was reached was correct and was not entered on the basis of improperly submitted information or because of an erroneous view of the law as applied to the facts of the case.”1 The standard of review that is used to determine whether the trial court erred predetermines the likelihood of reversal. “The extant of the review that will be undertaken depends on the nature of the alleged error, as well as whether the proceeding below was a jury or nonjury trial”.2

 There are three standards of review by appellate court. First, the fullest scope of review is for errors of law. The appellate courts decide the questions of law de novo.3

 The second standard is “clear erroneous” it is applied to findings of facts. The appellate court gives more deference reviewing factual determinations made at the trial court. “When the judge trial is involved, procedural rules, such as federal Rule 52(a), typically provide that the judge must make findings of fact and further, that those findings are to be overturned only if they are “clearly erroneous””.4 “A finding is “clearly erroneous” when although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed”.5

 Mixed fact-law questions are subject to the full review as are pure questions of law.6

 Third, a ruling that is within the discretion of the trial judge will be reviewed under an abuse-of-discretion standard.7

 The standard of review for claim interpretation - whether claim construction is a question of law or fact - has been considered by Federal Circuit in quite considerable number of cases. Before Markman decision there had not been uniformity in this regard whether the claim construction is a pure question of law or law based on facts.

 There are some cases in which claim interpretation was considered as a mixed question of law and fact. In McGill Inc. v. John Zink Co., 736 F.2d 666, 221 U.S.P.Q. (BNA) 944 (Fed. Cir. 1984) stated that claim construction might have underlying factual inquiries that must be submitted to a jury, for example, when the meaning of a term of art is disputed and there is a need for the use of extrinsic evidence. There are a number of other cases which follows the opinion in McGill.8

 In Markman, the Federal Circuit held that the construction of patent claims is a question of law to be decided by a judge.9

 The decision was based on the following reasoning:

1. Juries should not interpret patent claims because it is a fundamental principle of American law that "the construction of written evidence is exclusively with the court." Levy v. Gadsby, 7 U.S. (3 Cranch) 180, 186, 2 L. Ed. 404 (1805). A patent is a fully-integrated written instrument, and therefore appellate courts may interpret written documents as a matter of law.

 2. Because a patent is a government grant of rights to the patentee, the judge essentially defines the legal rights created by the patent document on behalf of the federal government.

3. Interpretation of patent claims by a judge according to established rules of construction provides predictability and stability for competitors. Competitors should have the ability to understand the scope of a patent claim by analyzing, with the aid of established rules of construction, the patent and prosecution history. They should come to the same conclusions in interpreting patent claims as would do a judge applying the same rules for construction.

 An interesting question that was raised by the Federal Circuit in Markman case is the use of extrinsic evidence in claim interpretation. Evidence is normally used for determination of facts, and determination of facts is a juries prerogative. Furthermore a standard of review for facts determination is “clear erroneous”. However, the Federal Circuit states in its decision “extrinsic evidence is to be used for the court’s understanding of the patent, not for the purpose of varying or contradicting the terms of the claims…. When, after considering the extrinsic evidence, the court finally arrives at an understanding of the language as used in the patent and prosecution history, the court must then pronounce as a matter of law the meaning of that language.” The court also states further that in the process of finding one evidence helpful and rejecting other evidence as unhelpful “the court is not crediting certain evidence over other evidence or making factual evidentiary findings. Rather, the court is looking to the extrinsic evidence to assist in its construction of the written document, a task it is required to perform”. To the opinion of the Court “it is not ambiguity in the document that creates the need for extrinsic evidence but rather unfamiliarity of the court with the terminology of the art to which the patent is addressed”.10

 The arguments of the court concerning the role of extrinsic evidence in interpretation of patent claims were called in question by the judge Newman in its dissenting opinion to the Markman decision. To the opinion of the judge Newman the meaning of and scope of disputed technologic and other terms of art are classical questions of fact. The disputed meaning of technologic terms and words of art are underlying facts on which the legal effect of the patent is based. For the determination of these underlying facts the meaning and scope of which is often disputed the trier of fact often makes findings that depend on the weight, credibility, and probative value of conflicting evidence.

 In its concurring opinion judge Mayer provided for different opinion on the role of the extrinsic evidence and fact-finding. He agreed with the fact that “a fact dispute cannot arise solely from testimony of a patent law expert… it is not evidence and cannot create a genuine fact question for the jury.” Nevertheless, “sometimes extrinsic evidence results in a genuine dispute over the meaning of a term or an event during prosecution. When that happens, it falls to the finder of fact to settle it”. Therefore, in general the court reviews the construction given the claims under the de novo standard applicable to all legal conclusions. But if there is any fact found in the course of interpreting the claims it must be subject to the “clear erroneous” standard. Furthermore, to the opinion of the judge Mayer “there is simply no reason to believe that judges are any more qualified than juries to resolve the complex technical issues often presented in patent cases”.

 Judge Mayer did not change his legal position in Cybor case after the decision of the Supreme Court in Markman. Chief Judge Mayer argued, in a concurring opinion to the decision, that the Federal Circuit's standard of review for claim construction is controlled by the Supreme Court's Markman decision, not the Federal Circuit's Markman decision. Chief Judge Mayer opined that the Supreme Court chose not to accept the formulation of claim construction as a pure question of law to be decided de novo on appeal. A district court may make factual determinations that are more than just incident to claim construction. For instance, a judge may need to weigh conflicting evidence about the understanding of one skilled in the art at the time the patentee filed the application. In such a case, the Markman standard just requires the judge to resolve the issue, not the jury. When a judge does make factual determinations, those facts are entitled to greater deference in a de novo standard of review.

 As has been already mentioned the Markman case was considered also by the Supreme Court. The Supreme Court granted certiorari to address the Seventh Amendment issue. Therefore, the sole issue on appeal to the Supreme Court was whether the interpretation of a patent claim is a matter of law reserved entirely for the court, or is subject to a Seventh Amendment guarantee that a jury will determine the meaning of a patent claim. The Supreme Court's main concern in Markman was the Seventh Amendment issue of whether a party had a right to a jury trial on claim construction because of any potential factual issues involved. The Supreme Court held that the construction of a patent, including terms of art within a claim, is exclusively within the province of the court, since it is better suited to find the acquired meaning of patent terms.11 However, in the Markman by the Supreme Court the issue of the proper standard of review to be used by an appellate court for claim construction was not addressed. Therefore, the decision of the Supreme Court in Markman arguably did not affirm the de novo standard. However, affirming prerogative of the court in interpretation of patent claims the Supreme Court indirectly affirmed de novo standard of review for interpretation of patent claims, since de novo review is to be applied to law interpretation but not fact finding.

 For several years after the decision of the Supreme Court there was ambiguity in the context of the proper standard of appellate review. The Markman rule for the interpretation of patent claims was affirmed by Federal Circuit in Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1453, 1476, 46 U.S.P.Q.2d (BNA) 1169, 1172 (Fed. Cir. 1998).

 Cybor Corporation sued FAS Technologies, Inc. and asked for a declaratory judgment of non-infringement, invalidity, and unenforceability of U.S. Patent No. 5,167,837 ("the '837 patent"). FAS Technologies, Inc. counterclaimed for infringement of all twenty claims of the '837 patent and sought damages and injunctive relief. The '837 patent disclosed a method and device for dispensing industrial liquids. The primary application for the patented inventions was to dispense small quantities of liquid onto semiconductor wafers. The jury found that all of the claims were valid and that Cybor Corporation infringed all of the claims literally or under the doctrine of equivalents. Cybor Corporation appealed the judgment of the district court that Cybor Corporation's product infringed the claims of the '837 patent.

 The Federal Circuit decided Cybor en banc in order to resolve the conflicting standards applied by different panels of the Federal Circuit. The Federal Circuit affirmed the district court's judgment that Cybor Corporation's product infringed all of the claims of the '837 patent.12

 The arguments in support of the decision:

1. In Markman, the Supreme Court stated that claim construction may not easily be characterized as either pure law or simple fact. These statements, according to the Federal Circuit, merely show that the determination of whether claim construction is a question of law or fact is not simple. The decision of the Supreme Court addressed the issue under which category, fact or law, claim construction should fall; it did not address whether claim construction includes two components, fact and law.

 2. Claim construction is a pure issue of law because of the role of expert testimony in claim construction. The Federal Circuit noted that juries play an important role in evaluating the credibility of a witness, however, to the opinion of the Court, in the context of claim construction, credibility determinations are unlikely to be made because "any credibility determinations will be subsumed within the necessarily sophisticated analysis of the whole document, required by the standard construction rule that a term can be defined only in a way that comports with the instrument as a whole." In other words a judge presumably is not making credibility judgments about witnesses, the judge is simply comparing their testimony to the contents of the patent document.

 3. The Federal Circuit reasoned that because the Supreme Court in its decision affirmed its holding in all respects, even a narrow view of the Supreme Court’s decision leaves the appropriate standard of review to be de novo.

 There are three concurring opinions to the Cyber decision. The opinion of the judge Mayer we have covered above. The judge Plager opined that the Cybor decision will simplify the method by which trial and appellate courts address claim construction. The appellate court and attorneys will not waste time debating whether the trial court's information base constitutes findings of "fact" or conclusions of "law."

 The dissenting opinion was provided for by the judge Rader. He does not agree with the Court that claim interpretation does not involve the finding of fact. To the opinion of the judge Rader interpretation of patent claims as purely an issue of law and de novo review of the claim construction undermines the trial process as the "main event," and this result would undermine predictability in patent litigation. With de novo review of patent claims a trial court's early claim interpretation provides no certainty at all, and the claim construction is not certain until after a decision by the Federal Circuit. Judge Rader concluded that, by according some deference to the district court's claim construction, the Federal Circuit can restore the district court's prominence in claim construction and create more certainty at an early stage of patent litigation.

 Although the Cybor court's majority opinion dismissed any notion of claim construction that included factual findings, Judge Rader's dissent pointed to a clear example of a finding of fact: credibility determinations of expert witnesses. When a judge faces conflicting testimony from experts, and he or she accepts the testimony of one over the other, it seems disingenuous to argue that credibility determinations are not being made. The court, as has been explained above, had different opinion of the role of an expert testimony; the Court considered an expert testimony only as a source of information for the judge to understand the technology at issue but not to determine facts.

 Some district judges were not enthusiastic either in regard to the Federal Circuit’s opinion on the role of the extrinsic evidence. “When two experts testify differently as to the meaning of a technical term, and the court embraces the view of one, the other, or neither while construing a patent claim as a matter of law, the court has engaged in weighing evidence and making credibility determinations. If those possessed of a higher commission which to rely on a cold written record and engage in de novo review of all claim constructions, that is their privilege. But when the Federal Circuit Court of Appeal states that the trial court does not do something that the trial court does and must do to perform the judicial function, the court knowingly enters the land of sophistry and fiction”.13

 “In response to the Federal Circuit’s Markman decision, and especially following the Supreme Court’s affirmance, many district courts began holding special hearings to help them construe claims during patent cases”.14 These hearings became known as Markman hearings.

 The decision of Federal Circuit leaves several procedural questions open. One of them is when during the trial should the court construe the patent claim. There is no unanimous opinion on this issue among scholars and judges. One of the proposals is that “the interpretation of a claim sets the framework for litigation of a patent dispute, determining what the facts must be proved and what evidence is relevant.”15 Therefore, it is reasonable to provide for claim construction at the earlier stages of the litigation. Having the claim construction at the very beginning the party would be able to bring an interlocutory appeal before the decision on the infringement is rendered by the trial court. One of the proposals is “certification up” of claim construction from the lower court under 28 USC § 1292.16 Certification requests in such situations meet all the statutory and case law requirements for certification, i.e., the issue is one exclusively of law that has never been litigated in that circuit, and its resolution is outcome-determinative.17 But the Federal Circuit refuses to accept certification, because it would be sought in most of the cases and it would lead to a significant load of work.18

 There are two policy concerns in regard to de novo standard of review of the claim construction. The first one is the need of early certainty. The second one is the need for uniformity.

 The first policy issue was covered by the judge Rader in his dissenting opinion to Cyber decision. As has been pointed by the judge Rader de novo review creates much more uncertainty than a deferential standard because an appellate judge has full freedom to reverse the claim constructions of a trial judge. Therefore, the party under present standard of review of patent claims always has a second chance to get a favorable construction of the claims on appeal. The parties would be much more certain, after the claim construction phase of the trial, about the meaning of the claims if a court used a deferential standard for those elements of the claim construction that were based upon factual findings. The Cybor rule on a de novo standard gives the parties much less of an incentive to settle the case prior to appellate review.

 There is a high probability that the appellate court will come out with a different interpretation of the claims at issue, since the appellate court uses the limited number of information and tools, precisely, only the record of the case. The appellate court does not hear witnesses and cannot weight their credibility.

 The Markman summary judgment has led to the fact that more patent appeals are now taken than were taken before the introduction of now typical Markman summary judgment.

 The proposed solution is that the Federal Circuit should have adopted a mixed de novo/clear error standard of review for claim constructions.19 Just as the issue of obviousness under 35 USC § 103 is a legal conclusion that is, and to be valid must be, based upon the underlying facts, so too should it be with claim construction.

 The second policy issue is uniformity. The de novo standard review gives the Federal Circuit authority to reconcile different claim construction of the same patent by different district courts. “If the Federal Circuit employed a more deferential standard of review to the claim interpretation of each district court, particularly with respect to expert testimony, the Federal Circuit may have no choice but to uphold both district court decisions, which in this case would lead to divergent claim interpretations for the same patent.”20

 More sufficient solution to the problem of uniformity would be the use of the principle of issue preclusion. “The doctrine of issue preclusion foresters uniformity at the district court level. The application of the issue preclusion in the context of the claim interpretation is consistent with Markman II. Recall Justice Souter’s language that “principles of issue preclusion… ordinary foster uniformity.” Thus the Supreme Court envisioned that the Federal Circuit would promote uniformity in claim construction when issue preclusion is unavailable as where the patentee seeks to assert issue preclusion against a new and independent defendant”.21

 The analysis in of the Federal Circuit practice on claim interpretation shows that the standard adopted by the Federal Court in Markman decision and affirmed in Cyber decision poses a lot of difficulties. First concerns uncertainty in regard to the claim construction till appeal in Federal Circuit. Application of the de novo standard leads that more trial court decisions are appealed by the unsatisfied party. One of the reasonable proposals for the resolution of this problem is to consider claim construction as a mixed question of law and fact and provide more deference to the district court’s decisions.

 The second issue concerning uniformity of the claim interpretation as the goal of the Federal Circuit in reviewing claim construction can be achieved by different means, for example, by application of the principle of issue preclusion.

 Svetlana Vorozhbit, 2010.

1 Friedenthal, Jack H.: Civil procedure. - St. Paul, Minn. : Thomson/West, 2005. P. 636

2 P. 639

3 See U.S. v. Mississippi Valley Generating Co., 364 U.S. 520, 526, 81 S.Ct. 294, 297, 5 L.Ed.2d 268 (1961).

4Friedenthal, Jack H.: Civil procedure. - St. Paul, Minn. : Thomson/West, 2005. P. 640

5 US v. US Gypsum Co., 333 US 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746 (1948).

6 Hawkins v. Ceco Corp., 883 F.2d 977, 981 (11th Cir. 1989), cert. denied 495 US 935; Ashland Oil & Refining Co. v. Kenny Constr. Co., 395 F.2d 683 (6th Cir. 1968).

7 Friedenthal, Jack H.: Civil procedure. - St. Paul, Minn. : Thomson/West, 2005. P. 643.

8 See Bio-Rad Labs. Inc. v. Nicolet Instrument Corp, 739 F.2d 604, 614, 222 U.S.P.Q. (BNA) 654, 661 (Fed. Cir. 1984).

9 See Markman v. Westview Instruments, Inc., 52 F.3d at 970-71, 34 U.S.P.Q.2d at 1322.

10 Markman v. Westview Instruments, Inc., 52 F.3d at 970-71, 34 U.S.P.Q.2d at 1322.

11 Markman v. Westview Instruments, Inc., 517 U.S. at 372, 38 U.S.P.Q.2d at 1463.

12 See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1453, 1476, 46 U.S.P.Q.2d (BNA) 1169, 1172 (Fed. Cir. 1998).

13 See Lucas Aerospace, Ltd. v. Unison Industries, L.P., 890 F.Supp. 329, 332 n.3, 333-34 n. 7 (D.Del. 1995), further order, 899 F.Supp. 1268 (D.Del.1995).

14 Kieff, F. Scott: Principles of patent law. - New York, NY : Foundation Press, 2008. at 883

15 Id at 887

16 Matthew R. Hulse I. INTELLECTUAL PROPERTY: B. Patent: 1. Claim Construction: a) Standard of review: Cybor Corp. v. FAS Technologies, Inc. 14 Berkeley Tech. L.J. 87.

17 See also Craig Allen Nard, Process Considerations in the Age of Markman and Mantras, 2001 Illinois L. Rev. 101; Michael E. Solimine, Revitalizing Interlocutory Appeals in the Federal Courts, 58 Geo. Wash. L. Rev. 1165, 1193 (1990).

18 See Kollmorgen Corp. v. Yaskawa Elec. Corp., 147 F.Supp.2d 464, 467 (W.D.Va. 2001).

19 Matthew R. Hulse I. INTELLECTUAL PROPERTY: B. Patent: 1. Claim Construction: a) Standard of review: Cybor Corp. v. FAS Technologies, Inc. 14 Berkeley Tech. L.J. 87

20 Kieff, F. Scott: Principles of patent law. - New York, NY : Foundation Press, 2008. P. 888.

21 Craig Allen Nard, Process Considerations in the Age of Markman and Mantras, 2001 Illinois L. Rev. 101.

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