SHOULD NEW CLAIM CONSTRUCTION ARGUMENTS BE ALLOWED ON APPEAL? The United States Court of Appeals for the Federal Circuit was established under Article III of the Constitution on October 1, 1982. The court was formed by the merger of the United States Court of Customs and Patent Appeals and the appellate division of the United States Court of Claims. One of the primary reasons Congress created the Federal Circuit was to bring uniformity to patent law.

Ever since Markman, the Federal Circuit established that interpretation of a patent is a question of law and, as such, is decided by the court alone, and not the jury. Furthermore, when the Federal Circuit reviews a claim construction from a lower court, the review is conducted under the plenary de novo standard (i.e., without deference to the lower court).

Under conventional procedural rules, issues not raised in the lower court will be waived on appeal. However, the interesting question has been raised that, if the Federal Circuit is really trying to establish a "correct" interpretation of a patent, why can't new arguments pertaining to claim construction be introduced on appeal?

When considering the meaning of a patent, the Federal Circuit is empowered to (a) adopt the claim construction proffered by the Appellant, (b) adopt the claim construction proffered by the Appellee, or (c) adopt its own interpretation of the patent based in the record, even if the specific interpretation wasn't argued by either party in the lower proceeding. A classic example of the last phenomenon can be found in Exxon Chem. Patents, Inc. v. Lubrizol Corp, 64 F.3d 1553 (Fed. Cir. 1995), where the court adopted a claim construction advanced by neither of the parties at trial (although the decision stated it was only a "slight modification" of one of the argued interpretations). As Judge Nies' stated in her dissent:

[b]y advocating a different interpretation of the claim sua sponte, the majority required Exxon to litigate not only its opponent's position but also the unknowable position of the appellate court.

Thus, the defendant essentially won on a claim interpretation that could never have been raised on appeal because the interpretation was not argued in the proceeding below.

The Federal Circuit has been less-than-clear in providing guidance for practitioners regarding claim construction. At times, the opinions of the court regarding appeal seem contradictory. To complicate matters further, litigants have the tendency to file conditional cross-appeals to preserve various issues, sometimes to vocal disapproval by the court.

Chicago-Kent College of Law will be hosting the 2nd annual Federal Circuit Clerk Roundtable, where numerous former clerks from a variety of backgrounds will meet on Monday, October 31 to address these very issues. It sounds like a very interesting event, and I hope to be able to attend (maybe I'll see you there).