Monday, November 21, 2005

ABOUT THE PHILLIPS V. AWH PETITION: As was predicted, AWH has petitioned the Supreme Court to review the landmark case regarding claim interpretation and to challenge the de novo review of claim construction on appeal. Dennis Crouch from Patently-O has provided a nice summary of AWH's petition here.

You can imagine my surprise when Dennis e-mailed me last Thursday to inform me that AWH was citing a thesis paper I wrote in their petition to the Supreme Court. Since Dennis posted on this topic, I've received some e-mails from readers inquiring about the content of this paper (and one reader facetiously asked if they cited my Real Men of Genius post).

Well, the paper is a somewhat-comprehensive study (47 pages, 341 footnotes) of Federal Circuit decision-making in the context of patent cases. The paper piggy-backs off of previous work done by William Rooklidge and Matthew Weil that outlined problems in the Federal Circuit and its apparent proclivity to encroach on the province of the fact-finder in ruling on patent cases. Coined "judicial hyperactivity" (not to be confused with "judicial activism"), this phenomena can be identified when an appellate court "usurps elements of the decision-making process that are supposed to be the province of the lower courts, administrative bodies or even litigants." And while the Federal Circuit has always been sporadically accused of exceeding its judicial authority, recent commentary is suggesting that the instances of the Federal Circuit exceeding its appellate authority are on the rise.

This problem is compounded by Markman, and the fact that most cases become ripe for Summary Judgment once the Markman ruling is entered. There aren't any uniform procedures or rules on approaches to claim construction, and the Federal Circuit has had no problems reviewing decisions of district courts regardless of when the construction actually took place. While the Federal Circuit historically refused to consider interlocutory review of claim construction, it has become clear that post-construction summary judgment has become an accepted equivalent for litigants. As Judge Newman once remarked, "there isn't a lawyer or district court in the nation who hasn't figured out that all they have to do is turn the claim construction into summary judgment." In certain cases it would even be proper for the court to render a decision on the summary judgment, even if evidence extrinsic to the record has not been completely developed yet.

I still have some copies of the thesis if anyone is interested. Just e-mail me and I'll be happy to send you a copy in the mail.

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