The Amgen case has underscored the long-held view that the process of claim construction needs improvement, and the CAFC needs to do something about it sooner rather than later. More studies are being published affirm the perception that claim construction has become more difficult, if not impossible, to predict.
One study currently being conducted by Hal Wegner found that claim construction errors have been found in approximately 55 percent of all definitive Federal Circuit rulings in the context of infringement or validity where claim construction has been challenged. A total of fifty-seven cases in 2005 (Jan.-Aug.) included at least one definitive claim construction.
Also, as reported earlier on the 271 blog, Professor Wegner found that there has been almost a 300 % increase in split panel CAFC opinions for claim construction cases in the wake of the en banc split opinion in Phillips. When the level of dissents in CAFC opinions over the past three years were measured, it was found that they averaged about 60 cases per year: 2004 (59 dissents), 2005 (61 dissents) and 2006 (62 dissents).
This count measured dissents in part but not pure concurrences, and also includes dissents from denial of en banc rehearing. The 62 figure for 2006 was annualized from a count of 55 through October 12th.
On a similar note, Professor Michael Risch from Stanford Law School has published a working paper titled "Running the Gauntlet: The Failure of Public Notice in Patent Law." Patents often contain technical information intertwined with legal meaning, and inventions are often difficult to describe in words. Professor Risch argues that interpreting a patent is like running the gauntlet: patents are interpreted using different sets of rules at different times, such that meaning depends on who is reading the patent and when. In the paper, he demonstrates that at least ten opportunities exist during the life of a patent for different people to apply different rules in an attempt to discern the complete scope of a patent's claims. More importantly, Risch argues that the conflict between "prosecution standards" and "litigation standards" lies at the heart of the problem.
Of course, the Cybor decision wasn't spared in his paper - Mayer's dissent in Phillips is quoted as an example of the "zone of uncertaintly" that the Supreme Court's Markman decision cautioned against in the construction of patent claims:
[W]e have, however, disregarded our role as an appellate court; the resulting mayhem has seriously undermined the legitimacy of the process, if not the integrity of the institution . . . What we have wrought, instead, is the substitution of a black box, as it so pejoratively has been said of the jury, with the black hole of this court. Out of this void we emit "legal" pronouncements by way of "interpretive necromancy"; these rulings resemble reality, if at all, only by chance. Regardless, and with a blind eye to the consequences, we continue to struggle under this irrational and reckless regime . . .