Authored by Donald R. Dunner
In Markman v. Westview Instruments, Inc. (Markman I),1 the U.S. Court of Appeals for the Federal Circuit ostensibly laid to rest inconsistencies in its precedent regarding whether claim construction is a legal issue or a mixed issue of fact and law-an issue directly bearing on the standard of review to be accorded on appeal. The in banc court declared without reservation that claim construction "is properly viewed solely as a question of law" for the court and that "the construction given the claims is reviewed de novo on appeal."2
Less than three years after that landmark decision, however, the Federal Circuit again convened as an in banc court to revisit the claim construction issue. Prompted by an emerging line of post-Markman cases challenging the authority of Markman I and threatening to upset what was accomplished in that case, the Federal Circuit took the unusual step of reaffirming its plenary power to review a trial court's claim construction. Thus, in Cybor Corporation v. FAS Technologies, Inc.,3 the court ruled that "the Supreme Court's unanimous affirmance in Markman v. Westview Instruments, Inc., 116 S. Ct. 1384 (1996) (Markman II), of our in banc judgment in that case fully supports our conclusion that claim construction, as a purely legal issue, is subject to de novo review on appeal."4
While the Cybor decision is the latest, and presumably last, pronouncement by the Federal Circuit on the applicable standard for reviewing a trial court's claim construction, final resolution of this critical issue is a task left to the U.S. Supreme Court. Notwithstanding its decision in Markman II affirming the judge's duty to interpret patent claims in jury trials, the Court has not yet conclusively weighed-in on how a trial court's claim construction should be reviewed on appeal. In view of the significant and lasting impact that Cybor will likely have on patent litigation and the relationship between the Federal Circuit and the federal district courts, perhaps the time has come for the high court to deal with the issue head on.
II. A Case History
The Cybor decision is as remarkable for how it came into being as it is for what it says about an extremely important issue of patent jurisprudence. An analysis of the post-Markman cases culminating in the Federal Circuit's recent in banc review of the claim construction issue is necessary to appreciate fully the decision's scope and significance. To patent practitioners and legal generalists alike, the Cybor decision and its history provide a rare and fascinating look at the judicial process in general, and the workings of the Federal Circuit in particular.
A. The Markman Regime
In the year following its decision in Markman I, notwithstanding the Supreme Court's decision to grant certiorari, the Federal Circuit vigorously embraced its de novo review authority over the issue of claim construction. For example, in Exxon Chemical Patents, Inc. v. Lubrizol Corp.,5 the court emphatically stated that "[n]o matter when or how a judge performs the Markman task, on appeal we review the issue of claim interpretation independently without deference to the trial judge."6
The Markman I decision, however, was not without its detractors, even within the Federal Circuit itself. Circuit Judge Mayer,7 in a sharply worded concurring opinion, accused the Markman I majority of ignoring longstanding precedent recognizing that "claim construction is a matter of law depending on underlying factual inquiries."8 According to Judge Mayer,
[w]hen a question of claim construction arrives here on appeal, this court reviews the ultimate construction given the claims under the de novo standard applicable to all legal conclusions. But any facts found in the course of interpreting the claims must be subject to the same standard by which we review any other factual determinations: for clear error in facts found by the court; for substantial evidence to support a jury's verdict.9
On the other hand, Circuit Judge Rader, who also concurred in the judgment, asserted that the issue whether claim construction involves subsidiary fact issues was not properly before the court. Without directly indicating his view on the issue, Judge Rader stated that the better course would have been to "decline to answer a question better left to a case that truly raises it, and therefore provides an informed basis for its resolution."10
The Supreme Court's subsequent unanimous affirmance in Markman II seemed on its face to validate the Federal Circuit's de novo review practice. Yet a fair and careful reading of that decision belied such a superficial conclusion. Unlike the Federal Circuit, the high court did not directly address the appropriate standard by which the issue of claim construction should be reviewed on appeal. In Markman II, the Supreme Court agreed with the Federal Circuit that "construction of a patent, including terms of art within its claim, is exclusively within the province of a court" to decide.11 But while the Court ruled that ascertaining the meaning of a patent claim is "a matter of law" for the judge, not a jury, to decide,12 the Court also noted that claim construction is a "mongrel practice" that "falls somewhere between a pristine legal standard and a simple historical fact."13 This apparent inconsistency in Markman II, combined with the lack of clear guidance from the Supreme Court on the deference due on appeal to a trial court's claim construction, opened the door to a serious intra-circuit conflict within the Federal Circuit that was not resolved by the court until Cybor.
B. Seeds of Discontent
While many observers believed the dispute surrounding claim construction to have been finally resolved after the Supreme Court's affirmance in Markman II, the opposite was in fact true. On November 15, 1996, the Federal Circuit issued a precedential order in Metaullics Systems Co. v. Cooper,14 dismissing an appeal from a denial of a motion for a preliminary injunction on the ground that the record relevant to the claim construction inquiry had not been adequately developed. Judge Mayer, writing for the majority, reasoned that any attempt to construe the claims in light of the record as it existed on appeal would be premature and "would undermine the wisdom of reserving claim construction for judges."15 But Judge Mayer went one step further. Joined by Judge Rader, Judge Mayer also noted that
because claim construction is a mixed question of law and fact, see Markman . . . 116 S. Ct. at 1390 (classifying claim construction as a "mongrel practice" consisting of factual and legal components), we may be required to defer to a trial court's factual findings. Where a district court makes findings of fact as a part of claim construction, we may not set them aside absent clear error.16
Judge Lourie distanced himself from the dictum in Metaullics departing from the court's in banc ruling in Markman I. Contrary to the intimation of the majority in Metaullics, Judge Lourie argued that the Supreme Court "did not criticize or overrule any aspect of our in banc opinion," including the holding that claim interpretation was a legal issue subject to de novo review.17 No doubt recognizing that the battle would be fought another day, Judge Lourie cautioned that "the analysis and holdings of our in banc court might preclude a subsequent panel before which the issue properly is raised from holding that fact questions exist in claim construction that require deference to the district court."18
C. Judge Rader: A Call for Appellate Restraint
Shortly thereafter, Judge Rader gave the first indication of his own views on the claim construction issue in Wiener v. NEC Electronics, Inc.19 In setting forth the applicable standard of review concerning claim interpretation, Judge Rader explained that
because the parties dispute the meaning of terms in the claims of the patent, this court reviews the district court's order under the requirements of Markman v. Westview Instruments, Inc., __ U.S. __, __, 116 S. Ct. 1384, 1395, 134 L. Ed. 2d 577 (1996) (noting that claim construction "'falls somewhere between a pristine legal standard and a simple historical fact'") (quoting Miller v. Fenton, 474 U.S. 104, 114, 106 S. Ct. 445, 451-52, 88 L. Ed. 2d 405 (1985)).20
Thus, Judge Rader obliquely entered the fray by suggesting that the de novo review standard articulated by the Federal Circuit in Markman I was inconsistent with the Supreme Court's Markman II decision.
Any doubts as to Judge Rader's position were effectively dispelled by his spirited dissent in J.T. Eaton & Co. v. Atlantic Paste & Glue Co.21 There, Judge Rader voiced his objections to the court's de novo approach to review of the claim construction issue:
This decision stands as a monument at the troubled intersection between legal and factual analyses in this court's post-Markman jurisprudence. That claims must be construed by the court does not divorce the interpretative process from a host of inherently factual subsidiary matters, such as how one skilled in the art would understand claim terms and prosecution history statements. This court's role in reviewing claim meanings discerned by the district court calls for modesty and restraint-born not of timidity, but of recognition of the limits inherent in appellate review. When an appellate court arrives at a novel claim interpretation after nearly twenty years of prosecution and litigation, it is inadequately equipped to test its new and unprecedented reading against the views of those skilled in the art. I believe the court today has overstepped the boundaries of effective appellate review.22
The judges comprising the Metaullics panel met again in Eastman Kodak Co. v. Goodyear Tire & Rubber Co.23 This time, Judge Rader, joined by Judge Mayer, put to practice the themes of Metaullics, Wiener and J.T. Eaton regarding deferential review of claim construction. Having concluded that neither the specification nor the prosecution history of the patent at issue in Eastman Kodak conclusively settled the meaning of the disputed claim, the majority approved of the trial court's consultation of extrinsic evidence in the form of expert testimony and technical writings. In view of the trial court's consideration and reliance on such extrinsic evidence, the majority accorded remarkable deference to the trial court's resulting claim construction:
Upon review of the entire record, and recognizing both the trial court's "trained ability to evaluate [expert] testimony in relation to the overall structure of the patent" and the trial court's "better position to ascertain whether an expert's proposed definition fully comports with the specification and claims," see Markman, __ U.S. at __, 116 S. Ct. at 1395, this court sustains the trial court's claim interpretation.24
Consistent with his concurrence in Metaullics, Judge Lourie disagreed with the majority's decision to defer to the trial court's claim construction:
As the majority opinion states, quoting from Supreme Court's Markman opinion, __ U.S. at __, 116 S. Ct. at 1395, 134 L.Ed.2d 577, 38 USPQ2d at 1470, this interpretation is based upon "the trial court's 'trained ability to evaluate [expert] testimony' . . . and . . . 'better position to ascertain whether an expert's proposed definition fully comports with the specification and claims.'" This language, while directed to the differences between judge and jury in Markman, is inapplicable here because the trial court's "trained ability" and "better position" to evaluate witnesses are irrelevant when reading the specification is what counts. The appellate court is equally well situated to read the specification.25
D. Judge Mayer: Deference to Findings of Fact
Judge Mayer's views on the standard-of-review issue resurfaced in Serrano v. Telular Corp.26 There, Judge Mayer, in a concurring opinion, reaffirmed his view that the trial court's claim construction determinations were entitled to deference on appeal:
According to the Supreme Court, claim construction is a matter for the judge, and not the jury. As such, if the claim construction does not require the resolution of disputed material facts, it may be treated as a matter of law and so reviewed by this court. However, where material facts are disputed, claim construction requires resolution of both questions of fact and questions of law, and this court may be required to give due deference to the trial court's factual findings.27
Even after Metaullics and Serrano, Judge Mayer had not yet thoroughly aired his views criticizing the Federal Circuit's practice of reviewing the claim construction issue de novo. Dissenting from an order in CVI/Beta Ventures, Inc. v. Tura LP28 denying a petition for rehearing and declining a suggestion for rehearing in banc, Judge Mayer verbalized his most direct and extensive criticism of the Federal Circuit's de novo review practice since his concurrence in Markman I. According to Judge Mayer, in affirming the judgment in Markman I, the Supreme Court "chose not to reaffirm this court's majority opinion" respecting de novo review authority over claim construction.29 To the contrary, Judge Mayer stated that "[t]he Supreme Court in no way suggested that, where the district court found facts about the prior art or the skill and understanding of an artisan, the appellate panel could disregard these findings upon de novo review. Instead it called for the trial court and the appellate court each to work within its own field of experience and with its own procedures."30
Recalling familiar themes regarding the institutional and functional limitations of the Federal Circuit, Judge Mayer asserted that where a question of law is informed by the resolution of factual disputes, "we must separate the two and give each its proper measure of respect."31 Finally, Judge Mayer concluded that
[s]ave to augment the power of our court, no rational basis exists to deviate from every other area of appellate review, in which we examine the factual findings of a district court only for clear error. To remedy this mistake and limit the role of the court to the review contemplated by the Supreme Court in Markman v. Westview Instruments, Inc., __ U.S. __, 116 S. Ct. 1384, 134 L.Ed.2d 577 (1996), I believe rehearing en banc is necessary.32
More recently, the case of Fromson v. Anitec Printing Plates, Inc.33 presented Judge Mayer with an opportunity to expound further on perceived flaws in Markman I and to criticize the decision's apparent disconnect with the realities of patent trials. As in Eastman Kodak, the focus was on the use of extrinsic evidence in the claim construction inquiry. The district court, in reaching its claim construction of the disputed claim terms, made critical findings based on extrinsic evidence derived from expert testimony, demonstrative evidence, and scientific tests presented at trial. On appeal, the Federal Circuit upheld the district court's claim interpretation in view of all the evidence of record.34
Writing separately in a concurring opinion, Judge Mayer offered his own views explaining the result reached by the panel and, in particular, the deference that the panel accorded to the underlying facts found by the lower court regarding the meaning of the claims.35 According to Judge Mayer, the trial judge in Fromson had made crucial factual findings based on conflicting extrinsic evidence that required deference on appeal:
If there is no disagreement about the meaning of a term in a patent, even a complex one, expert testimony can come in to educate, akin to a motion for summary judgment as a matter of law on undisputed material facts. But when, as here, there is vigorous dispute and conflicting evidence about the meaning of a term, the trial judge has to make findings of fact as he decides the meaning to ascribe to the patent.36
In view of the lower court's consideration of extrinsic evidence, Judge Mayer stressed that the resulting claim interpretation was affirmed "as a matter of law based on the facts he found from conflicting evidence, which are not clearly erroneous."37 In that regard, Judge Mayer clarified that
[t]his construction is correct as a matter of law on this record, but only because of the factual predicate. This case could readily and probably would have come out differently if we were free, as some of our cases suggest, to decide the issue anew as a matter purely of law. The court's opinion, which I fully join, demonstrates that the surest way to maintain consistency and certainty in patent cases is for us to rely on the trial court's fact finding expertise and the record it makes and considers.38
III. The Cybor Decision
Unable to ignore the persistent and vigorous dissension within its own ranks, the Federal Circuit sought the "right case" to settle and resolve the issue. That case was Cybor Corporation v. Fas Technologies, Inc., which "present[ed] the issue of the proper role of [the Federal Circuit] in reviewing the district court's claim construction."39 At issue in Cybor was the interpretation of means-plus-function claims, and in particular, the district court's decision not to limit the scope of the claims based on statements made to the examiner during prosecution.40
The Cybor appeal was initially heard on January 29, 1997, by a panel that included Judges Mayer and Rader-the same two judges who comprised the majority in Metaullics and Eastman Kodak.41 Given the nature of the case and the composition of the panel, oral argument was predictably dominated by questions directed to the deference owed to a trial court's claim construction on appeal. The panel steadily probed counsel regarding whether and to what extent fact questions arise in the claim construction inquiry. Indeed, at one point, Judge Mayer challenged the statements of counsel regarding the authority of Markman I on the issue:
Counsel for FAS: "[I]f this court finds that the district court either misinterpreted or failed to interpret a claim as a matter of law under Markman then this court can make that interpretation. . . . That's because there is no-by definition after Markman there can be no fact issue about the proper interpretation of the claims."
Chief Judge Mayer: "Well, no, that is not necessarily correct. There seems to be some disagreement even on our court."42
On September 5, 1997, the Federal Circuit sua sponte ordered that the case be decided in banc to resolve the conflict in its precedent regarding the standard of appellate review applicable to the issue of claim construction.43 This extraordinary action was likely prompted by an opinion circulated internally by the original Cybor panel that supported, and possibly expanded on, the views previously set forth by Judges Mayer and Rader on the deference due in reviewing a trial court's claim construction.
Judge Archer,44 writing for the in banc majority in Cybor (and who also wrote for the in banc majority in Markman I), wasted no time in rejecting and overruling statements in post-Markman opinions contrary to the principle that claim construction is an issue of law reviewed de novo on appeal. In expressly renouncing the statements of Metaullics and its progeny urging deference to factual determinations underlying a trial court's claim construction, the Cybor majority reasoned that the Supreme Court's Markman II decision supported the Federal Circuit's view of claim construction as a pure legal issue.45 At the very least, the court noted, the Supreme Court left undisturbed the holding in Markman I that claim construction is reviewed without deference on appeal:
[T]he standard of review in Markman I . . . was not changed by the Supreme Court's decision in Markman II, and we therefore reaffirm that, as a purely legal question, we review claim construction de novo on appeal including any allegedly fact-based questions relating to claim construction. Accordingly, we disavow any language in previous opinions of this court that holds, purports to hold, states, or suggests anything to the contrary.46
Not surprisingly, Judges Mayer and Rader filed separate opinions dissenting from the Cybor majority's restatement of the law of claim construction under Markman I.47 According to Judge Mayer, the majority in Cybor "profoundly misapprehend[ed]" Markman II, which controls the court's review of claim construction.48 Of foremost concern to Judge Mayer was the majority's failure to recognize that the Markman II Court did not adopt outright the Federal Circuit's proclamation that claim construction is a pure question of law to be decided de novo on appeal:
The Supreme Court recognized that in some cases there will be conflicting evidence that has to be resolved—where there are factual determinations that are more than just incident to claim construction—such as the understanding of one skilled in the art at the time the patent application was filed. In these cases, all that Markman stands for is that the judge will do the resolving, not the jury. Wisely, the Supreme Court stopped short of authorizing us to find facts de novo when evidentiary disputes exist as part of the construction of a patent claim and the district court has made these findings without committing clear error.49
Similar views reverberated strongly in Judge Rader's concurrence. There, Judge Rader agreed that "the Supreme Court did not address appellate review of claim construction," but rather "repeatedly intimated that claim construction was not a purely legal matter."50 Moreover, Judge Rader expressed practical concerns regarding the adverse impact of the Cybor decision on the role of the trial judge in patent infringement actions. According to Judge Rader, de novo review of claim construction will transform patent trials into little more than expensive dress rehearsals for Federal Circuit decision. In that regard, Judge Rader lamented that the Cybor decision defeats the certainty sought by the court in Markman I:
[T]he trial court's early claim construction provides no early certainty at all, but only opens the bidding. The meaning of a claim is not certain (and the parties are not prepared to settle) until nearly the last step in the process—decision by the Court of Appeals for the Federal Circuit. To get a certain claim interpretation, parties must go past the district court's Markman I proceeding, past the entirety of discovery, past the entire trial on the merits, past post trial motions, past briefing and argument to the Federal Circuit—indeed past every step in the entire course of federal litigation, except Supreme Court review.51
Thus, rather than fulfill our legal system's commitment to the trial as the "main event,"52 Judge Rader predicted that application of the de novo review of claim construction will have the effect of diminishing the trial courts' role in patent cases.53
IV. The Need for Supreme Court Guidance
The Cybor majority and the concurrences of Judges Mayer and Rader all drew upon the Supreme Court's Markman II decision to reach their respective conclusions regarding the appropriate standard of review for claim construction. Indeed, as the Cybor opinions clearly illustrate, support can be found in the Supreme Court's decision for either side of the issue. On one hand, the Court in Markman II did not specifically address the appropriate standard of review applicable to a district court's claim construction on appeal. That would, as the Cybor majority suggests, leave in place the court's pronouncement in Markman I that claim construction is reviewed de novo on appeal. But on the other hand, it would be inaccurate to say that the Supreme Court adopted the Federal Circuit's strict view that claim construction is a pure legal question. To the contrary, notwithstanding its decision that claim construction was an issue for the judge and not the jury, the Court in Markman II seemed to consider the issue a mixed question of fact and law-a characterization that would resist straightforward application of the de novo review standard.54 Thus, on balance, the Markman II decision is ambiguous regarding the proper appellate standard of review respecting the claim construction issue.
Since Markman II, parties have unsuccessfully sought further guidance from the Supreme Court on the issue of what appellate deference should be accorded a trial court's claim interpretation E.g., CVI Beta Ventures, Inc. v. Tura LP & Brodart Co.;55 General Am. Transp. Corp. v. Cryo-Trans, Inc.56 In declining to review the issue in prior petitions for certiorari, the Supreme Court may have decided that as a matter of judicial courtesy and prudence, the better course was to allow the Federal Circuit to resolve the intra-circuit conflict on its own rather than intervene prematurely. Now that the Federal Circuit has seized such an opportunity and decided the issue in banc, the issue is arguably ripe for consideration by the high court.
A. A Functional Approach
Assuming that certiorari from the Supreme Court is sought and granted, how should the Court rule on the standard-of-review issue? The Supreme Court would need to look no farther than Markman II and its other recent decisions for the answer. In Markman II, the Court acknowledged that neither history nor precedent provides clear answers regarding the factual and legal nature of claim construction in patent infringement litigation.57 Consequently, the Court examined the functional considerations in allocating the claim construction duty as between judge and jury.
This functional analysis is equally helpful in determining the respective roles of the trial court and the Federal Circuit in the claim construction process. Under this functional approach, deferential review is warranted "when it appears that the district court is 'better positioned' than the appellate court to decide the issue in question or that probing appellate scrutiny will not contribute to the clarity of legal doctrine."58 Indeed, the "reviewing attitude that a court of appeals takes toward a district court decision should depend upon the respective institutional advantages of trial and appellate courts."59
In the case of patent trials, the trial judge, as the principal receiver and evaluator of the evidence, is in a better position to assess the meaning of terms used in patent claims than is a panel of appellate judges.60 As noted by Judge Rader, who has himself presided over a complex patent jury trial by special designation,61 "[t]rial judges can spend hundreds of hours reading and rereading all kinds of source material, receiving tutorials on technology from leading scientists, formally questioning technical experts and testing their understanding against that of various experts, examining on site the operation of the principles of the claimed invention,62 and deliberating over the meaning of the claim language."63 By stark contrast, the ability of the appellate judges of the Federal Circuit to determine what a claim means is hindered by the inherently limited nature of the appellate record. As a matter of practicality, "[a]ppellate briefs and fifteen minutes per side of attorney argument are not designed for de novo findings of disputed technologic questions."64
While the views expressed by Judges Mayer and Rader regarding appellate deference on claim construction have been rejected by the majority of their colleagues on the Federal Circuit, they nevertheless strike a chord with many veteran patent practitioners and district court judges. The Federal Court's de novo review practice in the Markman/Cybor regime can be argued to be out of step with the realities of the process by which claims are construed at the district court level. Indeed, in reaching a proper claim construction, the district courts regularly consider extrinsic evidence to resolve crucial disputes that can only be fairly characterized as factual in nature. For example, a trial judge often will receive and weigh live testimony from technical experts to discern how certain terms and prosecution events are viewed by those of ordinary skill in the art. Aside from considering the testimony of live witnesses, the trial judge is also likely to draw factual inferences from "physical or documentary evidence or . . . other facts" in reaching its construction of a claim.65
Since the Federal Circuit's Markman I decision, so-called "Markman hearings" on claim construction have become de rigueur in patent litigation.66 During these Markman hearings, the parties assist the trial judge in construing the claims in dispute by proffering evidence and argument on claim interpretation, most often in the form of expert testimony. But the value of engaging in this expensive and time-consuming process is put into serious question when the resulting claim interpretation reached by the trial judge is given little, if any, deference on appeal. Consequently, litigants must increasingly look past the district court in patent cases, reducing the prospects for settlements at the trial level and protracting the litigation process.
Moreover, the Cybor decision will do little to assuage the concerns registered by the district courts regarding the Federal Circuit's apparent usurpation of their role in patent infringement cases. Judge Schwartz of the Delaware district court pointedly disagreed with the basic premise of the Federal Circuit's Markman I decision:
As I understand Markman, because claim construction presents a purely legal question, trial judges must ignore all non-transcribable courtroom occurrences . . . . 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 wish 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 Appeals states that the trial court does not do something that the trial court does and must do to perform the judicial function, that court knowingly enters a land of sophistry and fiction.67
Similarly, another respected member of the Delaware bench, Judge McKelvie, has also expressed concern regarding the impact of Markman on patent trials. Due to the importance of claim construction on the outcome of patent cases, Judge McKelvie has predicted that in light of Markman, "parties will now routinely move for the early resolution of the claim construction issue," and as a result, "will likely seek ways to promptly bring the issue before the Federal Circuit."68 Moreover, Judge McKelvie has also taken exception to the Federal Circuit's clear signal in Markman "that it would have the final say as to the meaning of words in a claim of a patent, according no deference to decisions by the various United States District Judges."69 According to Judge McKelvie, one obvious but worrisome consequence of such review power is that "in spite of a trial judge's ruling on the meaning of disputed words in a claim, should a three-judge panel of the Federal Circuit disagree, the entire case could be remanded for retrial on [a] different claim[ ]" interpretation.70
B. Examination and Application of the De Novo Standard
The concerns expressed above need not be realized as long as the Federal Circuit acts consistently with its role as the "law reviewer," not the "evidence weigher." Perhaps to pacify the fears of the patent bar and the district courts regarding the court's application of the de novo review standard, at least one member of the Cybor majority suggested that "our adoption of the rule that claim construction is an issue of law does not mean that we intend to disregard the work done by district courts in claim construction or that we will give no weight to a district court's conclusion as to claim construction, no matter how the court may have reached that conclusion."71
Importantly, despite the ubiquitous application of the "de novo" standard in appellate court decisions, its precise meaning has been somewhat elusive. Relatively recently, however, the Supreme Court clarified that under the de novo standard, particularly as it applies to construction of a written document, appellate review "should proceed like review of any other district court decision," i.e., by exercising plenary review over the trial court's legal conclusions and accepting findings of fact that are not clearly erroneous.72 Such bifurcated or split review permits the appellate court to review freely legal conclusions but at the same time allows appropriate deference on questions for which its position is inferior.73 Thus, appellate deference is not inconsistent with and does not preclude independent review of nominal legal questions.74
Conceivably, in the aftermath of Cybor, the Federal Circuit on appeal can either (1) defer on those aspects of the claim construction inquiry where the trial judge is better situated to make a judgment, or (2) choose to draw its own conclusions from the record. The former course is preferable because it would promote judicial efficiency and best allocate the claim construction inquiry between the trial courts and the Federal Circuit based on their respective institutional advantages. By contrast, the latter course should not be an acceptable option. As an appellate body, the Federal Circuit, by function and design, is ill-equipped to engage in the evidentiary evaluations relevant to claim construction that are the staple of district court judges. "Duplication of the trial judge's efforts in the court of appeals would very likely contribute only negligibly to the accuracy of fact determination at a huge cost in diversion of judicial resources."75
Thus, the Federal Circuit should avoid wholly substituting its own judgment for that of the trial court on issues where the trial court's position is superior. Else, the Federal Circuit may unintentionally elevate itself as the primary arena for claim construction, relegating district courts to a redundant-if not unnecessary-role in the claim construction process. That, arguably, may be the legacy of Cybor.
The Federal Circuit's plenary authority over the claim construction process may have harsh results in practice and may undermine the juridical role of the district courts in patent litigation. At the very least, it can be urged that functional considerations recognized by the Supreme Court strongly favor according some deference in reviewing a trial court's claim construction, particularly where the meaning of a claim turns on evidence better adduced and evaluated at trial. In view of Cybor, however, it will require direct intervention by the high court to achieve that result. Having the benefit of the considered views of the in banc Federal Circuit, the Supreme Court should not delay in completing what it started in Markman II.
1 52 F.3d 967 (Fed. Cir. 1995) (in banc), aff'd, 116 S. Ct. 1384 (1996).
2 Id. at 979, 983-84.
3 46 U.S.P.Q.2d 1169 (Fed. Cir. 1998) (in banc).
4 Id. at 1171.
5 64 F.3d 1553 (Fed. Cir. 1995), cert. denied, 116 S. Ct. 2554 (1996).
6 Id. at 1556; see also Hoechst Celanese Corp. v. BP Chem. Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996) (Markman requires the Federal Circuit to decide de novo disputed questions of claim interpretation without deference to the trier of fact), cert. denied, 117 S. Ct. 275 (1997); Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 72 F.3d 857, 863 (Fed. Cir. 1995), vacated and remanded on other grounds, 117 S. Ct. 1240 (1997) (with respect to claim construction, Markman requires "independent determination of the construction of the claims, as a matter of law, unencumbered by the trial process").
7 Judge Mayer assumed the position of Chief Judge on December 25, 1997.
8 Id. at 989 (Mayer, J., concurring in the judgment).
9 Id. at 991.
10 Id. at 998 (Rader, J., concurring in the judgment).
11 Markman, 116 S. Ct. at 1387.
13 Id. at 1390, 1395.
14 100 F.3d 938 (Fed. Cir. 1996).
15 Id. at 939.
17 See id. at 940 (Lourie, J., concurring in part) (citations omitted).
19 102 F.3d 534 (Fed. Cir. 1996).
20 Id. at 539.
21 106 F.3d 1563 (Fed. Cir. 1997).
22 Id. at 1577 (Rader, J., dissenting) (citations omitted).
23 114 F.3d 1547 (Fed. Cir. 1997).
24 Id. at 1555-56.
25 Id. at 1563 (Lourie, J., dissenting-in-part). On January 22, 1998, in a speech presented at the mid-winter meeting of the American Intellectual Property Law Association, Judge Lourie reaffirmed his views on deference:
On questions of law, of course, we have plenary review in all fields, which amounts to no deference, but even on such questions, we look at what occurred below and do not reverse unless we are convinced that we should. We know that the lower tribunal may have spent much more time on the case than we can, that it heard witnesses, and that we are not omniscient. . . .
. . . However, we can read a patent and the prosecution history, and, in many cases, we need not observe the demeanor of expert witnesses telling the trial court (and us) what the patent means.
55 Pat., Trademark, & Copyright J. (BNA) 243, 244 (Jan. 29, 1998).
26 111 F.3d 1578 (Fed. Cir. 1997).
27 Id. at 1586 (Mayer, J., concurring) (citing Metaullics and Fed. R. Civ. P. 52(a)).
28 112 F.3d 1146 (Fed. Cir.), reh'g denied, 120 F.3d 1260 (Fed. Cir. 1997), cert. denied, 66 U.S.L.W. 3399 (U.S. Feb. 23, 1998) (No. 97-881).
29 120 F.3d at 1261 (Mayer, J., dissenting).
31 Id. at 1262.
33 132 F.3d 1437 (Fed. Cir. 1997).
34 Id. at 1445.
35 Circuit Judge Newman, writing for the majority in Fromson, did not expressly share Judge Mayer's views on the deference issue. While it is not entirely clear from the opinion, the majority appears to have considered the record anew, consistent with the de novo standard of review.
36 132 F.3d at 1447.
37 Id. at 1448.
39 46 U.S.P.Q.2d at 1172.
40 The in banc court, however, once again declined to address the issue whether equivalence under 35 U.S.C. § 112, ¶ 6 is a question of fact or law. Id. at 1175 n.5; see also Markman I, 52 F.3d at 977 n.8.
41 Circuit Judge Plager also sat on the original panel assigned to the Cybor appeal.
42 Audio recording of oral argument (January 29, 1997).
43 46 U.S.P.Q.2d. at 1171, 1173.
44 Judge Archer vacated the position of Chief Judge on December 24, 1997.
45 46 U.S.P.Q.2d at 1173-74.
46 Id. at 1174 (citations omitted).
47 The in banc court voted 9-3 on the claim construction issue in favor of de novo review. Judge Newman, who was the lone dissenter in Markman I, also filed a separate opinion expressing additional views criticizing the Cybor majority's affirmation of the de novo review standard. Until Cybor, however, Judge Newman had not publicly joined in the criticism of the Federal Circuit's treatment of claim construction as an issue of law since the issuance of the court's in banc decision. To the contrary, Judge Newman authored several post-Markman opinions dutifully applying the de novo standard of review. See, e.g., Multiform Desiccants, Inc. v. Medzam, Ltd., 45 U.S.P.Q.2d 1429, 1431 (Fed. Cir. 1998); Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572 (Fed. Cir. 1996).
48 46 U.S.P.Q.2d at 1181 (Mayer, C.J., concurring in the judgment).
49 Id. at 1182.
50 Id. at 1189 (Rader, J., concurring in the judgment).
51 Id. at 1192.
52 Id. at 1190 (citing Wainwright v. Sykes, 433 U.S. 72, 90 (1977)).
53 Id. at 1191-92; see also Markman, 52 F.3d at 989 (Mayer, J., concurring in the judgment) ("[T]o decide what the claims mean is nearly always to decide the case.").
54 Markman, 116 S. Ct. at 1390, 1395; see also Gasperini v. Center for Humanities, Inc., 116 S. Ct. 2211, 2227 (1996) (Stevens, J., dissenting) (noting that Markman involved a mixed question of law and fact).
55 120 F.3d 1260 (Fed. Cir. 1997), cert. denied, 118 S. Ct. 1039 (1998).
56 93 F.3d 766 (Fed. Cir. 1996), cert. denied, 117 S. Ct. 1334 (1997).
57 116 S. Ct. at 2227.
58 Salve Regina College v. Russell, 499 U.S. 225, 233 (1991).
59 First Options of Chicago, Inc. v. Kaplan, 115 S. Ct. 1920, 1926 (1995) (citation and internal quotes omitted).
60 See Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 402 (1990) ("Familiar with the issues and litigants, the district court is better situated than the court of appeals to marshall the pertinent facts and apply the fact-dependent legal standard."); see also Ornelas v. United States, 116 S. Ct. 1657, 1664 (1996) (Scalia, J., dissenting) ("An appellate court never has the benefit of the district court's intimate familiarity with the details of the case-nor the full benefit of its hearing of the live testimony.").
61 Loral Fairchild Corp. v. Victor Co. of Japan Ltd., Civil Action Nos. 91-5056-ARR, 92-0128-ARR (E.D.N.Y).
62 See, e.g.,Cryo-Trans, Inc. v. General Am. Transp. Corp., 893 F. Supp. 774, 777 (N.D. Ill. 1995) ("During the trial, the Court received testimony and documentary evidence and conducted a site visit to personally inspect and view the [accused] railcars at issue in this case."), aff'd in part, rev'd in part, 93 F.3d 766 (Fed. Cir. 1996), cert. denied, 117 S. Ct. 1334 (1997).
63 46 U.S.P.Q.2d at 1193.
64 Markman, 52 F.3d at 999 (Newman, J., dissenting); see also Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1582 (Fed. Cir. 1992) (deference is due trial judge "who had the opportunity to observe those intangibles missing from the appellate record").
65 See Anderson v. City of Bessemer City, 470 U.S. 564, 574 (1985).
66 See, e.g., Baxa Corp. v. McGaw, Inc., 981 F. Supp. 1348, 1350 (D. Colo. 1997); Comark Communications, Inc. v. Harris Corp., 1997 U.S. Dist. LEXIS 2067 (E.D. Pa. Feb. 24, 1997); Huang v. Auto-shade, Inc., 945 F. Supp. 1307 (C.D. Cal. 1996); Moll v. Northern Telecom, Inc., 1996 U.S. Dist. LEXIS 175 (E.D. Pa. Jan. 2, 1996), aff'd, 1996 U.S. App. LEXIS 17607 (Fed. Cir. July 15, 1997); Elf Atochem North Am., Inc. v. Libbey-Owens-Ford Co., 894 F. Supp. 844 (D. Del. 1995); Loral Fairchild Corp. v. Victor Co. of Japan, Ltd., 906 F. Supp. 798 (E.D.N.Y. 1995).
67 Lucas Aerospace, Ltd. v. Unison Indus., L.P., 890 F. Supp. 329, 333-34 n.7 (D. Del. 1995).
68 Elf Atochem, 894 F. Supp. at 857.
71 46 U.S.P.Q.2d at 1180 (Bryson, J., concurring).
72 First Options, 115 S. Ct. at 1926; see also Markman, 52 F.3d at 991 (Mayer, J., concurring) (noting that "any facts found in the course of interpreting the claims must be subject to the same standard by which we review any other factual determinations: for clear error in facts found by a court"). Indeed, the First Options Court made clear that even statutory construction issues, which conventionally receive de novo review by appellate courts, do not always preclude giving some deference to the decision below. See 115 S. Ct. at 1926 (describing the "legal leeway" that courts give to administrative agencies' interpretations of statutes under Chevron U.S.A. Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984)); cf. Silwany-Rodriguez v. Immigration & Naturalization Serv., 975 F.2d 1157, 1160 (5th Cir. 1992) (referring to the "limited," but nonetheless "de novo review" authority exercised by an appellate court in deferring to an agency's interpretation of a statute).
73 1 Steven Alan Childress and Martha S. Davis, Federal Standards of Review § 2.19 (2d ed. 1992).
74 See Baumgartner v. United States, 322 U.S. 665, 671 (1944).
75 Anderson, 470 U.S. at 574-75.
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