Technology: In search of lower Federal Circuit reversal rates

A case before the Supreme Court may bring greater consistency to Federal Circuit patent claim interpretation methodologies

The Court of Appeals for the Federal Circuit is by far the most important and closely-watched circuit court for tech companies, because it is the appeals court for all patent infringement litigations. Although the Supreme Court has taken appeals from the Federal Circuit with increased frequency, it is the Federal Circuit that is, day-in and day-out, refining the patent laws on patentable subject matter, infringement, damages and so forth. As demonstrated by Apple’s recent suit against Samsung, patent infringement awards can exceed $1 billion. An injunction can cripple a company’s sales and customer relations. However, reversals by the Federal Circuit have cost Lucent a $350 million verdict against Microsoft and cost Centocor a $1.6 billion award against Abbott Labs. Therefore, a consistent, reliable Federal Circuit is necessary to help the district courts run their patent infringement litigations, to assist companies with their patent infringement analyses and to limit these huge reversals of fortunes.

With much of our manufacturing transferred overseas, patents are more important than ever to protect our innovations from low-cost copiers. They fulfill the Constitutional mandate to protect the only “right” actually listed in the Constitution, prior to the Bill of Rights:

Unfortunately, despite its importance, claim interpretation is often unpredictable. By various measures, the Federal Circuit reverses district court claim interpretations at a very high rate, suggesting to some that the “claim game” has become a game of chance. Indeed, the situation prompted Judge Patti B. Saris of the District Court for the District of Massachusetts to quip that if “the reversal rate is as high as some claim, the easiest thing to do is figure out what your decision is and then write the opposite.”

Professors R. Polk Wagner and Lee Petherbridge contend that one reason for the high reversal rate is methodological inconsistencies among Federal Circuit judges. For example, they assert that some Federal Circuit judges apply a “procedural” approach to claim interpretation, while others apply a “holistic” approach. Under the procedural approach, the written description of the invention is considered exemplary, and the claims are interpreted with respect to their ordinary meaning to those in the patent’s field, absent an unambiguous disclaimer of claim scope. Under the holistic approach, patent claims are interpreted “via an all-encompassing, open-ended reading of the claim language, patent disclosure, prosecution history, relevant dictionaries, and on-point expert testimony.” Some judges who employ the holistic method scour the written description for words of limitation. They contend that an inventor should not be entitled to patent coverage beyond the limits of the written description.

Contributing Author

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Matthew Siegal

Matthew W. Siegal, a partner in Stroock's Intellectual Property Group, concentrates his practice on extensive patent litigation, prosecution, opinion, licensing and due diligence activities for...

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Contributing Author

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Etan Chatlynne

Etan Chatlynne is an Associate in the Intellectual Property Group at Stroock & Stroock & Lavan LLP. His practice involves all areas of intellectual property...

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