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Abstract

Claim construction refers to the task of construing, or interpreting, the words of patents' claims to establish the metes and bounds of a patent. Theoretically, the task of claim construction serves to operationalize the concept of "invention," which lies at the heart of the U.S. patent system.[...] Rather than focusing on the set of cases in which the Federal Circuit addresses claim construction, this study focuses on a set of cases defined by a different patent doctrine. The basic idea is to explore the impact of claim construction on other areas of patent law.[...] The hypothesis of the claim construction effect can be empirically tested, and this Article's first and most significant contribution is to test the hypothesis using empirical techniques. Ultimately, it argues that the hypothesis finds support in four central pieces of evidence. First, the Article shows that the average rate at which the Federal Circuit uses claim construction in the dataset has increased over the last fifteen years. Second, the Article shows that the average rate at which the court modifies lower court claim construction determinations has increased over the last fifteen years. Third, the Article shows that as the Federal Circuit increased the rate at which it modified lower court claim construction determinations, there was a complementary decrease in the power of the court to affirm. The fourth piece of evidence, while supporting the hypothesis, also suggests an explanation. It argues that the claim construction effect is largely the product of an intracircuit dispute over the development of claim construction doctrine. The appearance of the claim construction effect associates well with the strengthening of distinctly different judicial approaches to the task of construing claims. The second general contribution made by this article is an empirical analysis of whether the Federal Circuit corrected the claim construction effect with its opinion in Phillips v. AWH Corp., which, by attempting to clarify how claim construction should be analyzed, seeks to resolve relevant differences in judicial approaches to claim construction. Here, the results paint a decidedly mixed picture. Some predictability appears to have returned after Phillips, with some judges significantly changing their authorship patterns. There is evidence, though, that the fundamentals of the claim construction effect remain strongly entrenched in Federal Circuit jurisprudence. The Article proceeds in four additional parts. Part II describes the study design and methodology, and includes a description of the doctrine that defines the data set--the doctrine of equivalents. Part III presents the results and provides an analysis of their meaning. Part IV offers some concluding remarks.

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