The Federal Circuit stated in an en banc decision in Cybor Corp. v. FAS Technologies, Inc. that the construction of patent claims is "a purely legal issue," and is therefore subject to de novo review on appeal. The Cybor decision reaffirmed the position of the majority of the Federal Circuit which had been announced in its en banc Markman decision, and proclaimed that the de novo standard of review is supported by the Supreme Court's Markman decision, a Seventh Amendment opinion. However, Cybor included strong opposition to a de novo standard of review from some of the judges of the Federal Circuit. Moreover, in subsequent cases, the consistent citation of Cybor in support of the application of a de novo standard of review of claim construction has continued to generate scathing dissents from numerous judges of the Federal Circuit and strong criticism from other members of the bench and bar. Even Congress has taken up the issue, proposing in pending reform legislation to grant trial judges the authority to certify interlocatory appeals on claim construction issues in order to try to stem the tide of high reversal rates following full trials. Nevertheless, the Supreme Court has denied certiorari in at least three recent cases in which the de novo standard of review from Cybor was under attack. While there was a sharp division of opinion among the judges of the Federal Circuit in Cybor, all of the judges relied on the Supreme Court's Markman decision, a Seventh Amendment case, to support differing views. It is clear that there is disagreement among the judges of the Federal Circuit regarding the basis of the holding in the Supreme Court's Markman decision. In Cybor, the majority of the Federal Circuit judges chose to view all the subsidiary questions involved in the construction of patent claims as matters of "law," indirectly holding that there are no issues of fact involved in claim construction. Is this view supported by the Supreme Court in its Markman analysis? Has the Federal Circuit engaged in creating unwarranted special rules for patent cases in the area of the Seventh Amendment? Should the Federal Circuit be free to define all the subsidiary questions involved in the construction of patent claims as matters of "law," thereby indirectly acting as its own lexicographer with respect to the term "fact" in the Seventh Amendment? Part I of this Article examines whether the Cybor rule of de novo appellate review of patent claim construction is consistent with Supreme Court precedent, focusing primarily on Seventh Amendment decisions. Part II discusses whether or not it is appropriate for the Federal Circuit to set the boundary between issues of fact and issues of law in patent cases. Finally, Part III addresses the extent to which various proposed standards of appellate review of claim construction are principled, with particular emphasis on the Seventh Amendment.
Eileen M. Herlihy,
Appellate Review of Patent Claim Construction: Should the Federal Circuit Be Its Own Lexicographer in Matters Related to the Seventh Amendment,
Mich. Telecomm. & Tech. L. Rev.
Available at: https://repository.law.umich.edu/mttlr/vol15/iss2/6