The Supreme Court, Stare Decisis, and the Role of Judicial Deference in Patent Claim Construction Appeals

Abstract

The U.S. Court of Appeals for the Federal Circuit reviews de novo the rulings of district judges about patent claim construction. This state of affairs - surprising to many lawyers who are unfamiliar with patent law - is controversial because claim construction is one of the most important and vexing aspects of patent litigation, necessary to the vast majority of patent cases, and because it is probably responsible, at least in part, for the high reversal rate in patent cases. Commentary by both scholars and judges about the standard of review in patent cases has centered on whether the Federal Circuit should change it and review claim construction rulings with deference.

This commentary relies on a flawed assumption. The Federal Circuit lacks the authority to review claim construction rulings deferentially, because de novo review is required by the Supreme Court's decision in Markman v. Westview Instruments. In particular, the Supreme Court stated that claim construction rulings are entitled to stare decisis.

This article will argue that deference should be granted to the factual findings and acquired technical expertise underlying district courts' claim construction rulings in at least some limited cases - but it will also explain why change must and should come from the Supreme Court.

Keywords: patents, standard of review, markman, phillips, federal circuit