Patent Claim Construction: An Appeal for Chevron Deference

45 Pages Posted: 5 Jul 2007 Last revised: 10 Dec 2007

See all articles by Tom Chen

Tom Chen

University of Virginia

Abstract

In 1998, the Federal Circuit decided Cybor Corp. v. FAS Technologies, holding that patent claim construction was a purely legal issue subject to de novo appellate review. This highly controversial decision has since become the focus of intense scrutiny and empirical studies exposing the problematic nature of de novo review. In November 2006, the Federal Circuit issued a divided opinion indicating its most significant movement towards reconsidering Cybor, prompting some observers to forecast the impending demise of de novo review.

This Note presents a previously unexplored approach to patent claim construction and its appellate review. Briefly summarized, the Note suggests that Chevron deference is the proper standard of review for patent claim construction, and the narrowest reasonable claim interpretation should be adopted whenever ambiguities arise. Together, these rules would simultaneously address the inefficiency, indeterminacy, and information costs which currently plague the patent system. Ultimately, this proposal would achieve sweeping, multi-institutional patent reform from both ex ante and ex post perspectives.

The argument proceeds in several parts. Part I introduces the concept of claim construction, its central role in patent law, and recent controversies. Part II questions the popular assumption that the Federal Circuit's alarmingly high claim construction reversal rate reflects erroneous interpretations by trial courts, and suggests instead that trial courts may actually be deriving equally reasonable alternative interpretations. Part III builds upon that analysis to demonstrate why Chevron deference should replace the current regime of de novo review. Part IV explains how narrowly interpreting ambiguous patent claims serves as a crucial adjunct to Chevron deference, by acting as a vital information-forcing rule. Part V responds to potential criticisms, while Part VI assesses the broad reform potential of this Chevron-based approach, emphasizing its comparative advantages over previous patent reform proposals.

Keywords: patent, claim construction, de novo, deference, Cybor, Markman, Phillips, Chevron

Suggested Citation

Chen, Tom, Patent Claim Construction: An Appeal for Chevron Deference. Virginia Law Review, Vol. 94, 2008, Available at SSRN: https://ssrn.com/abstract=997372

Tom Chen (Contact Author)

University of Virginia ( email )

1400 University Ave
Charlottesville, VA 22903
United States

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