The Claim Construction Effect

Michigan Telecommunications & Technology Law Review, Vol. 15, p. 215, February 2009

Loyola-LA Legal Studies Paper No. 2009-32

53 Pages Posted: 21 Aug 2009 Last revised: 17 Sep 2009

Date Written: February 1, 2009

Abstract

The United States Court of Appeals for the Federal Circuit was uniquely created to guide the patent system. Since its creation the court has rapidly grown in importance, as has interest and debate over the success of the court as an institution. Some of the most controversial actions of the court involve its attempts to resolve uncertainty in the central patent law doctrine of claim construction - the interpretation of patent claims.

This Article explores the consequences of the federal circuit’s efforts to reform claim construction jurisprudence. Using empirical evidence for support, it makes the argument that, as the federal circuit grappled with the problem of claim construction, a so-called claim construction effect developed in federal circuit patent decisions. The hypothesis of the claim construction effect states that as claim construction doctrine increased in prominence in federal circuit opinions, a concomitant increase in unpredictability in claim construction doctrine bled into other areas of patent law. The effect was to decrease the predictability of federal circuit decisions in other areas of patent law. Building on earlier empirical work, this Article finds an explanation for the claim construction effect in the addition of new judges in the year 2000 that can be associated to changes in claim construction outcomes and to a decrease in the predictability of federal circuit decisions in other areas of patent law.

This Article also analyzes whether the federal circuit corrected the claim construction effect with its opinion in Phillips v. AWH Corp. Here, the results paint a decidedly mixed picture. Some stability appears to have returned after Phillips. But there is also evidence that the fundamentals of the claim construction effect remain strongly entrenched in federal circuit jurisprudence.

Keywords: Patent, Courts, Claims, Intellectual Property, Judges, Jurisprudential Development, Structural Development of Law, Equivalents

Suggested Citation

Petherbridge, Lee, The Claim Construction Effect (February 1, 2009). Michigan Telecommunications & Technology Law Review, Vol. 15, p. 215, February 2009, Loyola-LA Legal Studies Paper No. 2009-32, Available at SSRN: https://ssrn.com/abstract=1459484

Lee Petherbridge (Contact Author)

Loyola Law School Los Angeles ( email )

919 Albany Street
Los Angeles, CA 90015-1211
United States
213-736-8194 (Phone)
213-380-3769 (Fax)

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