Did Phillips Change Anything? Empirical Analysis of the Federal Circuit’s Claim Construction Jurisprudence

39 Pages Posted: 13 Aug 2011 Last revised: 25 May 2014

R. Polk Wagner

University of Pennsylvania Law School

Lee Petherbridge

Loyola Law School Los Angeles

Date Written: July 1, 2011

Abstract

The United States Court of Appeals for the Federal Circuit’s role in the U.S. Patent system has never been so controversial. And at the center of the debate concerning the institutional structure of the patent system lies the Federal Circuit’s 2005 en banc decision in Phillips v. AWH, representing that court’s effort to resolve problems with perhaps the most important doctrine in the patent law – claim construction, or the interpretation of patent claims. Building on our prior work in this area, we report the results of an empirical study evaluating the jurisprudence of claim construction at the Federal Circuit. We find little to suggest that the Phillips opinion has had any measurable effect on the law of claim construction. Indeed, we find that the open-ended nature of the Phillips opinion, and its failure to resolve the longstanding split in claim construction jurisprudence, has undermined the Federal Circuit’s efforts to develop a coherent and predictable jurisprudence. Accordingly, Phillips stands forth as an unfortunate example of poor decision-making by the court, and one that negatively impacts its overall role in the patent system.

Keywords: patents, patent law, claim construction, patent claims, federal circuit, courts, patent litigation

JEL Classification: K2, K41, K39, L50, O34, O38

Suggested Citation

Wagner, R. Polk and Petherbridge, Lee, Did Phillips Change Anything? Empirical Analysis of the Federal Circuit’s Claim Construction Jurisprudence (July 1, 2011). INTELLECTUAL PROPERTY AND THE COMMON LAW, S. Balganesh, ed., Cambridge University Press, 2012 ; U of Penn, Inst for Law & Econ Research Paper No. 11-27; U of Penn Law School, Public Law Research Paper No. 11-33; Loyola-LA Legal Studies Paper No. 2011-28. Available at SSRN: https://ssrn.com/abstract=1909028

R. Polk Wagner (Contact Author)

University of Pennsylvania Law School ( email )

3501 Sansom Street
Philadelphia, PA 19104
United States
267-433-4431 (Phone)

Lee Petherbridge

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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