Patent 'Trolls' and Claim Construction
91 Notre Dame Law Review 1045 (2016)
30 Pages Posted: 26 Aug 2015 Last revised: 9 Apr 2017
Date Written: August 24, 2015
This Essay explores the largely overlooked relationship between claim construction and patent assertion entities (patent “trolls”), finding that claim construction problems and trends benefit patent assertion entities. First, the Federal Circuit is deeply divided as to the proper approach to claim construction. This split is a significant contributor to uncertain patent scope, which is widely-recognized as a core reason for the rise and success of patent assertion entities. Second, case law and commentary increasingly endorse an approach to claim construction that relies on the “general meaning” in the technical field with limited reliance on the patent itself. This approach increases the breadth and uncertainty of patent scope, the exact conditions under which patent assertion entities thrive. Unsurprisingly, patent assertion entities often rely on “general meaning” arguments. Third, the Supreme Court’s recent adoption of a more deferential standard of review for claim construction in Teva v. Sandoz is widely praised. However, because patent assertion entities file in favorable district courts, like the Eastern District of Texas, deferential review increases both the benefits patent assertion entities receive from favorable districts and their incentive to file in those districts.
If patent assertion entities are as problematic as widely thought, these claim construction problems and trends warrant reconsideration. Some may argue that current claim construction rules and trends are warranted despite their positive impact on patent assertion entities. And other means may exist for combatting patent assertion entities without altering claim construction rules or trends. But the positive effects for patent assertion entities must at least be factored into any cost-benefit analysis of claim construction rules. Moreover, the fact that current claim construction rules and trends produce the conditions under which patent assertion entities thrive suggest that patent assertion entities may be a symptom of larger problems with claim construction doctrine.
Keywords: patent, troll, patent assertion entity, nonpracticing entity, PAE, NPE, claim construction, Eastern District of Texas, Teva v. Sandoz, de novo review
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