Attaining Greater Predictability in Patent Claim Construction

32 Pages Posted: 23 Mar 2007

Date Written: December 2006


In Markman v. Westview Instruments, Inc., the United States Court of Appeals for the Federal Circuit held that claim construction was exclusively a matter of law, and that upon appeal the district court's claim construction was subject to de novo review. These holdings remain controversial, and there are many instances where claim interpretations made by trial judges have received special deference, including rulings on motions for reconsideration and motions for vacatur, the granting of collateral estoppel effect, and even appeals before some panels of the Federal Circuit.

The controversy over the holdings of Markman, together with the difficulty in comprehending the complex technical matter found in many patents, and the Federal Circuit's policy against hearing interlocutory appeals, have led to a significant number of claim constructions being overturned on appeal. Many commentators have advanced proposals that would alter the way parties and courts construe patent claims. This paper explores several of these proposals, and analyzes how effective they would be in producing greater predictability for claim construction.

This writer believes that the best proposal is that advanced by Joseph Miller, requiring applicants for patents to define the terms of art and technical terms that they use in their claims. This proposal could be implemented quickly and would be likely to significantly reduce the number of claim constructions reversed on appeal. This writer concludes that while Congress has made some progress toward finding a solution to the unpredictability of patent claim construction, greater steps need to be taken, and that it is not Congress, but rather the Patent and Trademark Office, that is in the best position to quickly effect these steps.

Keywords: Markman, Cybor, Patent, claim construction

JEL Classification: O34, K11, K19, K39

Suggested Citation

Stein, Charles S., Attaining Greater Predictability in Patent Claim Construction (December 2006). Available at SSRN: or

Charles S. Stein (Contact Author)

Abelman, Frayne & Schwab ( email )

666 Third Avenue
New York, NY 10017
United States

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