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Lewis & Clark Law Review

Volume 9 / Number 1 / Spring 2005


Markman v. Westview Instruments: Lessons from a Decade of Experience

Leading patent law scholars from around the country gathered at Lewis & Clark Law School on October 8, 2004, to share their assessments of the first decade of the Markman era at a conference entitled “Markman v. Westview Instruments: Lessons from a Decade of Experience.” Volume 9, Number 1 of the Lewis & Clark Law Review presents the articles from the conference, the Tenth Annual Lewis & Clark Business Law Forum.


Lessons for Patent Policy from Empirical
Research on Patent Litigation

James Bessen & Michael J. Meurer

This Article reviews empirical patent litigation research to reveal patent policy lessons. First, the Article presents facts about patent litigation. Next, it analyzes the patent premium. Patent litigation research reveals little about the magnitude of the patent premium, but the research reveals the strategies firms use to capture the patent premium and the patent policy instruments that determine the patent premium. Next, the Article evaluates the patent prosecution process and notes that making efforts to refine a patent application can affect the value of the patent. The Article then identifies reforms for improving PTO performance. Finally, the Article discusses policy changes that patent litigation research suggests would improve procedural fairness and reduce patent litigation costs.

Quantum Patent Mechanics

Dan L. Burk & Mark A. Lemley

Determining the meaning of patent claims necessarily requires a judge to break the text of a claim into discrete “elements” or units of text corresponding to the elements or units that comprise the claimed invention, essentially organizing the language of the claims into “chunks” or “quanta” of text. Define an element narrowly—limit it to a single word, say—and you will tend to narrow the resulting patent. By contrast, defining an element broadly tends to broaden the patent.

For each discrete packet identified, the courts must determine the meaning of the constituent words. They can assign those words definitions that range from narrow, specific meanings to broad, general meanings. In determining the meaning of terms within a particular element, judges practicing patent claim interpretation are engaged in an exercise that to some degree resembles the famous “levels of abstraction test” articulated by Judge Learned Hand for analysis of infringement under copyright law’s “idea/expression” doctrine.

There are no hard and fast standards in the law by which to make the “right” decision as to either the size of the textual element or the level of abstraction at which it will be evaluated. Indeed, the indeterminacy is so acute that courts generally don’t even acknowledge that they are engaging in either inquiry. They define an element almost arbitrarily, and even when judges disagree as to the proper definition they offer no principled basis for doing so. The problem may be worse than a simple failure to acknowledge subconscious decisions that affect the scope of a patent, however. This indeterminacy may well be inherent in the process of mapping words to things, as modern literary theorists suggest. While courts purport to rely on the “ordinary” or “plain” meaning of the words of a patent claim, there may simply be no such thing.

If we can’t define the “metes and bounds” of the invention in any meaningful way, we might instead start with the patentee’s invention itself, construing patent claims narrowly and in light of the actual invention when the claim terms are ambiguous. Courts could then supplement this narrower claim construction with a doctrine of equivalents analysis, which would permit them to decide how broadly to apply the principle of the invention. But for this approach to work, courts must apply the doctrine of equivalents with an eye towards proper protection, rather than cabining it with formal rules.

Patent Claim Interpretation and Information Costs

Christopher A. Cotropia

The concept of invention is crucial to patent law. Inventions of patentable quality are what the patent system is trying to encourage. In order to provide this incentive to produce such inventions, the patent system must provide protection for the invention. The problem the patent system runs into is that inventions are difficult to define—the difficulty stemming in part from the intangible nature of inventions. As a result, patent law encounters an information cost problem. Everyone in the patent system needs information about the invention, but the invention’s intangibleness makes this information costly to produce, collect, and comprehend. Patent law responds by enforcing certain information producing rules. These information producing rules do not completely rectify the information cost problem in defining the edges of patent protection. The patent claim, while meant to inform everyone about the boundaries of the grant of exclusivity, must be interpreted to be of any use. This Article first addresses the information cost issues presented by the process of interpreting the patent claim. It then takes a specific look at the information costs generated when using two different information tools during claim interpretation—the specification and external definitional sources such as dictionaries. This Article concludes that full use of the specification early in the claim interpretation process minimizes information costs. It further concludes that any interpretation methodology should consider the information costs it imposes on both the patentee and any patent observer, keeping in mind the invention-specific information patent law already requires to be produced.

Markman Hearings, Summary Judgment, and Judicial Discretion

Edward Brunet

Conventional wisdom holds that a claim construction hearing should be held at or very near the close of discovery. This Article draws on analogous summary judgment procedures to challenge this conventional thesis. It advances the simple proposition that district judges need discretion to decide when to hold aMarkman hearing. Judicial discretion is consistent with the refusal to regulate the timing of summary judgment motion filings and is also supported by tenets of efficient judicial management of complex litigation. Rather than rigidly holdingMarkman hearings at a set time at the close of discovery, this Article recommends retaining the flexibility to hold the hearing earlier in the patent litigation.

Substantive versus Process-Based Formalism in Claim Construction

Timothy R. Holbrook

In recent years, the United States Court of Appeals for the Federal Circuit has embraced the use of bright-line, formalistic rules in the interest of increasing certainty in patent law. The Supreme Court has also expressed an interest in certainty in patent law, but its approach has varied from that of the Federal Circuit. Whereas the Federal Circuit has articulated bright-line substantive rules that are outcome determinative, the Supreme Court has articulated process-based formalistic rules, such as the use of rebuttable presumptions, which do not preordain a certain outcome and thus provide greater fairness. This Article first reviews the Supreme Court’s patent-related jurisprudence to explore the differences between the Court’s and the Federal Circuit’s views on certainty. Next, the Article evaluates the Federal Circuit’s claim construction jurisprudence and assesses which doctrines and methodologies, if any, are consistent with the Supreme Court’s view. Finally, the Article concludes that the Federal Circuit should embrace claim construction methodologies that are more akin to rebuttable presumptions than the estoppel-like approaches it presently uses. While such a change may sacrifice some certainty, it would better comport with Supreme Court precedent and afford greater fairness to patentees.

Claim Re-Construction:
The Doctrine of Equivalents in the Post-Markman Era

John R. Thomas

In the post-Markman era, the Federal Circuit has focused attention on the public notice function of patent claims in equivalents cases, and it has come to emphasize precision and accuracy in claim drafting. This Article argues that recent judicial emphasis on the public notice function of patent claims is an inappropriate innovation policy. The demand for highly refined patent claims increases patent acquisition expenditures that are unlikely to increase social welfare, cause patent rights to be distributed unevenly, and are inconsistent with the structural features of the patent system.

This Article presents two mechanisms to accommodate the doctrine of equivalents in the post-Markman era. One is the reinvigoration of the reissue proceeding. The other is allowing judicial amendment of patent claims during infringement litigation proceedings, much like the longstanding British practice. This shift would allow courts to pursue the policy goals of Markman for literal and equivalent infringement alike.

Enhancing Patent Disclosure for Faithful Claim Construction

Joseph Scott Miller 

Claim construction jurisprudence is in disarray. The United States Court of Appeals for the Federal Circuit reverses trial court claim construction decisions at a worryingly high rate. The proportion of Federal Circuit claim construction opinions that include separate concurrences or dissents continues to grow. And the muddled mix of issues the Federal Circuit framed for en banc review in the Phillips case suggests that the court cannot reach consensus on what the central questions are, much less on how to answer them. Perhaps the path to adequately predictable claim construction is continued tinkering with the analytical constructs internal to the Federal Circuit’s claim construction jurisprudence, but that is not likely. In this Article, the author takes a sharply different approach to the question, how can we make claim construction more predictable? Inspired by the maxim “garbage in, garbage out,” he looks to the patent system actor that has plenary power, within the broad outline set by the Patent Act, over the details of all patent disclosures—namely, the Patent Office. Specifically, he examines additional, low-cost disclosures that would assist claim construction and that the Patent Office can demand from all patent applicants. Carefully chosen new disclosures would make all patents far more helpful tools in their own construction, providing social benefits that far outweigh the added patent preparation costs. In any subsequent claim construction process, whether for licensing, design-around, or litigation purposes, parties would have the benefit of patents enriched with this new information. The patent document, enhanced in this way, would better fulfill its role as claim construction’s central resource.

Markman Eight Years Later: Is Claim Construction More Predictable?

Kimberly A. Moore

This Article revisits the growing criticism surrounding the lack of guidance and predictability in claim construction cases after the Markman decision. Specifically, the Article investigates the Federal Circuit’s reversal rate on these cases, as a high reversal rate evidences confusion among the lower courts. In Part II, the author reviews existing empirical studies on the Federal Circuit’s reversal rate in claim construction cases, arguing that many of these studies are misleading. Part III clarifies what data must be considered to adequately determine the Federal Circuit’s reversal rate of appealed claim construction cases. In Part IV, the author concludes that her new analysis of the reversal rate supports the growing criticism thatMarkman has created confusion, not guidance, in claim construction cases, and the confusion is getting worse.



The Googling of Online Privacy: Gmail, Search-Engine Histories
and the New Frontier of Protecting Private Information on the Web

Matthew A. Goldberg

When Congress passed the Stored Communications Act (“SCA”) in 1986, the Internet as it presently exists was barely imaginable. In the nearly twenty years since its passage, courts, scholars and privacy advocates have struggled mightily to apply the SCA to continuously evolving online technology. Two of the more problematic technologies, from the standpoint of applying the SCA, are Web-based e-mail and search engines. In 2004, now publicly-traded Internet giant Google underscored the importance of understanding the privacy implications of these two technologies when it launched its revolutionary Gmail Web-mail service, a technology that is capable of keeping an ongoing record of the contents of users’ e-mail. Google’s technologies give it the potential to maintain unprecedented electronic dossiers of personal information about users, which if not protected would be sought after by all manner of third-party marketers. This Comment explores several key privacy issues surrounding Google’s Web-mail and search services, including the extent to which the SCA protects users’ information from disclosure by Google to third-party marketers. Also discussed are nascent state law attempts to regulate these Web services and the role that the common law of contracts might play in this otherwise statutorily dominated realm.



A note about the Journal of Small & Emerging Business Law

Prior volumes of the Lewis & Clark Law Review were published under the nameJournal of Small & Emerging Business Law.


Review archived indices for past issues of the Journal of Small & Emerging Business Law.



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