Abstract
The federal government issues patents to encourage inventors to produce new and useful works and advance the state of the art.[1] The patent process is simple: in exchange for the right to exclude all others from making and using an invention for an established period, the inventor provides the government — and ultimately the public — with a full disclosure of how to make and use the invention.[2] Despite this full disclosure, the terms used in patent claims are subject to judicial interpretation during litigation.[3] Both the Supreme Court of the United States (“Supreme Court”) and the United States Court of Appeals for the Federal Circuit (“Federal Circuit”)—the two courts with appellate jurisdiction in patent cases[4]—have clearly held patent claims are matters of law[5] and provided procedures for interpreting them.[6] These supervising courts have not, however, provided guidance regarding the timing of claim construction, forcing lower courts to implement a variety of procedures,[7] thus creating the kind of uncertainty the Federal Rules of Civil Procedure (“FRCP”) seek to avoid.[8] This Article analyzes the claim construction procedures of the trial courts with the most active patent dockets and proposes a rule ensuring timely and efficient claim construction decisions. Part III of this article examines the local patent procedures developed by the trial courts with the most active patent dockets. Part IV analyzes those courts’ claim construction procedures to understand their effects on claim construction resolution. Finally, Part V proposes a uniform rule considering factors such as: (1) when claim construction occurs; (2) the number of claims in dispute, and; (3) the amount of time and space available to brief.
[1] See U.S. Const. art. I, § 8, cl. 8.
[2] 5 Donald S. Chisum, Chisum on Patents § 16.02 at 3 (2020) (quoting Van Kannell Revolving Door Co. v. Revolving Door & Fixture Co., 293 F. 261, 262 (1920)) (“[A] patent confers an exclusive right . . . [to] prevent any one from making, selling or using . . . the invention, but the monopoly goes no further than that.”) (emphasis added); see 37 C.F.R. § 1.75(d)(1) (2025).
[3] See J. Jonas Anderson & Peter S. Menell, Informal Deference: A Historical, Empirical, and Normative Analysis of Patent Claim Construction, 108 Nw. Univ. L.R. 1, 3-4 (2014) (“When patentees seek to enforce their rights in court, the interpretation of patent claim boundaries guides both infringement and validity analysis. . . . Thus . . . the task of claim construction falls to generalist federal district court judges, few of whom have technical training or experience with patent law.”).
[4] 28 U.S.C. § 1295(a)(1) (“The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction— of an appeal . . . relating to patents”); 2 Roger M. Milgrim & Eric E. Bensen, Milgrim on Trade Secrets § 9.02, pt 1, at 1, 3 (2019) (recognizing that the Supreme Court can review Federal Circuit decisions).
[5] Markman v. Westview Instruments, 517 U.S. 370, 372 (1996) (9-0 decision) (holding that claims regarding construction of a patent are a matter of law for the court’s interpretation).
[6] See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (finding that the terms of the patent’s specification are the best place to look when interpreting claims but acknowledging that extrinsic evidence may be needed).
[7] Megan M. La Belle, The Local Rules of Patent Procedure, 47 Ariz. St. L.J. 63, 93, 95-98 (2015) (analyzing the various ways local courts have attempted to handle patent procedure due to the lack of guidance).
[8] See Fed. R. Civ. P. 1 (describing the purpose of the Rules of Civil Procedure as a means of “secur[ing] the just, speedy, and inexpensive determination of every action and proceeding.”).
Recommended Citation
Timothy A. Richard,
The Timing of Claim Construction: An Analysis of Claim Construction Procedure and a Proposed Rule to Ensure Cost Effective and Timely Relief in Patent Infringement Cases,
33
Cath. U. J. L. & Tech
85
(2025).
Available at:
https://scholarship.law.edu/jlt/vol33/iss2/4
