Patent Claim Construction: A Survey of Federal District Court Judges
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Message: Patent Claim Construction: A Survey of Federal District Court Judges
Extrinsic evidence considered
In addition to the patent and prosecution history, courts can consider a wide range
of information in the context of a Markman hearing. Most commonly, judges reported
considering expert testimony or a report from a science or technology expert
(reported by 20 of 31 judges, or 65%).44 Judges also routinely referred to dictionaries
(reported by 16 of 31 judges, or 52%). Many judges reported considering
several different types of extrinsic evidence. Table 7 presents a complete list of
the types of extrinsic evidence considered.
For the relatively small number of judges who reported which type of extrinsic
evidence they found most helpful, testimony or a report from a science or
technology expert was the most common selection (9 of 18, or 50%). Twentyeight
percent of the responding judges (5 of 18) selected dictionaries as the most
helpful piece of extrinsic evidence, and one judge (6%) found testimony or a report
about prior art most helpful. Three judges (17%) selected “Other” extrinsic
evidence—two specified that prior related rulings (one involving a Federal Circuit
case dealing with similar technology) were most helpful, and the third indicated
that his reliance on a special master’s recommendation was most useful.
More Experienced Judges
Less Experienced Judges
Total
Expert testimony or
report from a science
or technology expert
11 (61%) 9 (69%) 20 (65%)
Dictionaries 8 (44%) 8 (62%) 16 (52%)
Testimony or report
about prior art
6 (33%) 6 (46%) 12 (39%)
Declarations from
those witnesses who
were deposed
4 (22%) 5 (38%) 9 (29%)
Testimony or report
about the accused
device
4 (22%) 4 (31%) 8 (26%)
Expert testimony or
report from the
inventor
3 (17%) 3 (23%) 6 (19%)
Non-inventor factual
testimony or report
3 (17%) 2 (15%) 5 (16%)
Other (law clerk did
online search for related
terms; order
from another court
that had construed the
claims; recommendation
by special master)
3 (17%) 2 (15%) 5 (16%)
Expert testimony or
report from a patent
law expert
0 (0%) 1 (8%) 1 (3%)
Note: Column percentages do not add to 100% because of rounding and because some judges selected multiple
response options. The four columns present, respectively, the response options provided in the survey
question; the number and percentage of more experienced judges responding to the question who selected the
response; the number and percentage of less experienced judges responding to the question who selected the
response; and the total number and percentage of all responding judges who selected the response.
The claim construction decision may be as brief as a listing of the court’s construction
of the disputed term or terms, but at least one of the Markman commentators
recommends a comprehensive, well-reasoned written opinion to guide the
preparation of jury instructions and to provide a detailed record for potential review
by the Federal Circuit.45
All but one judge (33 of 34, or 97%) prepared written decisions to memorialize
their constructions of the patent claims. Of those who prepared such a decision,
almost all (31 of 33, or 94%) included in the decision the reasons for the selected
claim construction.
Few judges had to reconsider their claim construction after the initial determination
(4 of 32, or 13%), and of the four who did (three from the more experienced
judge group; one from the less experienced judge group), three did so because
of issues regarding the construction of terms that arose from the initial
claim construction. A fifth judge pointed out that although he adhered to his
original construction, he continued to reconsider the construction throughout subsequent
proceedings.
Although most judges (31 of 34, or 91%) indicated that they would not, in
hindsight, change anything about the way they conducted the claim construction
process in the case in question, three (9%) said they would. These judges indicated
that they would, in hindsight, have used a scheduling order to control
Markman issues, performed the claim construction earlier—in the context of an
early summary judgment motion, and heard claim construction arguments before
(rather than concurrent with) summary judgment arguments.
of information in the context of a Markman hearing. Most commonly, judges reported
considering expert testimony or a report from a science or technology expert
(reported by 20 of 31 judges, or 65%).44 Judges also routinely referred to dictionaries
(reported by 16 of 31 judges, or 52%). Many judges reported considering
several different types of extrinsic evidence. Table 7 presents a complete list of
the types of extrinsic evidence considered.
For the relatively small number of judges who reported which type of extrinsic
evidence they found most helpful, testimony or a report from a science or
technology expert was the most common selection (9 of 18, or 50%). Twentyeight
percent of the responding judges (5 of 18) selected dictionaries as the most
helpful piece of extrinsic evidence, and one judge (6%) found testimony or a report
about prior art most helpful. Three judges (17%) selected “Other” extrinsic
evidence—two specified that prior related rulings (one involving a Federal Circuit
case dealing with similar technology) were most helpful, and the third indicated
that his reliance on a special master’s recommendation was most useful.
Table 7. Extrinsic Evidence Considered by Judges
Number (and Percentage) of Judges Selecting
Extrinsic Evidence
Considered
Number (and Percentage) of Judges Selecting
Extrinsic Evidence
Considered
More Experienced Judges
Less Experienced Judges
Total
Expert testimony or
report from a science
or technology expert
11 (61%) 9 (69%) 20 (65%)
Dictionaries 8 (44%) 8 (62%) 16 (52%)
Testimony or report
about prior art
6 (33%) 6 (46%) 12 (39%)
Declarations from
those witnesses who
were deposed
4 (22%) 5 (38%) 9 (29%)
Testimony or report
about the accused
device
4 (22%) 4 (31%) 8 (26%)
Expert testimony or
report from the
inventor
3 (17%) 3 (23%) 6 (19%)
Non-inventor factual
testimony or report
3 (17%) 2 (15%) 5 (16%)
Other (law clerk did
online search for related
terms; order
from another court
that had construed the
claims; recommendation
by special master)
3 (17%) 2 (15%) 5 (16%)
Expert testimony or
report from a patent
law expert
0 (0%) 1 (8%) 1 (3%)
Note: Column percentages do not add to 100% because of rounding and because some judges selected multiple
response options. The four columns present, respectively, the response options provided in the survey
question; the number and percentage of more experienced judges responding to the question who selected the
response; the number and percentage of less experienced judges responding to the question who selected the
response; and the total number and percentage of all responding judges who selected the response.
Claim construction decision
The claim construction decision may be as brief as a listing of the court’s construction
of the disputed term or terms, but at least one of the Markman commentators
recommends a comprehensive, well-reasoned written opinion to guide the
preparation of jury instructions and to provide a detailed record for potential review
by the Federal Circuit.45
All but one judge (33 of 34, or 97%) prepared written decisions to memorialize
their constructions of the patent claims. Of those who prepared such a decision,
almost all (31 of 33, or 94%) included in the decision the reasons for the selected
claim construction.
Few judges had to reconsider their claim construction after the initial determination
(4 of 32, or 13%), and of the four who did (three from the more experienced
judge group; one from the less experienced judge group), three did so because
of issues regarding the construction of terms that arose from the initial
claim construction. A fifth judge pointed out that although he adhered to his
original construction, he continued to reconsider the construction throughout subsequent
proceedings.
Although most judges (31 of 34, or 91%) indicated that they would not, in
hindsight, change anything about the way they conducted the claim construction
process in the case in question, three (9%) said they would. These judges indicated
that they would, in hindsight, have used a scheduling order to control
Markman issues, performed the claim construction earlier—in the context of an
early summary judgment motion, and heard claim construction arguments before
(rather than concurrent with) summary judgment arguments.
Case progress after claim construction
Following the claim construction decision, a similar number of cases were resolved
by summary judgment or injunctive relief (9 of 34, or 26%), resolved by
jury trial (8 of 34, or 24%),46 or settled without further decisions on the merits (8
of 34, or 24%). Cases were less likely to be settled following resolution of other
by summary judgment or injunctive relief (9 of 34, or 26%), resolved by
jury trial (8 of 34, or 24%),46 or settled without further decisions on the merits (8
of 34, or 24%). Cases were less likely to be settled following resolution of other
issues on the merits (6 of 34, or 18%) or resolved by bench trial (2 of 34, or 6%).
Three additional cases are currently unresolved or stayed. Two judges indicated
two resolutions each for their cases, and the likelihood of each type of case resolution
was similar for more experienced judges and less experienced judges.
Appeal
Three additional cases are currently unresolved or stayed. Two judges indicated
two resolutions each for their cases, and the likelihood of each type of case resolution
was similar for more experienced judges and less experienced judges.
Appeal
Seventeen judges reported that their cases were resolved by summary judgment or
jury trial, and most of these cases were appealed to the Federal Circuit (12 of 17,
or 71%). The percentage of appealed cases was only slightly higher for more experienced
judges (8 of 11, or 73%) than for less experienced judges (4 of 6, or
67%). One of the appeals in the former group was later withdrawn after settlement.
Of the eleven appeals that moved forward, each did so following a final judgment.
The judges reported that the claim construction was an issue on appeal in
most of these cases (8 of 11, or 73%). The claim construction was an issue on appeal
in all seven cases (100%) involving more experienced judges, but in only one
of the four cases (25%) involving less experienced judges.47
In about a third of the appealed cases (4 of 11, or 36%), the claim construction
was the primary issue on appeal. In an equal number of cases (4 of 11, or 36%),
the responding judge did not know the primary issue on appeal. In three cases
(27%), the claim construction was not the primary issue on appeal.48
The claim constructions had differing outcomes on appeal. Of those resolutions
that were reported, three cases with appealed claim constructions later settled
before an appellate court decision, two cases’ constructions were affirmed,
two were reversed in whole or in part, one construction was resolved as a result of
an appeal in a related case, one case is still pending, and one case’s resolution was
reported as unknown. Both cases in which the construction was reversed were
remanded.
jury trial, and most of these cases were appealed to the Federal Circuit (12 of 17,
or 71%). The percentage of appealed cases was only slightly higher for more experienced
judges (8 of 11, or 73%) than for less experienced judges (4 of 6, or
67%). One of the appeals in the former group was later withdrawn after settlement.
Of the eleven appeals that moved forward, each did so following a final judgment.
The judges reported that the claim construction was an issue on appeal in
most of these cases (8 of 11, or 73%). The claim construction was an issue on appeal
in all seven cases (100%) involving more experienced judges, but in only one
of the four cases (25%) involving less experienced judges.47
In about a third of the appealed cases (4 of 11, or 36%), the claim construction
was the primary issue on appeal. In an equal number of cases (4 of 11, or 36%),
the responding judge did not know the primary issue on appeal. In three cases
(27%), the claim construction was not the primary issue on appeal.48
The claim constructions had differing outcomes on appeal. Of those resolutions
that were reported, three cases with appealed claim constructions later settled
before an appellate court decision, two cases’ constructions were affirmed,
two were reversed in whole or in part, one construction was resolved as a result of
an appeal in a related case, one case is still pending, and one case’s resolution was
reported as unknown. Both cases in which the construction was reversed were
remanded.
Rebecca N. Eyre, Joe S. Cecil, and Eric Topor
Federal Judicial Center
February 2008
Federal Judicial Center
February 2008
7 Recommendations
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