Abstract
Jurisprudence in the area of defining patent scope is opaque and inconsistent. District courts and litigants cannot be certain of the bounds of the exclusive territory covered by a patent—defined by the patent’s claims—until the Court of Appeals for the Federal Circuit—the single patent appellate court in the nation—says what it is in an appeal after final judgement. The appellate court appears to simply redo the analysis of the district courts, yet often inexplicably reaches a different conclusion based on the patent’s text. Though much has been written about the Federal Circuit’s unpredictable, textualist approach to claim construction, no scholarship has focused on the fact that the problem may stem from the court’s inconsistent treatment of ex post information in the analysis—information that was uncovered after patent issuance.
Because the Federal Circuit generally presents claim scope as immutably set ex ante at patent grant, it only erratically acknowledges the relevance of ex post information in the claim construction inquiry. This Article proposes a more functional, holistic approach to claim construction that forces the courts to expressly acknowledge the relevance of ex post information in every case. A court reassessing the scope of a patent would ask: If a decision-maker had known everything ex ante that has since been discovered ex post in the course of the litigation, would they have still granted the patent as written?
The proposal is based on the underappreciated reality that claims are meant to be temporally flexible in order to incentivize innovation. And although the Federal Circuit does not explicitly admit to this, its opinions indicate that claim construction is not a stand-alone, objective analysis based only on facts and arguments made before patent grant. Therefore, the proposal simply attempts to make express what is already being done implicitly on the appellate level—it encourages courts to look at the determination of patent scope during claim construction in a more integrated way to consider how the scope relates to the other issues in the case. Using this approach, courts automatically help align their reasoning in claim construction with patent law’s purpose of promoting innovation. The transparency and principled reasoning resulting from the Federal Circuit implementing such a proposal would help develop a more orderly common-law doctrine of claim construction, providing much-needed guidance to district courts and patent litigants.