The Ripple Effect of Seventh Amendment Decisions on the Development of Substantive Patent Law

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Outline  Introduction  I.   Seventh Amendment Decisions and the Law of Claim      Construction       A. The Supreme Court's Seventh Amendment         Decision in Markman      B. The Federal Circuit's Perpetuation of Claim         Construction as Purely an Issue of Law      C. Confusion in the Substantive Law of Claim         Construction Resulting from the Federal         Circuit's Flawed Approach to Seventh         Amendment Issues          1. The Use of Dictionaries         2. The Use of Expert Testimony and Expert            Evidence         3. The Perspective of One of Ordinary Skill in            the Art  II.  Seventh Amendment Decisions and the Doctrine of      Equivalents       A. The Federal Circuit's Infringement Approach to         the Doctrine of Equivalents as Purely an Issue of         Fact      B. The Supreme Court's Failure to Resolve Seventh         Amendment Issues Regarding the Doctrine of         Equivalents in Warner-Jenkinson      C. Confusion and Tension in the Substantive Law         of the Doctrine of Equivalents Resulting from         Seventh Amendment Decisions          1. Identity Crisis         2. Claim Scope and Infringement         3. Claim Scope Under the Doctrine of            Equivalents Versus Claim Construction  III. Prosecution History Estoppel       A. The Festo Decisions of the Federal Circuit and         the Supreme Court      B. The Federal Circuit's Push to Change the Rules         for Prosecution History Estoppel to Minimize         the Availability of the Doctrine of Equivalents      C. Confusion and Complexity in the Substantive         Law of Prosecution History Estoppel as a Ripple         Effect of Seventh Amendment Decisions  Conclusion 

INTRODUCTION

Most people would agree that the best way to treat a sick patient is to diagnose the underlying cause of the illness and treat the root cause rather than the symptoms. This approach to treating patients is generally applicable to solving problems. It is usually more effective to identify and address the root causes of a problem than to deal individually with all of the ramifications of the problem. Of course, the key to success under this approach is the accuracy of the diagnosis.

In patent law, there are a number of problem areas that have raised serious concern in recent years. Those involved in science, industry and business have sounded an alarm over the failures of the patent system to provide a realistic incentive for innovation. (1) There is a growing concern that the balance between providing an incentive for innovation through patent protection, on the one hand, and the need to give the public fair notice of patent coverage in order to allow individuals and businesses to make reliable decisions, on the other hand, is out of kilter. (2) Since 2005 there have been repeated attempts in Congress to pass patent reform legislation without success. (3) Prominent critics warn that the patent system is broken. (4)

In particular, the law related to the scope of patent coverage, including claim construction, the doctrine of equivalents, and prosecution history estoppel, is considered to be in dire straits. Patent claims generally define patent rights (5) and the law regarding the proper interpretation of patent claims has been frequently criticized as being, at best, confusing and, at worst, contradictory. (6) The reversal rates for trial court claim construction decisions are high, (7) and this is considered by many to reflect a lack of clarity in the law of claim construction. (8) Moreover, the doctrine of equivalents, a legal theory under which the scope of patent coverage may encompass more than the literal breadth of patent claims as far as the right to exclude is concerned, (9) has been attacked as lacking a cohesive foundation. (10) The very existence of the doctrine of equivalents has been challenged before the united States Supreme Court (11) and despite being upheld (12) is still questioned by some critics who would like to abolish it in its current form (13) or limit its reach. (14) Prosecution history estoppel, a doctrine that limits the application of the doctrine of equivalents, (15) has been in a state of flux, (16) creating uncertainty in its application. (17)

In addressing some of these problem areas in patent law, commentators have raised a variety of global criticisms in attempts to identify the root causes of some of these problems. There are those who believe that the patent system is fatally flawed in that it generally does not give appropriate economic incentives to achieve the objectives of the constitutional mandate to "promote the Progress of ... useful Arts." (18) Some critics believe that patent law needs to be more subject matter specific regarding different areas of technology in order to function effectively. (19) At least one critic believes that a number of problem areas in patent law doctrine have arisen because of flawed conventional wisdom that patents are grounded in an exclusionary theory of property rights. (20) Still others believe that more weight needs to be put on certainty and the public notice aspects of patent law in order to remedy many of the problem areas. (21)

This article presents the novel thesis that at least one important root cause of a number of problems in patent law today lies in the flawed analyses in a small number of relatively recent Seventh Amendment (22) patent cases. In determining whether a judge or jury should decide particular issues in these cases, the Federal Circuit (23) has placed too much emphasis on reaching outcomes perceived to be beneficial from a policy perspective and too little emphasis on performing analyses that conform to Supreme Court Seventh Amendment precedent. This article explores the irony that in the course of reaching Seventh Amendment outcomes perceived to foster certainty and uniformity in patent law, the Federal Circuit has engaged in expedient and unprincipled analyses that include statements and intermediate conclusions that have themselves spawned multiple and widespread problems. Compounding these problems, the Supreme Court has shown excessive deference to the Federal Circuit in the area of Seventh Amendment issues, rarely reviewing such decisions (24) despite showing an increased willingness in recent years to review Federal Circuit decisions on many other issues. (25) As a result, the faulty reasoning in some of the Seventh Amendment decisions of the Federal Circuit has spread like a virus contaminating substantive theories of patent law, unchecked by Supreme Court review.

This article will examine in detail two key decisions of the Federal Circuit on Seventh Amendment issues that are flawed in their analyses and inconsistent with Supreme Court precedent. In order to establish this latter point, the article will begin with an in-depth review of the Seventh Amendment analysis in a landmark Supreme Court case that addresses a Seventh Amendment issue related to patent claim construction. This article will also address the manner in which the two flawed decisions of the Federal Circuit have contributed to the crises in three areas of substantive patent law: (26) claim construction, the doctrine of equivalents and prosecution history estoppel. In each of these areas of law relating to claim scope, the ripple effect of the flawed Seventh Amendment analyses has had a detrimental impact on the development of substantive law.

The thesis of this article is addressed in three parts. Part I of this article begins with an examination of the Seventh Amendment analysis of the Supreme Court in Markman v. Westview Instruments, Inc., (27) in which the Court held that a judge, rather than a jury, should decide issues of patent claim construction. Part I continues with a detailed review of the manner in which the Federal Circuit's underlying decision differed in its analysis from the Supreme Court decision. Part I addresses the Federal Circuit's persistence in straying from the Supreme Court's approach to Seventh Amendment issues, and its persistence in applying a law versus fact analysis, consistently stating that claim construction is purely an issue of law. Part I concludes with a review of three areas of substantive law related to claim construction that have suffered as a result: the proper use of dictionaries in claim construction, the use of expert testimony and evidence, and the role of one of ordinary skill in the art.

Part II of this article addresses the decision of the Federal Circuit in Hilton Davis Chem. Co. v. Warner-Jenkinson Co., (28) in which the court held that juries should decide issues of infringement under the doctrine of equivalents, again following a flawed analysis rooted in the law versus fact distinction. Part II continues with a discussion of the Supreme Court's failure to review the Seventh Amendment issue at stake in that Federal Circuit decision, and the undue deference displayed by the Supreme Court towards the Federal Circuit. Part II concludes with a review of three problem areas in the substantive law related to the doctrine of equivalents that have been created or exacerbated as a result: the uncertain identity of the nature and jurisprudential basis of the doctrine of equivalents, the extent to which the doctrine of equivalents involves issues of both claim scope and infringement, and the tension between claim scope under the doctrine of equivalents and claim construction.

Part III of this article addresses the decisions of the Federal Circuit and the Supreme Court in the Festo litigation, (29) which include a number of important decisions that rapidly and repeatedly altered the substantive law of prosecution history estoppel. Part III continues with a discussion of the pressure faced by the Federal Circuit to alleviate some of the tension that had been created by its Seventh Amendment decisions in Markman and Hilton Davis. Part III discusses the Federal Circuit's push to "remedy" the situation by attempting to change the long standing rules for the application of the doctrine of prosecution history estoppel in order to minimize the availability of the doctrine of equivalents. Part III concludes with a review of the enormous complexity that has been introduced into the law of prosecution history estoppel as a result.

I. Seventh Amendment Decisions and the Law of Claim Construction

A. The Supreme Court's Seventh Amendment Decision in Markman

The rights associated with any given patent are determined based on the claims of the patent. (30) The claims of a patent are often said to set forth the "metes and bounds" of these rights. (31) Therefore, the issues surrounding the construction of patent claims are of utmost importance. Judge Rich summed it up succinctly: "... the name of the game is the claim." (32)

Moreover, it is well established in patent law that claims are to be interpreted based upon the understanding conveyed to one of ordinary skill in the relevant art at the time of the invention by the words and phrases used in the claims. (33) Furthermore, it is well settled that the words in the claims should be interpreted through the eyes of one of skill in the art when read in light of the patent specification, all of the claims, and the prosecution history. (34) In theory, therefore, the knowledge of one of ordinary skill in the pertinent art should be central to claim interpretation and claim scope. The claims of a patent, as properly construed, should ideally serve as notice to those of ordinary skill in the pertinent art as to the scope of the patent. (35)

In Markman v. Westview Instruments, Inc., (36) the Supreme Court addressed the issue of whether a jury should be involved in the determination of the meaning of a patent claim. The issue in the case focused on resolving conflicting testimony regarding a term of art in the claim. (37) The Supreme Court clearly identified at the outset of its unanimous opinion that the issue at stake in the case involved a determination of Seventh Amendment rights.

   The question here is whether the interpretation of a so-called    patent claim, the portion of the patent document that defines the    scope of the patentee's rights, is a matter of law reserved    entirely for the court, or subject to a Seventh Amendment guarantee    that a jury will determine the meaning of any disputed term of art    about which expert testimony is offered. (38) 

The Supreme Court immediately stated its ultimate holding on the issue: "[w]e hold that the construction of a patent, including terms of art within its claim, is exclusively within the province of the court." (39) The Court then proceeded with an in-depth analysis to support the holding under the Seventh Amendment.

In addressing the issue that it faced, the Supreme Court turned to the traditional historical test" established in its Seventh Amendment precedent. (40)

   [W]e ask, first, whether we are dealing with a cause of action that    either was tried at law at the time of the founding [when the    Seventh Amendment was adopted] or is at least analogous to one that    was.... If the action in question belongs in the law category, we    then ask whether the particular trial decision must fall to the    jury in order to preserve the substance of this common-law right as    it existed in 1791. (41) 

Under the first part of the test, the Court looked to eighteenth century actions that were tried at law, as opposed to equity or admiralty, (42) in the courts in England. The Court quickly concluded that "there is no dispute that infringement cases today must be tried to a jury, as their predecessors were more than two centuries ago." (43) The application of the second part of the historical test, on the other hand, was far more difficult for the Court.

In grappling with the second part of the historical test, the question of "whether a particular issue occurring within a jury trial (here the construction of a patent claim) is itself necessarily a jury issue," the Court found that the historical evidence regarding the eighteenth century English practice "provides no clear answer." (44) Lacking the benefit of a "fool-proof test," (45) the Supreme Court had to determine whether a jury must construe patent claims, and in particular, disputed terms of art within the patent claims, in order "to preserve the 'substance of the common-law right of trial by jury.'" (46) Noting that the standard is "a pretty blunt instrument for drawing distinction," the Court pointed out that it had "tried to sharpen it, to be sure, by reference to the distinction between substance and procedure," and had "also spoken of the line as one between issues of fact and law." (47) However, it is extremely significant that the Court in Markman did not choose the approach of trying to draw a line between fact and law to determine whether any part of patent claim construction must fall to the jury under the Seventh Amendment. Rather, labeling claim construction a "mongrel practice," in immediate juxtaposition to the fact versus law reference, the Court chose a nested historical approach:

   But the sounder course, when available, is to classify a mongrel    practice (like construing a term of art following receipt of    evidence) by using the historical method, much as we do in    characterizing the suits and actions within which they arise. Where    there is no exact antecedent, the best hope lies in comparing the    modern practice to earlier ones whose allocation to court or jury    we do know. (48) 

The Court, however, decided that this approach also failed to resolve the issue. The Court found no evidence of patent claims prior to 1790 in either English patent law or the practices in American states, and therefore "no direct antecedent of modern claim construction in the historical sources." (49) The Court found some early cases that involved the construction of patent specifications and determined that the issue of construing a patent specification was the closest analogy to patent claim construction at the time relevant to the Seventh Amendment analysis. (50) However, the Court concluded that none of the cases established that construction of disputed terms in patent specifications was an issue for the jury. (51)

Unable to resolve the issue of whether a jury must construe terms of art in a patent claim based upon the evidence of common law practice at the time the Seventh Amendment was adopted, the Court turned for guidance to existing precedent, and considered the "relative interpretative skills of judges and juries," and statutory policies. (52) Reviewing both case precedent and treatises, the Court concluded that these authorities did not indicate that juries had been involved in construing terms of art in patents, but instead supported delegating the task of claim construction to the court. (53)

The Court considered whether "functional considerations" weighed in favor of having a judge, rather than a jury, define terms of art within the patent claims, stating:

   [W]hen an issue "falls somewhere between a pristine legal standard    and a simple historical fact, the fact/law distinction at times has    turned on a determination that, as a matter of the sound    administration of justice, one judicial actor is better positioned    than another to decide the issue in question." (54) 

The Court concluded that judges are likely to be better at construing patent claims than jurors, on the basis that judges frequently construe written instruments, have special training and are therefore more likely to reach "a proper interpretation." (55) The Court dismissed the argument that the jury should be involved in claim construction to evaluate witness credibility when testimony is offered as to the meaning of a term of art "peculiar to a trade or profession," concluding that these determinations would be "subsumed" within the judge's interpretation of the entire document. (56) The Court acknowledged that cases could arise in which a credibility judgment concerning conflicting expert testimony would be the determining factor in construing a term of art but expressed doubt that many patent cases would turn on such credibility judgments. (57) The Court concluded that "despite its evidentiary underpinnings," the construction of terms of art within a claim should be left to the judge who has the overall task of construing the patent. (58)

In the final portion of its decision, the Court addressed the importance of providing "uniformity" in the treatment of patents, a policy issue that the Court stated provides an "independent reason to allocate all issues of construction to the court." (59) Linking the policy of uniformity to certainty, the Court stated that the limits of patent protection need to be known in order to protect patentees, to prevent others from being discouraged to invent due to uncertainty regarding infringement, and to ensure that the public will ultimately get the proper benefit of patents. (60) The Supreme Court also referenced the desire of Congress to support uniformity in patent law, and thereby encourage innovation, by creating the Federal Circuit. (61) Applying these policy goals, the Court stated that uniformity would be "ill served by submitting issues of document construction to juries," even though the Court acknowledged that issue preclusion would apply to prevent evidentiary questions from being retried in every new patent case. (62) In the penultimate paragraph, the Court stated that stare decisis would provide a better route to attempt to foster uniformity in claim construction, reasoning that "treating interpretive issues as purely legal will promote (though it will not guarantee) intrajurisdictional certainty through the application of stare decisis on those questions not yet subject to inter-jurisdictional uniformity under the authority of the single appeals court." (63)

In its Markman decision, the Supreme Court repeatedly acknowledged the factual underpinnings of claim construction in the course of its analysis leading to the holding that there is no Seventh Amendment right to have a jury evaluate evidence related to "terms of art" in patent claims. The Court unequivocally labeled claim construction a "mongrel practice," in immediate juxtaposition to a fact versus law reference. (64) The Court acknowledged that the construction of terms of art within a claim is an issue that "falls somewhere between a pristine legal standard and a simple historical fact," (65) and has "evidentiary underpinnings." (66) While the language regarding uniformity and stare decisis has created internal tension within the Court's opinion, it is part of a policy consideration cited as an "independent reason" to allocate claim construction issues to a judge rather than a jury. (67) It should not be viewed as negating any of the statements made by the Court in its Seventh Amendment analysis. 68

It is important to note that while the Court considered factors beyond those falling within the traditional historical test, the Court expressly stated that its Seventh Amendment decision was not based on the application of a fact versus law test:

   Because we conclude that our precedent supports classifying the    question as one for the court, we need not decide either the extent    to which the Seventh Amendment can be said to have crystallized a    law/fact distinction, or whether post-1791 precedent classifying an    issue as one of fact would trigger the protections of the Seventh    Amendment if (unlike this case) there were no more specific reason    for decision. (69) 

This position has not been accepted by the Federal Circuit.

B. The Federal Circuit's Perpetuation of Claim Construction as Purely an Issue of Law

While the Supreme Court in its Markman decision clearly and unanimously framed the issue of whether there should be jury involvement in the construction of patent claims as one that required the application of the Seventh Amendment and triggered the historical test rather than a fact versus law approach, the majority of the Federal Circuit had not taken that path in its earlier decision below. Rather, in its en banc decision in Markman, (70) which was the subject of the Supreme Court's review, the majority of the Federal Circuit had expressly embraced a fact versus law approach in concluding that "the interpretation and construction of the patent claims ... is a matter of law exclusively for the court."71 The majority of the Federal Circuit framed the issue below as follows: "we must distinguish law from fact." (72) By approaching the issue in this manner, the majority of the Federal Circuit engaged in what amounted to an end-run-around the Seventh Amendment, defining away any factual underpinnings that would trigger a rigorous Seventh Amendment analysis.

The obstacle that the majority of the Federal Circuit faced in its analysis was its own precedent. (73) The majority acknowledged that "[t]he opinions of this court have contained some inconsistent statements as to whether and to what extent claim construction is a legal or factual issue, or a mixed issue." (74) Moreover, the majority acknowledged that it had previously stated or held in a significant number of its earlier opinions that "there may be jury triable fact issues in claim construction." (75) Nevertheless, the majority decided that the earliest of these opinions was lacking in "authoritative support," (76) and that the cases that followed in this line provided "no firmer basis for the view." (77) These positions were vigorously refuted in one concurring opinion (78) and a dissenting opinion. (79) Further, the majority proclaimed that the first Federal Circuit opinion that dealt with an issue of claim construction explicitly stated that claim construction was a matter of law, (80) and that another line of its precedent continued to adhere to the view that "claim construction is strictly a question of law for the court." (81)

These positions of the majority were also challenged. In a concurring opinion, one judge questioned the existence of such a line of cases, rejecting the majority's interpretation of the case law. (82) In a dissenting opinion, another judge discussed her view that statements that claim construction present an issue of law are not in any way incompatible with the existence of underlying questions of fact. (83)

After criticizing the significant number of Federal Circuit cases that had stated or held that there might be "jury triable fact issues" involved in claim construction, the majority turned to Supreme Court precedent. The majority stated that "the Supreme Court has repeatedly held that the construction of a patent claim is a matter of law exclusively for the court," citing, without quotation or analysis, Supreme Court cases from 1848 through 1904. (84) This interpretation of precedent was again vigorously rejected by two Federal Circuit judges in one concurring opinion (85) and a dissenting opinion. (86)

As support for its reading of precedent, the majority stated that courts should construe patent claims as a matter of law and should not delegate the task to a jury as a matter of fact because "[i]t has long been and continues to be a fundamental principle of American law that 'the construction of a written evidence is exclusively with the court.'" (87)

The majority stated that since "[t]he patent is a fully integrated written instrument," it is "uniquely suited for having its meaning and scope determined entirely by a court as a matter of law," under this general rule. (88)

According to the majority, policy considerations also support this rule. The majority pronounced that there is "much wisdom" in having the court construe patent claims since the construction defines "the federal legal rights created by the patent document." (89) Moreover, the majority discussed both issues of fair notice to competitors and the confidence needed by all parties that a judge "trained in the law" would apply "established rules of construction" to arrive at "the true and consistent scope of the patent owner's rights." (90)

Based on its analysis, the Federal Circuit majority announced its holding:

   We therefore settle inconsistencies in our precedent and hold that    in a case tried to a jury, the court has the power and obligation    to construe as a matter of law the meaning of language used in the    patent claim.... Because claim construction is a matter of law, the    construction given the claims is reviewed de novo on appeal. (91) 

It is striking that in the analysis leading up to this holding, the majority opinion does not apply, discuss, or even mention the Seventh Amendment. (92) There is no application of the historical approach in the analysis. The majority opinion only briefly discusses the Seventh Amendment after reaching its holding. (93) The majority does so as rebuttal (94) to the Seventh Amendment positions asserted in the dissenting (95) and one of the concurring opinions (96) in the case. In its rebuttal, the majority acknowledged that under the Seventh Amendment, the right to a jury trial exists if an action "could be tried to a jury in 1791," or if it is a statutory cause of action "analogous to common law actions." (97) However, the majority stated that its holding "do[es] not deprive parties of their right to a jury trial in patent infringement cases," but "merely holds that part of the infringement inquiry, construing and determining the scope of the claims in a patent, is strictly a legal question for the court." (98)

The Federal Circuit majority opinion in Markman, as previously stated, amounted to an end-run-around the Seventh Amendment. The majority of the Federal Circuit achieved this goal by denying that there were any issues of fact involved in claim construction. The majority took this position despite a significant number of contrary statements and holdings in its own prior decisions. It did so in order to avoid framing the issue of whether a jury should be involved in patent claim construction as one governed by an in-depth Seventh Amendment analysis. More importantly, it did so as a matter of expediency in order to reach the outcome it perceived to foster certainty and uniformity.

It is important to emphasize that the Federal Circuit's Markman decision represented a major change in patent law up to that point in time. Not only did the Federal Circuit contradict, and in some instances overrule, cases in a "significant line" (99) of its own precedent, but it also took a different approach to analyzing issues of jury involvement in patent cases than it had in the past. The Federal Circuit had not always dodged Seventh Amendment issues. The analysis employed by the majority in the en banc Markman decision of the Federal Circuit differed dramatically from an earlier Federal Circuit panel decision in In re Lockwood. (100)

In the Lockwood case, on a motion for rehearing, a panel of the Federal Circuit faced the issue of whether the defendant in a patent infringement suit had a right to a jury trial on its counterclaim for a declaratory judgment that the patent in suit was invalid. (101) The panel had issued a writ of mandamus directing the district court to reinstate the jury demand on the counterclaim which the judge below had stricken. (102) On rehearing, the panel addressed the Seventh Amendment issue, employing the traditional historical analysis set forth in Supreme Court precedent in order to determine whether the statutory cause of action for a declaratory judgment, as it relates to patent invalidity, should be considered analogous to causes of action heard at law, in equity, or in admiralty in England in 1791. (103) In the course of its analysis, the panel considered whether the Seventh Amendment guarantees were inapplicable under a "public rights" analysis: "[t]he Court has cautioned that the Seventh Amendment does not automatically entitle a party to a jury trial if Congress can and has assigned adjudication of the legal claim concerning such public right exclusively to an administrative agency." (104) The panel quickly dismissed this possibility, stating that "assuming arguendo that patents confer purely public rights, litigation concerning those patent rights in Article III courts comes within the protection provided by the Seventh Amendment." (105) Applying the …