Academic journal article Michigan Law Review

The "Broadest Reasonable Interpretation" and Applying Issue Preclusion to Administrative Patent Claim Construction

Academic journal article Michigan Law Review

The "Broadest Reasonable Interpretation" and Applying Issue Preclusion to Administrative Patent Claim Construction

Article excerpt

INTRODUCTION

The archetypical invention is a specific, tangible thing: an antibacterial chemical compound, a wine opener, a self-driving robot, a steam engine.1 But the patents that protect inventions are intangible and abstract2- reducing a physical thing to words creates uncertainty. The law endeavors to make the scope of patents reasonably certain, but this is difficult because language is unavoidably imprecise. Even with an established evidentiary hierarchy, a settled interpretive procedure, and a body of case law governing interpretive principles, there is room to disagree. At nearly every patentrelated proceeding, an adjudicating body must determine what exactly the patent in question means.

Yet patent infringement is a strict-liability offense: it is more or less irrelevant whether an infringer knows ex ante the precise scope of a patent's protectable subject matter.3 This scope is fuzzy, and it can vary across time, space, legal doctrine, and branch of the government. Ultimately, liability can turn on what seem like minutiae.

To add to the confusion, a patent might be held invalid in one setting and valid in another-for instance, the Patent Trial and Appeal Board (PTAB) might find a patent invalid in one action while the International Trade Commission (ITC), in a second action, simultaneously finds it not only valid but infringed.4 Paul Gugliuzza calls these "Schrödinger['s] patents,"5 evoking the famous quantum-mechanics thought experiment involving a simultaneously alive-and-dead cat.6 But there are other troubling opportunities for inconsistency beyond this extreme. For instance, a patent owner might ask a court to construe the scope of a patent narrowly when the validity of the patent is in question, so as to discourage the court from finding impermissible (unpatentable) overlap with inventions already in the public domain.7 The same patent owner might then argue for a broad construction when suing for infringement, hoping to expand the scope of protection.8 This might make strategic sense for a patent owner,9 but it is worrisome when considering that a patent is meant to involve a fair trade of limited exclusivity (for the patentee) for disclosure of something useful (for society).10 That bargain is frustrated when the actual scope of a patent varies by the day and by the courtroom.

But the law has a general solution for such inconsistencies: issue preclusion (also known as collateral estoppel). Under this doctrine, a litigant generally has one-and only one-opportunity to try a given issue in court, and that issue is treated as already decided if raised later.11 Issue preclusion is especially appropriate in the context of property right delineation, including patent litigation.12 For instance, a patent owner is estopped from asserting a patent previously held invalid, even where the parties in the two actions are not mutual.13 Similarly, preclusion can apply to subsidiary issues, such as determinations of patent meaning.14

Patents, however, play a key role in contentious administrative determinations, and this presents a complication. Some judges, while comfortable with issue preclusion between courts, have been hesitant to recognize the principle in an administrative context, often articulating separation-ofpowers concerns.15 This is perhaps intuitive when an administrative body is acting outside its core institutional competence.16 But it is less so when an administrative body is charged with subject-matter expertise. The Supreme Court recently emphasized in B & B Hardware, Inc. v. Hargis Industries, Inc.17 that administrative determinations can, when appropriate, have preclusive effects in later judicial proceedings if a two-step test is met.18 The impact of B &B Hardware on patent law has not been resolved, but in general, courts have been reluctant to apply it.19 Yet B & B Hardware presents an opportunity to apply issue preclusion law to the administrative patent context. …

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