Brief Fact Summary. FAS (Plaintiff) filed suit against Cybor (Defendant) for infringing its patent.Â On appeal, Defendant argued the district court went wrong in claim construction.
Synopsis of Rule of Law. Claim construction is a question of law only, subject to de novo review.
Issue. Is Claim construction a question of law only, subject to de novo review?
Held. (Archer, J.)Â Yes.Â Claim construction is a question of law only, subject to de novo review.Â There are two steps involved in an infringement analysis: (1) determining the scope and meaning of the stated patent claims; (2) comparing the properly interpreted claims to the item accused of infringing.Â In Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (Markman I), the U.S. Supreme Court unanimously affirmed this Court’s en banc holding, in which this Court held claim construction is a purely legal issue.Â The Supreme Court in Markman II declared claim construction is a “mongrel practice” falling between law and fact, but determined the better authority of claim construction to be a judge rather than a jury.Â The Supreme Court also examined the role of expert testimony in claiming construction, finding that a jury is a better examiner of witness credibility, although, credibility rarely plays a role in construction.Â Considering the patent as a whole, the expert witness helps the court determine the patent claim.Â The standard of review articulated in Markman I was not changed by Markman II, so claim construction, including related fact-based questions, is subject to de novo review.Â All other case law suggesting otherwise is hereby rejected.Â Affirmed.
Deferential review of mixed questions of law and fact is warranted when it appears that the district court is better positioned than the appellate court to decide the issue in question or that probing appellate scrutiny will not contribute to the clarity of legal doctrine.View Full Point of Law
Concurrence. (Bryson, J.)Â Determining that claim construction is subject to de novo review does not mean this court will ignore the conclusion of the district court.(Bryson, J.)Â Determining that claim construction is subject to de novo review does not mean this court will ignore the conclusion of the district court.
Discussion. There were immediate outcries by scholars for the Supreme Court to intervene and offer a final resolution to the issue of claim interpretation.Â The Cybor Corp. decision seemed to take away from the importance of the trial court in claim interpretation and the patent process.Â However, the Supreme Court denied certiorari to several cases that could have presented the issue.Â The Federal Circuit indicated a willingness to revisit Cybor Corp. in 2006 and possibly limit its application.Â However, the case stands as the standard of review.