While the pundits will debate the importance of the America Invents Act (AIA) for months to come, one thing is clear: The AIA did nothing to address the most persistent and pernicious problem in patent litigation—namely, claim construction. There is reason to hope, however, that this problem will receive the attention it deserves some time soon. After simmering for years, it may now be that the core problem in claim construction is coming into sharp focus for review by the Court of Appeals for the Federal Circuit.
Many have come to understand that the rules for claim construction are ill-defined and applied inconsistently. Retractable Techs., Inc. v. Becton, Dickinson & Co., 2011 WL 5222835 (Fed. Cir. Oct. 31, 2011). Patent litigators know that claim construction is unpredictable in the trial courts and that the rate of reversal in the court of appeals is too high. Professor David Schwartz has studied whether trial judges improve at claim construction with experience and discovered that—as a group—they do not improve as they gain more experience construing patents. David L. Schwartz, "Practice Makes Perfect? An Empirical Study of Claim Construction Reversal Rates in Patent Cases," 107 Mich. L. Rev. 223 (2008). Among other possible explanations for the observed data, Professor Schwartz hypothesizes that claim construction may be inherently "indeterminate." Id. at 267. So claim construction, which is of crucial importance to patent litigation, is ill-defined, unpredictable, inconsistent, and possibly (like quantum mechanics) indeterminate! What is going on here?
There is an explanation, and it is simple. There are two competing methods for doing claim construction. They likely are irreconcilable. However, the case law does a poor job of recognizing the two methods. Both methods are used by members of the Federal Circuit and by trial judges. There is little predictability as to which method will be used in which situation. In some cases, the methods are conflated and used together, leading to even further confusion.