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Scholar Joins Scrum On Claims Construction Standard

Publication Date: 
July 02, 2013
The Recorder
Scott Graham

Professor Mark Lemley spoke with The Recorder's Scott Graham about a new request for the Federal Circuit court to review Lighting Ballast Control v. Philips Electronics and how it's impact on the 1998 decision in Cybor v. FAS Technologies will "make things complicated." 

When Berkeley attorney Andrew Dhuey sought to drum up amicus curiae support for overturning a key Federal Circuit ruling on claim construction, his opponent accused him of making a frivolous argument.

Asking the full court to review Lighting Ballast Control v. Philips Electronics, a nonprecedential decision, was likely to get Dhuey sanctioned, Orrick, Herrington & Sutcliffe partner Steven Routh told the American Intellectual Property Law Association in January.


"It's complicated," said Stanford Law School IP expert Mark Lemley. De novo review leads to a high rate of reversal, often after the parties have invested huge amounts of time and expense in a trial. But deferring more to trial judges might encourage them to drag out the Markman claim construction hearings with multiple expert witnesses, to help bulletproof their rulings. With Menell's research showing the reversal rate declining, "you could reach the conclusion that the system is working itself out already," Lemley said.

Although Acacia Research can be considered a patent troll, Lemley doesn't see the issue breaking down along troll/anti-troll lines. Depending on how any given claim is construed, "it could be plaintiff or defendant who's happy with what the district court did."