Improvidently Granted: Why the En Banc Federal Circuit Chose the Wrong Claim Construction Issue

Abstract

The Federal Circuit recently granted en banc review to determine whether district court interpretations of patent claims should continue to be reviewed de novo or should be subject to deferential review. The Federal Circuit chose the wrong claim construction issue to address en banc. Resolving the proper standard of review will not improve claim construction, and may not even be possible, without first resolving the Federal Circuit’s deep and persistent schism over the basic methodology for claim construction. Moreover, the Federal Circuit’s choice to review the standard of review issue first distracts attention from the far more important methodological split, gives false hope that deferential review will cure all that ails claim construction, and could surreptitiously impact the methodological dispute. The wisest course is for the Federal Circuit to dissolve the en banc proceedings as improvidently granted. At the very least, the Federal Circuit should resolve the standard of review issue on the narrowest ground possible.

Keywords: patent, claim construction