By Jason Rantanen
In a recent post discussing Retractable Technologies v. Becton, Dickinson and Company, Dennis commented that the court continues to struggle with claim construction – a seemingly surprising observation given that the Federal Circuit "clarified" its claim construction jurisprudence just over six years ago in Phillips v. AWH Corp.
A new study by R. Polk Wagner and Lee Petherbridge confirms what many suspected: that Phillips did not lead to a new world of simple, straightforward, and predictable claim construction. In Did Phillips Change Anything?: Empirical Analysis of the Federal Circuit’s Claim Construction Jurisprudence, Wagner and Petherbridge report the results of an empirical study that indicates that the court has made little jurisprudential progress since Phillips. More importantly, they suggest, the same split in judicial methodological approach to claim construction that forced the Phillips opinion survived the court’s decision and likely still persists. These findings and others lead them to their normative conclusion: that "Phillips stands forth as an unfortunate example of poor decision-making by the court, and one that negatively impacts its overall role in the patent system." Wagner and Petherbridge, abstract.
The paper is forthcoming in Intellectual Property and the Common Law (Cambridge U. Press, 2012, S. Balganesh, ed.), and a copy of the draft is available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1909028.