Article: Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009

By Ed Reines and Nathan Greenblatt*

The Patent Reform Act of 2009 includes a provision allowing interlocutory appeals of claim construction orders.[1] As drafted, the provision gives the authority for approval of such an appeal to the district courts, without giving the Federal Circuit discretion to decline the appeal.[2] This approach is misguided. Failure to give the court of appeals a voice in the interlocutory appeals process flouts cautions inherent in the final judgment rule since its enactment in 1789, ignores the different institutional concerns of district and appellate courts, and will create problems of piecemeal appeals, undue delay, and crowded dockets that will impair the effectiveness of the Federal Circuit and contravene the purpose for enacting the provision in the first place.

In addition, the perceived problem of excess reversals of claim construction rulings that has motivated the current provision is a function, if anything, of the de novo review standard applicable to claim construction, not the final judgment rule.[3] Thus the proposed solution does not address the true issue in any event – it masks it.

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* The views expressed in this article are those of the authors and do not necessarily reflect the views of Weil, Gotshal & Manges LLP or any of its clients.

[1] See S. 515 sec. 8(b).

[2] Id. (amending 28 U.S.C. § 1292(c)(2) by giving the Federal Circuit exclusive jurisdiction):

(3) of an appeal from an interlocutory order or decree determining construction of claims in a civil action for patent infringement under section 271 of title 35. Application for an appeal under paragraph (3) shall be made to the court within 10 days after entry of the order or decree. The district court shall have discretion whether to approve the application and, if so, whether to stay proceedings in the district court during the pendency of such appeal.

[3] See, e.g., 6/6/2007 Testimony of Mary E. Doyle before the Senate Committee on the Judiciary regarding “Patent Reform: The Future of American Innovation” at 9-10 (arguing that interlocutory appeal is needed because “claim construction rulings are so frequently reversed by the Federal Circuit”).  

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

9 thoughts on “Article: Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009

  1. Dude, I hope not. With you getting your a$$ kicked all the time by that chick.

    I’m getting an early start on the weekend – be my wingman tomorrow?

  2. Dennis, off topic here, but by now you are probably aware Judge Moore has mentioned you by name in her dissent in today’s Hyatt decision :-)

  3. Just another reason why patent reform has nothing to do with reform. It’s about legalizing theft of small entity creations.

    Patent reform is a fraud on America…
    Please see link to truereform.piausa.org for a different/opposing view on patent reform.

  4. As noted above and elsewhere, however impractical it may be, it is important to keep this legislative threat pending just to strongly encourage the CAFC to reverse its prior en banc decision to give every claim interpretation de novo review [no deference at all to the trier of fact] even in close cases with disputed underlying factual evidence, such as the meaning of technical terminology to those of ordinary skill in the art at the time. De novo review also gives free reign for the clear differences of opinion between certain CAFC judges as to what claim scope should be. [Evidenced by the resolution failure of the Phillips en banc decision in many subsequent panel decisions]. Both of the above lead to unpredictability, increased CAFC appeals, and a high rate of CAFC reversals and/or split opinions on claim interpretation.
    That should not prevent the CAFC from being able to continue to reverse the many clearly erronious D.C. claim intepretations, some of which are so absurd one wonders why the attorneys who fobbed them on the D.C. judges are not sanctioned?

  5. Serves the Federal Circuit right. Unwilling as they are to give the lower courts any deference on the issue of claim construction, they deserve to be buried under a mountain of interlocutory appeals. Perhaps a consequence of this would be to get Congress to revisit the practical effect of driving all patent appeals to the Federal Circuit in the first place. There are other circuits out there at least as capable at sorting out such issues.

  6. 6, if you issue a bunch of allowances you can meet your quota and go home. Then again, with your 10-second google searches, it shouldn’t take you much longer to knock out the same number of rejections…except for those darn form paragraphs…

  7. Reporting live from the PTO, it’s 78 degrees up in this mug. I know they’re trying to save on cooling and all, but dang. Usually around this time of year it would be 60 in the office and you’d bring a sweater to keep warm (if you were a girl). A happy medium would be room temperature you know?

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