trial de novo
I don't think there is a "trial de novo" conducted by the Federal Circuit on appeal, that is, there is no new evidence heard, and there are no new witnesses allowed. There is, however, a "de novo standard of review" of all legal issues. There is no assumption that the Special Master or the trial judge made correct rulings, and no deference paid to the rulings. There is still, in theory, at least, deference given to the jury's factual findings. But if the appeals court is convinced the jury made a mistake and was just flipping a coin, the appeals court can usually find a way to blame the jury's verdict on a mistaken instruction from the judge. I don't recall any statistics, but my impression is that a higher percentage of patent appeals get reversed than other appeals.
The following, which is specifically about claims construction review, is from CYBOR v FAS TECHNOLOGIES
United States Court of Appeals for the Federal Circuit
96-1286,-1287
An infringement analysis involves two steps. First, the court determines the scope and meaning of the patent claims asserted, see Markman II, 116 S. Ct. at 1387, and then the properly construed claims are compared to the allegedly infringing device, see Read Corp., 970 F.2d at 821, 23 USPQ2d at 1431. Although the law is clear that the judge, and not the jury, is to construe the claims, this case presents the issue of the proper role of this court in reviewing the district court's claim construction.
In Markman I, we held that, because claim construction is purely a matter of law, this court reviews the district court's claim construction de novo on appeal. See Markman I, 52 F.3d at 979, 981, 34 USPQ2d at 1329, 1331. In reaching this conclusion, we recognized that
[t]hrough this process of construing claims by, among other things, using certain extrinsic evidence that the court finds helpful and rejecting other evidence as unhelpful, and resolving disputes en route to pronouncing the meaning of claim language as a matter of law based on the
patent documents themselves, the court is not crediting certain evidence over other evidence or making factual evidentiary findings. Rather, the court is looking to the extrinsic evidence to assist in its construction of the written document, a task it is required to perform. The district court's claim construction , enlightened by such extrinsic evidence as may be helpful, is still based upon the patent and prosecution history. It is therefore still construction, and is a matter of law subject to de novo review.
Id. at 981, 34 USPQ2d at 1331 (emphasis in original and footnote omitted).
After the Supreme Court's decision in Markman II, panels of this court have generally followed the review standard of Markman I. See Serrano v. Telular Corp., 111 F.3d 1578, 42 USPQ2d 1538 (Fed. Cir. 1997); Alpex Computer Corp. v. Nintendo Co., 102 F.3d 1214, 40 USPQ2d 1667 (Fed. Cir. 1996); Insituform Techs., Inc. v. CAT Contracting, Inc., 99 F.3d 1098, 40 USPQ2d 1602 (Fed. Cir. 1996); General Am. Transp. v. Cryo-Trans, Inc., 93 F.3d 766, 39 USPQ2d 1801 (Fed Cir. 1996). In some cases, however, a clearly erroneous standard has been applied to findings considered to be factual in nature that are incident to the judge's construction of patent claims. See Eastman Kodak Co. v. Goodyear Tire & Rubber Co., 114 F.3d 1547, 1555-56, 42 USPQ2d 1737, 1742 (Fed. Cir. 1997); Serrano, 111 F.3d at 1586, 42 USPQ2d at 1544, (Mayer, J., concurring); Wiener v. NEC Elecs. Inc., 102 F.3d 534, 539, 41 USPQ2d 1023, 1026 (Fed. Cir. 1996); Metaullics Sys. Co. v. Cooper, 100 F.3d 938, 939, 40 USPQ2d 1798, 1799 (Fed. Cir. 1996).3 We ordered that this case be decided in banc to resolve this conflict, and we conclude that the de novo standard of review as stated in Markman I remains good law.
A.Under §§ 112, * 6, an accused device with structure not identical to the structure described in the patent will literally infringe the patent if the device performs the identical function required by the claim with a structure equivalent to that described in the patent. See Micro Chem., Inc. v. Great Plains Chem. Co., 103 F.3d 1538, 1547, 41 USPQ2d 1238, 1245-46 (Fed. Cir. 1997). Prosecution history is relevant to the construction of a claim written in means-plus-function form. See United States v. Telectronics, Inc., 857 F.2d 778, 782, 8 USPQ2d 1217, 1220 (Fed. Cir. 1988); Rite-Hite Corp. v. Kelley Co., 819 F.2d 1120, 1123, 2 USPQ2d 1915, 1917 (Fed. Cir. 1987). Indeed, "just as prosecution history estoppel may act to estop an equivalence argument under the doctrine of equivalents, positions taken before the PTO may bar an inconsistent position on claim construction under §§ 112, * 6." Alpex, 102 F.3d at 1221, 40 USPQ2d at 1673. Clear assertions made in support of patentability thus may affect the range of equivalents under §§ 112, *6. Cf. American Permahedge, Inc. v. Barcana, Inc., 105 F.3d 1441, 1446, 41 USPQ2d 1614, 1618 (Fed. Cir. 1997); Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1582, 37 USPQ2d 1365, 1373 (Fed. Cir. 1996). The relevant inquiry is whether a competitor would reasonably believe that the applicant had surrendered the relevant subject matter. See Insituform Techs., Inc., v. CAT Contracting, Inc., 99 F.3d 1098, 1107-08, 40 USPQ2d 1602, 1608 (Fed. Cir. 1996).
An accused device that does not literally infringe a claim may still infringe under the doctrine of equivalents if each limitation of the claim is met in the accused device either literally or equivalently. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 117 S. Ct. 1040, 1054 (1997); see also Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935, 4 USPQ2d 1737, 1740 (Fed. Cir. 1987) (in banc). Prosecution history estoppel provides a legal limitation on the application of the doctrine of equivalents by excluding from the range of equivalents subject matter surrendered during prosecution of the application for the patent. See Warner-Jenkinson, 117 S. Ct. at 1049. The estoppel may arise from matter surrendered as a result of amendments to overcome patentability rejections, see id., or as a result of argument to secure allowance of a claim, see Wang Lab., Inc. v. Mitsubishi Elecs., Inc., 103 F.3d 1571, 1578, 41 USPQ2d 1263, 1269 (Fed. Cir. 1997). Prosecution history estoppel is a legal question subject to de novo review on appeal. See Insituform, 99 F.3d at 1107, 40 USPQ2d at 1609.
B.The Supreme Court framed the question before it in Markman II in the alternative: "whether the interpretation of a so-called patent claim . . . is a matter of law reserved entirely for the court, or subject to a Seventh Amendment guarantee that a jury will determine the meaning of any disputed term of art about which expert testimony is offered." Markman II, 116 S. Ct. at 1387 (emphasis added). When it answered that question by stating that "[w]e hold that the construction of a patent, including terms of art within its claim, is exclusively within the province of the court," id., the Court held that the totality of claim construction is a legal question to be decided by the judge. Nothing in the Supreme Court's opinion supports the view that the Court endorsed a silent, third option - that claim construction may involve subsidiary or underlying questions of fact.4 To the contrary, the Court expressly stated that "treating interpretive issues as purely legal will promote (though not guarantee) intrajurisdictional certainty through the application of stare decisis on those questions not yet subject to interjurisdictional uniformity under the authority of the single appeals court." Id. at 1396 (emphasis added); see also id. at 1394 ("`Questions of construction are questions of law for the judge, not questions of fact for the jury"' (quoting A. Walker, Patent Laws §§ 75 at 173 (3d ed. 1895))). Indeed, the sentence demonstrates that the Supreme Court endorsed this court's role in providing national uniformity to the construction of a patent claim, a role that would be impeded if we were bound to give deference to a trial judge's asserted factual determinations incident to claim construction.
The opinions in some of our cases suggesting that there should be deference to what are asserted to be factual underpinnings of claim construction assert support from the language in Markman II stating that "construing a term of art after receipt of evidence" is a "mongrel practice," id. at 1390, and that the issue may "`fall[] somewhere between a pristine legal standard and a simple historical fact,'" id. at 1395 (quoting Miller v. Fenton, 474 U.S. 104, 114 (1985)). These characterizations, however, are only prefatory comments demonstrating the Supreme Court's recognition that the determination of whether patent claim construction is a question of law or fact is not simple or clear cut; they do not support the view that the Court held that while construction is a legal question for the judge, there may also be underlying fact questions. To the contrary, the court noted that when an issue "falls somewhere between a pristine legal standard and a simple historical fact, the fact/law distinction at times has turned on a determination that, as a matter of sound administration of justice, one judicial actor is better positioned than another to decide the issue in question." Id. (quoting Miller v. Fenton, 474 U.S. 104, 114 (1985)) (emphasis added). Thus, the Supreme Court was addressing under which category, fact or law, claim construction should fall and not whether it should be classified as having two components, fact and law.
Further supporting the conclusion that claim construction is a pure issue of law is the Supreme Court's analysis of the role of expert testimony in claim construction. Generally, the Court has recognized the important role played by juries in evaluating the credibility of a witness, a key consideration in determining the appropriate judicial actor to decide an issue. See Miller, 474 U.S. at 114. In the context of claim construction, however, the Court reasoned that, while credibility determinations theoretically could play a role in claim construction, the chance of such an occurrence is "doubtful" and that "any credibility determinations will be subsumed within the necessarily sophisticated analysis of the whole document, required by the standard construction rule that a term can be defined only in a way that comports with the instrument as a whole." Markman II, 116 S. Ct. at 1395; see also id. at 1394-95 ("`[T]he testimony of witnesses may be received . . . . But in the actual interpretation of the patent the court proceeds upon its own responsibility, as an arbiter of the law, giving to the patent its true and final character and force.'" (quoting 2 W. Robinson, Law of Patents §§ 732 at 481-83 (1890))). Such a conclusion is consistent with the view that claim construction, as a form of "document construction," id. at 1395, is solely a question of law subject to de novo review, as noted above. See Markman I, 52 F.3d at 981, 34 USPQ2d at 1331.
Moreover, while the Supreme Court's opinion conclusively and repeatedly states that claim construction is purely legal, another view of the Court's decision also demonstrates that our standard of review remains intact. The Court's primary concern in Markman II was the Seventh Amendment issue of whether a right to a jury trial on claim construction inured to a party due to any potential factual issues involved. Because the Court did not discuss the appellate standard of review, Markman II can be read as addressing solely the respective roles of the judge and jury at the trial level and not the relationship between the district courts and this court. Although our conclusion in Markman I that claim construction is a matter of law was affirmed in all respects, even this narrower view of Markman II leaves Markman I as the controlling authority regarding our standard of review.
Thus, we conclude that the standard of review in Markman I, as discussed above, was not changed by the Supreme Court's decision in Markman II, and we therefore reaffirm that, as a purely legal question, we review claim construction de novo on appeal including any allegedly fact-based questions relating to claim construction.
AI
