Abstract

     Several years before Tim Berners-Lee ushered in the modern- day World Wide Web by developing the first WWW client, a computer scientist named Charles Freeny, Jr. obtained U.S. Patent 4,528,643 in which he described his idea for a network of “information manufacturing machines” (IMMs) that could swap digital information over telephone lines. Today, Freeny’s patent is at the center of a dispute involving a company with no material assets other than the patent and potentially tens of thousands of would-be infringers. This state of affairs exists even though a U.S district court ruled, in May 1998, that Freeny’s patent was limited to a rather narrow implementation that was inconsistent with the way in which most consumers use the Internet to download software and other materials. The reason for this seeming inconsistency lies in the fact that the district court’s interpretation of the claims was vitiated through de novo review of the issues in the U.S. Court of Appeals for the Federal Circuit.
     Strangely, the uncertainty generated by the Federal Circuit’s decision was exactly the type of outcome that the establishment of the court was supposed to avoid. When Congress created the U.S. Court of Appeals for the Federal Circuit, one of the stated goals was to ensure uniform application of the patent laws in the nation. Hence, Congress created one court with jurisdiction to hear all appeals of original patent claims to avoid regional circuit courts’ disagreement over the application of these laws. This policy was further carried over to the realm of claims construction through the Supreme Court’s decision in Markman v. Westview Instruments, Inc., in which the Court sided with the Federal Circuit and held that claims construction was a matter of law to be decided by the district court judge in the first instance. One of the reasons cited in support of this treatment was the need for uniformity in the treatment of a given patent.
     However, empirical studies by various authors, including one of the Federal Circuit’s own judges, have shown that uniformity is conspicuously absent when it comes to issues of claims construction in patent litigation. And given that claims construction lies at the heart of virtually every patent dispute, this lack of certainty is leading to ever-increasing costs to litigants (and even non-litigants for that matter), as parties are not willing to concede claims construction issues until at least one appeal has been taken. The Markman decision established an important objective: the (preferably early) resolution of key issues in patent litigation by learned judges who were deemed best equipped to  render decisions on such matters because these individuals were familiar with reading and deciphering complex legal documents. In practice though, the Federal Circuit’s de novo review of such decisions (a standard of review not explicitly prescribed by the Supreme Court’s Markman decision) has led to reversal rates of or near 40% in those cases in which claims construction is reviewed. This Casenote will illustrate, through the Interactive Gift Exchange decision, how de novo review erodes certainty about a patent claim’s meaning.