High Reversal Rate of Markman Decisions Weakens their Intended Value

In theory, placing claim construction solely in the province of the court was intended to simplify the trial and provide uniformity, predictability and reliability. In practice, Markman has provided a vehicle for the district court to avoid a lengthy trial by facilitating the grant of summary judgment of invalidity, noninfringement or infringement following a relatively short pretrial claim construction hearing. However, the practice frequently backfires because the Court of Appeals for the Federal Circuit reverses and remands a high percentage of these cases because of erroneous claim constructions. Thus, instead of cutting back on the amount of time and money expended on patent litigation, the Markman decision often has the opposite effect.

Has the Markman decision provided an all-too-easy escape route for district court judges who do not wish to endure lengthy and complex patent infringement trials? This article summarizes several recent cases in which the Federal Circuit reversed and remanded summary judgment decisions because of an erroneous claim construction at the district court level. Possible alternatives to this often inefficient procedure are suggested.