After reading all 88 pages of this very scholarly opinion which left patent law right where it was post-Cybor – no matter how much weight the parties and amici felt stare decisis deserved – I went back and read Judge Lourie’s concurrence. It is mercifully brief and tries to cast some of the substantive issues in real-world contexts. He writes like a “Dutch uncle” – which the dictionary defines as one who “admonishes sternly and bluntly.” Whether or not you agree with his conclusions, he gets his points across like arrows in “The Hunger Games.”
He reduces the debate about the proper reading of Markman II simply by saying that the distinction between calling claim interpretation a “question of law” vs. a “question for the court” is not a substantial one. Whether or not the Supreme Court will disagree if cert. is granted is a question for another day.
Facing a future in which the absolute number of patent suits may increase – in an attempt to reign in trolls – Judge Lourie does not want to see a IP landscape in which the Fed. Cir. is forced to give deference to different constructions of the same patent claims based on the weight given to “dueling experts” by district court judges. He does not feel that rulings based on expert opinions on claim elements are as important to outcomes as the credibility of witness (or expert testimony) in cases which turn on matters of fact that are objectively true or false (“whether a traffic light was red or not”). Also, he does not believe that deferring to the winner of a battle of experts would promote uniformity in the law, much less decrease patent appeals.
Judge Lourie emphasizes that the Fed. Cir. does give “weight” or “informed deference” to the district courts’ fact-finding during claim construction, as part of its review of the entire record. He does not want the continued ability of the Fed. Cir. to say “We disagree” to be viewed as a complete rebuke of the lower courts’ work.
Still, he could not be clearer in emphasizing the paramount importance of the intrinsic evidence. Once a patent practitioner himself, Judge Lourie is deeply suspicious of the prosecutor/litigator dichotomy in which litigators are tasked with altering the original scope of claim breadth reached after negotiations between the PTO and applicants. He opposes any change in the law surrounding claim construction that would lead to a migration away from the primacy of intrinsic evidence in resolving claim interpretation (See e.g., Philips.)
While the minority apparently was not sufficiently comforted by Judge Lourie’s faith in “informal deference” or sufficiently concerned with “dueling experts”, his analysis presents a picture of the realities of patent prosecution and litigation that is lacking in the more academic analyses of the majority and minority opinions, however well-reasoned and well-written. His straight talk reminds us that we could all use the advice of a “Dutch uncle” once in a while.