Process Considerations in the Age of Markman and Mantras

Professor Nard argues that although notions of uniformity and certainty have always been part of patent law parlance, since the Federal Circuit\'s decision in Markman v. Westview Instruments, Inc., these noble ends have achieved mantra status. In Markman, the Federal Circuit, in the name of uniformity and certainty, characterized claim interpretation as a question of law subject to de novo review, thus positioning itself as the arbiter of claim meaning. Although Professor Nard disagrees with this characterization and asserts that uniformity and certainty are ill-served by such, he concedes that it is here to stay, at least for the foreseeable future. Therefore, Professor Nard addresses Markman on its own terms. Consequently, to achieve uniformity and certainty in the context of de novo review, he suggests a proposal to encourage the Federal Circuit to accept interlocutory appeals of district court claim interpretations or so-called Markman hearings. According to the proposal, the Supreme Court, pursuant to the Rules Enabling Act, would promulgate a rule specifically permitting or requiring the Federal Circuit to hear an interlocutory appeal of a claim interpretation decision. Professor Nard argues that the Federal Circuit, which has a special duty to promote uniformity and certainty, cannot have it both ways; that is, the court cannot employ a de novo standard of review on the one hand and, on the other hand, refuse to entertain interlocutory appeals. Furthermore, acceptance of interlocutory appeals would foster early certainty and promote settlement negotiations. Consistent with this proposal, he also recommends that a district court, when applicable, apply the doctrine of issue preclusion to its sister courts\' claim interpretation decisions. The application of issue preclusion would promote uniformity at the district court level, and coupled with interlocutory review, would promote early certainty.*Associate Professor of Law, Marquette University Law School.

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