Simplicity at the Cost of Clarity: Appellate Review of Claim Construction and the Failed Promise of Cybor

Abstract

This Comment examines the Federal Circuit's appellate review of claim construction during the years after its en banc decision in Cybor, in which the Court declared that claim construction is purely a matter of law, with no underlying factual inquiries, and would thenceforth be reviewed de novo. While Cybor made a seemingly simple rule, the Comment argues that it has had complicated consequences - internal inconsistency in the Federal Circuit's case law on claim construction, mixed messages to district courts, and seepage of the inconsistency into other areas of the patent law, such as indefiniteness. The reason for these unintended consequences, the Comment argues, is that certain issues underlying claim construction are immutably issues of fact, and the Federal Circuit has tried to force them to behave as issues of law to make the Cybor rule work. The Comment further argues that Cybor is inconsistent with the Supreme Court's decision in Markman, and concludes with two possible solutions, both of which involve limiting the holding of Cybor.