New Study Says Western District's Claim Construction Decisions Get Reversed Nearly 40% of the Time

A soon-to-be-published study in the Michigan Law Review says that claim construction decisions by the Western District of Washington were reversed by the CAFC 38.9 % of the time during the time period April 24, 1996 (the date of the Supreme Court's decision in Markman) and June 30, 2007. Presented by Professor David L. Schwartz, the study seeks to test the conventional wisdom that "[p]ractice makes perfect - the old adage promises that the more you practice, the better you will become." The theory here is that the busiest judicial districts for patent litigation (the Western District of Washington is ranked 14th in terms of the number of claim construction decisions appealed to the CAFC during this time period) ought to fare better over time in terms of claim construction reversal rate. The results of Schwartz' study may surprise you (or perhaps not). His study shows that the level of judicial experience with claims construction issues appears to have little, if any, impact on reversal rate. Nor does reversal rate decrease when a district court judge has more CAFC appeals. Indeed the busiest judicial district during this time period (measured either in terms of the number of appeals or the number of patent cases filed), the C.D. of California, had the highest reversal rate of any of the "busy" judicial districts for patent litigation, with 43.5% of all claim construction decisions reversed by the CAFC. In short, practice does not make perfect when it comes to issues of claims construction.

Why is this the case? Why doesn't "practice make perfect" in the realm of claim construction? The primary culprit according to Schwartz is that "[c]laim construction may be inherently indeterminate." You think? Do you mean to say there are multiple, potentially outcome-changing ways to interpret claim language? Forgive the sarcasm, but anyone who has litigated a patent case knows that claim construction in many cases is a crap shoot. It comes down to good advocacy and this why it is so important to choose your counsel wisely.

NOTE: This post was updated May 10, 2008 to reflect the fact that the study is not yet published and to provide an updated link.