Anderson, J. Jonas; Menell, Peter S. --- "Empirical studies of claim construction" [2019] ELECD 1965; in Depoorter, Ben; Menell, Peter; Schwartz, David (eds), "Research Handbook on the Economics of Intellectual Property Law" (Edward Elgar Publishing, 2019) 159

Book Title: Research Handbook on the Economics of Intellectual Property Law

Editor(s): Depoorter, Ben; Menell, Peter; Schwartz, David

Publisher: Edward Elgar Publishing

Section: Chapter 7

Section Title: Empirical studies of claim construction

Author(s): Anderson, J. Jonas; Menell, Peter S.

Number of pages: 16

Abstract/Description:

Patent claims define the scope of the patent right and hence are central to the operation of the patent system. Following the Supreme Court’s decision in Markman v. Westview Instruments [1996] USSC 35; (517 U.S. 370 (1996)), holding that “the construction of a patent, including terms of art within its claim, is exclusively within the province of the court,” district judges began the practice of construing patent claims in advance of trial following so-called “Markman” hearings. These constructions became subject to appellate review after the trial or summary judgment ruling. This chapter surveys empirical studies examining: (1) reversal rates; (2) the sources and methodologies that judges employ in construing patent claims; and (3) appellate behavior generally. It examines the hypotheses underlying these studies, the data used, the empirical methods deployed, and the principal results. It also suggests directions for further research.