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Phillips Analysis, Part 2: What Happened to the Judges?
July 18, 2005
Note: This post is part of a continuing series on the Federal Circuit's recent en banc decision in Phillips v AWH. See related posts here:One of the interesting things about the Phillips is how the various judges on the Federal Circuit voted, what they said if they wrote, and what that suggests about the future of claim construction analysis at the court.
First the basics: The majority opinion Phillips had nine votes for its complete analysis. Judge Lourie joined most of the majority opinion, but filed a concurrence/dissent disagreeing with the analysis in this specific case. Judge Mayer wrote a dissent on the issue of whether the process is one of law or of fact. Judge Newman joined most of the majority opinion, Judge Lourie's concurrence, and Judge Mayer's dissent.
First, some background: As Federal Circuit observers will recall, there has long been commentary about "panel dependency" at the Federal Circuit, especially with regards to claim construction analysis. That is, many attorneys and academics (and district court judges) believed that the way claims were interpreted was dependent upon the membership of the three-judge panel hearing the case. And because panels are generally randomly assigned to cases, that led to a sense among many that the results has the flavor of randomness to them. The judges, of course, denied this panel dependency, both in print and in public. (See the introductory section of this paper for more details and documentation.) However, in our study published in March 2004, my co-author and I were able to prove statistically that claim construction analysis was affected by panel membership. Not by all judges, and not in all cases, but enough to least substantiate the widely-held view. Broadly, we found that there were distinct factions of judges on the Federal Circuit, and that those differences were significant to the outcome of cases. In part, the data we gathered allowed us to build The Federal Circuit predictor, which can make a rough (but statistically-backed) guess at results in claim construction cases given the panel membership. And course, four months after our study was initially published, the court took Phillips en banc, to resolve this very issue.
So, given the above, one question is how Phillips happened in the way it did. Here are a few observations:
What Happened to the Proceduralists?
As I noted in an earlier post, in Phillips the court chose what I've called the "holistic" approach to claim construction: given the totality of information available, the judge essentially "divines" the appropriate claim construction. The court specifically criticized Texas Digital, which was a leading case setting forth the "procedural" method, which uses a more formal, structured approach. See this page for more information on this distinction. Given this result, one major question is: What happened to the Proceduralists? They seem to have completely caved to the holistics, with nary a comment. Even Judge Dyk, the author and leading proponent of Texas Digital, joined the Phillips majority, with it's rather dubious criticism of the Texas Digital approach. I for one, was very surprised with the complete failure of the most proceduralist judges (Linn, Dyk, and Clevenger) to raise a single contrary word, notwithstanding that two-thirds of the claim construction caselaw was potentially overruled. Why would this happen? I can think of a few possible reasons:
- They got tired; and they didn't care very much about the procedural approach anyway. It's possible that when push came to shove, the Proceduralists simply got wobbly. So rather than stick with their long-professed views (that were, apparently, in the minority here), they simply took the opportunity to flip to the other side, perhaps hoping that their silence would make this easier. Unfortunately, this view might suggest a rather casual attitude towards the development of jurisprudence, and makes one wonder what's next to be compromised.
- Uniformity is more important than being right. Maybe the Proceduralists could see they were going to lose the intellectual argument, and decided that the court's ability to present a unified face was more important than sticking to their guns. This is not an unreasonable position, though I'm not sure it makes any sense in the Phillips case -- which pretty explicitly eschews any uniformity in claim construction analysis. Plus, the Proceduralists could have written a short concurrence noting this point, thus allowing everyone to understand what was going on somewhat better.
- Phillips = business as usual. A third possibility is that the Proceduralists don't think that Phillips really did very much to the doctrine, and that Phillips won't stop them from simply continuing to construe claims as they did before -- with some small changes to the language and no citations to Texas Digital. Under this view, the Proceduralists voted for Phillips because it didn't affect them. I explored this view of Phillips in an earlier post, and concluded that, while it is possible that the judges might think this way, I seriously doubt that anyone else will. This is also, in my opinion, a somewhat cynical approach to appellate decision-making, obscuring the real, underlying, reasons for a selected approach -- this isn't very helpful to district courts, eh?
- The genuinely changed their mind. A final possibility is that, via the advocacy process, the Proceduralist judges simply changed their mind, and adopted the holistic approach. I regard this as the best possible reason for their vote, but think that if this is the case, the Phillips opinion (and the court) would have gained much more credibility if they had written a concurrence stating that they had changed their mind, and why. Instead, their silence requires everyone to speculate, and might lead many to conclude that their reasons are somewhat less charitable than this one.
Judge Rader Flips on the Fact/Law Issue.
Another interesting aspect of Phillips is that Judge Rader voted for the majority opinion, and did not join Judge Mayer's powerful dissent on the question of whether the Federal Circuit should defer to District Courts' factfinding on claim construction. This is a different voting pattern than that which Judge Rader has expressed in the past.
The Judge Newman Votes?
I don't fully understand why Judge Newman voted the way she did: joining Judge Lourie's concurrence/dissent (which joined the majority opinion's analysis of claim construction methodology), and joining Judge Mayer's dissent. The majority opinion notes that Judge Newman did not join as to Part VI, which is the part that adheres to the no-deference, no-fact Cybor rule. So it seems clear that Judge Newman is with Judge Mayer on this point. And yet why join the Lourie opinion, then? Hmmm. One possibility is that Judge Newman wants to establish the sort of "informal deference" that Judge Lourie suggests at the end of his concurrence.
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