An Advisory Opinion on Claim Scope?

In Lava Trading, Inc. v. Sonic Trading Management, LLC, et al. Slip Op. Nos. 05-1177 and
056-1192 (Federal Circuit, April 19, 2006), the district court had issued a Rule 54(b) appellate certification after issuing a claim construction from the bench while the defendants’ counterclaims of invalidity and unenforceability were still pending before the trial court. Consequently, the record on appeal did not supply any meaningful comparison of the accused products to the asserted claims.

Circuit Judge Rader wrote for the court that it had jurisdiction under 28 U.S.C. § 1295(a)(1) (2000) even though "the procedural posture of this appeal presents problems" and the "appeal takes on the attributes of something akin to an advisory opinion on the scope of the ’982 patent."

In his dissent, Circuit Judge Mayer called the decision "another example of the unfortunate consequences of Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), and Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), which cemented this court’s jurisprudence with respect to claim construction as being purely a matter of law subject to de novo review:

Because claim construction is treated as a matter of law chimerically
devoid of underlying factual determinations, there are no "facts" on the record
to prevent parties from presenting claim construction one way in the trial court
and in an entirely different way in this court. By not dismissing this case, we
issue a decision based on an undeveloped record. We set ourselves up to have to
decide claim construction again later, which could well differ from the ruling
today. Furthermore, allowance of an appeal of the trial court’s perfunctory,
offhand ruling from the bench, for all intents and purposes allows an
interlocutory appeal of claim construction, which portends chaos in process.