Senate Patent Reform Bill on Interlocutory Appeals of Claim Construction Orders

Section 8 of the 106-page draft report of the Senate Judiciary Committee on the Patent Reform Act of 2007 (S. 1145) provides for Interlocutory appeals of claim construction orders, giving district court judges discretion to certify Markman claim construction orders for interlocutory review. When such orders are certified, the Federal Circuit must decide the appeal.

According to the "Section-by-Section Summary of the Bill:"

The Committee intends to transfer the discretion from the Federal Circuit to the district court judge as to whether — and when — a claim construction order should be decided on appeal. The district court judges are in the best position to know when the evidence adduced, and the arguments marshaled by the litigants, have brought the case to a point at which a decision by the appellate court on claim construction could best promote resolution of the case. As a case management tool, the Committee is
confident that the interlocutory appeal of a Markman decision could be both useful and effective. The district court also has the discretion to stay the case pending the appeal.

"The legislative solution takes a sledgehammer to [the Cybor denovo review] problem that could be fixed with a surgical needle," argues Professor Wegner in his paper entitled Death to Cybor De Novo Claim Construction Review through Leahy, S. 1145. "To the extent that the Leahy legislation passes, it would be difficult to imagine much time passing before the Federal Circuit would sua sponte choose to overrule its Cybor precedent."

A flood of interlocutory claim construction appeals would reach the Federal Circuit which would put such great pressure on the court that it could not be imagined that Cybor could long stand. But, if overruling Cybor is the legislative objective, a far better solution would be to do just that: Congress should legislatively overrule Cybor and save the patent system from the procedural nightmare of routine, interlocutory claim construction appeals.