Phillips v. AWH: Chief Judge Mayer’s Dissent

The Federal Circuit has created a stir in its recent decision to grant an en banc review of Phillips v. AWH.

Chief Judge Mayer dissented from the court’s decision to review. Mayer argued that the real question for review is whether Markman was correctly decided.

Until the court is willing to reconsider its holdings in Markman v. Westview Instruments … that claim construction is a pure question of law subject to de novo review in this court, any attempt to refine the process is futile. Nearly a decade of confusion has resulted from the fiction that claim construction is a matter of law, when it is obvious that it depends on underlying factual determinations which, like all factual questions if disputed, are the province of the trial court, reviewable on appeal for clear error. To pretend otherwise inspires cynicism. Therefore, and because I am convinced that shuffling our current precedent merely continues a charade, I dissent from the en banc order.

My former boss, Patricia Thayer at Heller Ehrman commented in the Recorder that she thinks Mayer may get his wish.

“I’d love it if the federal district courts got together” to write an amicus brief on the issue, Thayer said. “It’s difficult for them that [they are accorded] no deference. I wouldn’t be surprised if that gets changed in the process.”

This is the fourth article in our coverage of the Phillips en banc appeal. Read Part I, Part II, and Part III.