Patent "Trolls" and Claim Construction

Greg Reilly*

This Article explores the largely overlooked relationship between claim construction and patent assertion entities (patent “trolls”), finding that claim construction problems and trends benefit patent assertion entities. First, the Federal Circuit’s deep divide over the proper approach to claim construction creates uncertain patent scope, which is widely recognized as a core reason for the success of patent assertion entities. Second, case law and commentary increasingly endorse an approach to claim construction that relies on the “general meaning” in the technical field with limited reliance on the patent itself, which benefits patent assertion entities by increasing the breadth and uncertainty of patent scope. Third, the Supreme Court’s recent adoption of a more deferential standard of review for claim construction in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. increases the benefits patent assertion entities receive from filing in favorable district courts, like the Eastern District of Texas, as well as their incentives to do so.

If patent assertion entities are as problematic as widely thought, these claim construction problems and trends warrant reconsideration. Current claim construction rules and trends may be warranted despite their positive impact on patent assertion entities. And other means may exist for combatting patent assertion entities without altering claim construction rules or trends. But the positive effects for patent assertion entities must at least be factored into any cost-benefit analysis of claim construction rules. Moreover, the fact that current claim construction rules and trends produce the conditions under which patent assertion entities thrive suggests that patent assertion entities may be a symptom of larger problems with claim construction doctrine.

Continue reading in the print edition . . .

© 2016 Greg Reilly. Individuals and nonprofit institutions may reproduce and distribute copies of this Article in any format at or below cost, for educational purposes, so long as each copy identifies the author, provides a citation to the Notre Dame Law Review, and includes this provision in the copyright notice.

*Associate Professor of Law, California Western School of Law; Visiting Faculty, Chicago-Kent College of Law (Fall 2015). Thanks to Rebecca Eisenberg, Janet Freilich, Chris Funk, John Golden, Lisa Ouellette, and participants at the 2015 Intellectual Property Scholars Conference at DePaul College of Law for helpful discussions and comments on this and earlier versions of the project.