1997) ("The trial court is best situated to gauge the relevance and need for additional evidence to explicate claim terms."), with Cybor
construction matters following Cybor
, which yielded a 37.3% reversal
(355) See Wenger, 239 F.3d at 1239 (citing Cybor
, 138 F.3d at 1457) (applying established precedent for competitor's reasonable belief as to surrendered subject matter).
(33) His strong dissent, joined by Judge Newman, stated that they were "convinced of the futility, indeed the absurdity, of this court's persistence in adhering to the falsehood that claim construction is a matter of law devoid of any factual component." (34) The Federal Circuit was presented with the opportunity to re-visit Cybor
by a petition for re-hearing en banc in the Amgen Inc.
There are significant reasons, however, to doubt that this backward-looking analysis serves as an accurate prediction for what would result if the Supreme Court changes the law by reversing the Cybor
2003) (stating that claim constructions performed by the ITC are reviewed de novo); Cybor
Part II discusses the doctrinal inconsistency between Cybor
and Federal Circuit and Supreme Court precedent.
surrendered during patent prosecution by claim argument, see Cybor
Recall that this study seeks to determine whether the Federal Circuit has developed a workable set of claim construction guidelines--the "rules and tools" mandated by the Supreme Court in Markman II and acknowledged in Markman I and Cybor
. (93) In particular, note that the object of the study is not the underlying methodological view of the Federal Circuit judges but the content of the relevant jurisprudence.
Shortly after the Court's unanimous holding, a divided en banc panel of the Court of Appeals for the Federal Circuit (in Cybor
(196.) Changing the standard of review could be done through overruling Cybor
since the Supreme Court's 1996 Markman decision); see also Cybor