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Judge Kimberly Moore, 38, the newest judge of the U.S. Court of Appeals for the Federal Circuit, assumed the duties of office on Sept. 8, 2006. In her very first signed opinion, Amgen Inc. v. Hoechst Marion Roussel Inc., 469 F.3d 1039 (Fed. Cir. 2006, Moore, J., dissenting), issued on Nov. 22, she criticized the Cybor rule, the rule first articulated in Cybor Corp. v. FAS Techs. Inc., 138 F.3d 1448, 1451, 1455-56 (Fed. Cir. 1998) (en banc), under which the Federal Circuit accords no deference whatsoever to a district court’s claim construction. According to Cybor, “claim construction, as a purely legal issue, is subject to de novo review on appeal,” requiring de novo review of claim construction, with no deference to the district court, and treatment of claim construction as purely a legal issue with no factual component. Prior to her appointment to the bench, Moore had written articles and had given testimony to Congress on the high reversal-rate problem in patent appeals because of the Cybor rule. It is very interesting that her first signed opinion was in a case involving whether the Federal Circuit should revisit its Cybor rule, an issue she had studied and criticized prior to her nomination as a judge. Her signed dissent in Amgen was consistent with her previous views articulated in congressional testimony and articles. She, in effect, voted with the minority of a 13-judge panel to revisit Cybor by granting an en banc rehearing of the Amgen case, previously decided by a three-judge panel. Whether Cybor stands is of intense interest to the patent bar-the Federal Circuit has exclusive jurisdiction over all patent appeals-and may also be of general interest for those practicing before other appeals courts since it involves standards of review of lower court holdings. The fate of the Cybor rule is also of interest because many scholars have argued that it is inconsistent with a very famous U.S. Supreme Court patent case, Markman v. Westview Instruments Inc., 517 U.S. 370 (1996), which held that claim construction was a mixed question of fact and law. Moore’s qualifications for her new position are virtually impeccable. She has engineering, law firm, judicial and academic teaching and research credentials, having received a bachelor’s degree in electrical engineering from the Massachusetts Institute of Technology (MIT) in 1990; a master’s degree from MIT in 1991; and a J.D. (cum laude) from Georgetown University Law Center in 1994. She was an electrical engineer at the Naval Surface Warfare Center from 1988 to 1992, an associate at Chicago-based Kirkland & Ellis from 1994 to 1995 and a judicial clerk for Federal Circuit Chief Judge Glen Leroy Archer Jr. from 1995 to 1997. Following her clerkship, she was an assistant professor of law at Chicago-Kent College of Law, University of Maryland School of Law and George Mason University School of Law, and became professor of law at George Mason until appointed to the bench. Although she was never registered to practice before the U.S. Patent and Trademark Office (PTO) and therefore had no patent-prosecution experience, she co-authored a textbook entitled Patent Litigation and Strategy with Federal Circuit Chief Judge Paul R. Michel and Raphael Lupo, partner and head of the intellectual property, media and technology department of McDermott, Will & Emery, who is based in its Washington office. Moore has authored numerous articles on intellectual property topics, testified before Congress regarding the need for specialized patent judges and served as an expert in several patent litigations. She also served as editor in chief of the Federal Circuit Bar Journal and as an instructor in a patent bar review course. Throughout her academic years, Moore was highly critical of the Federal Circuit’s high reversal rate on claim construction. Congressional testimony During her congressional testimony she discussed the need for specialty judges for patents. She asserted that the high reversal rate in patent cases “undermines confidence in district-court decision making.” Moore qualified her testimony as follows: “Let me caveat this proposal by saying that I am not meaning to criticize the existing district court judges. They are charged with a difficult job and an ever increasing workload. District court judges work hard to resolve patent cases. In fact, many excellent patent jurists have evolved from this group. Yet, even some of these judges have raised concerns about adjudicating patent cases and one has publicly advocated for a specialized trial court to adjudicate patent cases.” She then cited to Judge James F. Holderman, “Judicial Patent Specialization: A View From the Trial Bench,” 2002 U. Ill. J.L. Tech. & Pol’y 425 (2002). During her testimony, Moore cited her own papers: Kimberly A. Moore, “Markman Eight Years Later: Is Claim Construction More Predictable?,” 9 Lewis & Clark L. Rev. 231 (2005); and Kimberly A. Moore, “Are District Court Judges Equipped to Resolve Patent Cases?,” 15 Harv. J.L. & Tech. 1 (2001). In the Lewis and Clark Law Review article, she wrote that the claim-construction reversal rate rose after Cybor and continued to rise five years after Cybor, suggesting that “the district court judges are not able to resolve claim construction issues as the Federal Circuit judges would like.” 9 Lewis & Clark L. Rev. at 246. She also wrote: “While the Federal Circuit judges undoubtedly construe more claim terms than a given district court judge, the claim construction inquiry depends entirely on what information is presented in the specification and what the ordinary and customary meaning of the term would be to one of skill in the art-clearly a factual inquiry that will vary with each patent. In short, construing claim terms in a given patent does not make construing claim terms in a different patent any easier. “The reversal rate ought to be going down, not up. The fault, at this point, undoubtedly lies with the Federal Circuit itself. The court is not providing sufficient guidance on claim construction. There have not evolved any clear canons of claim construction to aid district court judges, and in fact the Federal Circuit judges seem to disagree among themselves regarding the tools available for claim construction.” Id. at 247. The “ Cybor rule” under which the Federal Circuit accords no deference whatsoever to a district court’s claim construction and wherein “claim construction, as a purely legal issue, is subject to de novo review on appeal,” came in a Federal Circuit decision two years after the Supreme Court, in Markman, 517 U.S. at 388, stated that far from a “purely legal issue,” claim construction “falls somewhere between a pristine legal standard and a simple historical fact.” There were six separate opinions regarding the granting or denying of rehearing in the recent Amgen case, each commenting on the Cybor rule and the issue of whether the Federal Circuit’s standard of review of district court decisions regarding construction of patent claims should be “de novo.” Since Cybor, there has been about a 50% reversal rate by the Federal Circuit of district court decisions, which has made appeals virtually crapshoots and settlements difficult to reach because it is impossible to predict whether the Federal Circuit will affirm or reverse the claim construction of the lower court. The dissenting as well as concurring opinions in Amgen make it clear that the Federal Circuit is very inclined to modify or reverse Cybor, although not quite this time. The opinions in ‘Amgen’ Michel, the circuit’s chief judge, outlined four problems with the no-deference regime: a steadily high reversal rate; a lack of predictability about appellate outcomes; loss of the comparative advantage of district court judges; and inundation of the federal circuit with “the minutia of construing numerous disputed claim terms.” He stated his belief that Cybor should be reconsidered and his expectation that it would be. Judge Pauline Newman said that district courts are well suited to evaluate the claim scope of patents, “an analysis whose intermingling of fact and law is well served by the procedures and the adjudicatory skill of the district courts.” Judge Randall R. Rader cited the aforementioned Markman passage and said that deference must be accorded to the factual components of the lower court’s claim construction. Judges Arthur J. Gajarsa, Richard Linn and Timothy B. Dyk were of the view that the Amgen case was not the right vehicle for revisiting Cybor, but stated that reconsideration may be appropriate in another case in the future. Judge Haldane Robert Mayer, previously one of Cybor‘s critics, declined to voice a dissent in Amgen. Senior Judge S. Jay Plager and Judge William Curtis Bryson, who wrote concurring opinions in Cybor, did not write or join in any opinion in Amgen, and therefore did not favor en banc review of the Cybor rule. As law student Dana Miller wrote on the Web site of the New York State Science and Technology Law Center of Syracuse University, “the general sentiment persists that . . . [the identity of the] justices [who] hear the case presented will determine how the patent is construed. Some justices want to read the claims holistically, throwing all the available information including the patent information, expert testimony, and extrinsic information like dictionary and customary definitions on the table to see which gels best, while others choose to take a more procedural approach, relying predominantly on intrinsic materials, primarily the patent prosecution history, patent file wrapping and other text included in the issued patent. Because the [Federal Circuit] has rendered decisions that have varied between these extremes, there is no standard test or theory routinely applied by the courts.” http://nys-stlc.syr.edu/News/ news.aspx?st=52. In a 2004 law review comment citing Moore’s Harvard Journal of Law and Technology article, William H. Burgess, a student at the University of Pennsylvania Law School wrote that “[w]hile Cybor made a seemingly simple rule, the comment argues that it has had complicated consequences-internal inconsistency in the Federal Circuit’s case law on claim construction, mixed messages to district courts, and seepage of the inconsistency into other areas of the patent law, such as indefiniteness. The reason for these unintended consequences, the comment argues, is that certain issues underlying claim construction are immutably issues of fact, and the Federal Circuit has tried to force them to behave as issues of law to make the Cybor rule work. Cybor is inconsistent with the Supreme Court’s decision in Markman.” Burgess suggested two possible solutions, both of which involve limiting the holding of Cybor. William H. Burgess, Comment, “Simplicity at the Cost of Clarity: Appellate Review of Claim Construction and the Failed Promise of Cybor,” 153 U. Pa. L. Rev. 763 (December 2004). In the recent Amgen decision on the petition for rehearing en banc, Moore dissented because she believed the Federal Circuit should have taken Amgen en banc to reconsider its Cybor rule that claim construction is purely a matter of law and therefore subject to de novo review. In Moore’s view, “the district court construed the term ‘a therapeutically effective amount’ with the assistance of a technical advisor [a professor from MIT, Moore's undergraduate and master's alma mater] and a Special Master. The district court opinion explains that the term was construed using the patent claims, the specification, the prosecution history, three different dictionaries, and prior art. The opinion also explains that the claim construction is supported by the expert testimony presented by the parties in this case, but then disavows using it to ‘define the term’ or ‘construe the term,’ instead stating that it is being used to ‘understand the technology.’ ” 469 F.3d at 1046. Moore commended the district court for its thorough, detailed, thoughtful and competent efforts in construing this claim limitation: “The district court did everything we have asked it to do, and in my opinion, did it correctly. While this may not be a basis for taking the case en banc, reconsideration of the deference accorded to the district court in this case would have been. Therefore, I would grant en banc review.” Id. In a footnote, Moore said that the district court pointed out that “Federal Circuit precedent has created a ‘conundrum’ by: ‘discouraging resort to extrinsic evidence while at the same time urging courts to begin claim construction by considering the plain and customary meaning of a term as understood by one skilled in the art.’ ” Id., citing Amgen Inc. v. Hoechst Marion Roussel Inc., 339 F. Supp. 2d 202, 226 n.23. Newest Federal Circuit Judge Kimberly Moore, a scholar who has practical experience outside of the ivory tower, is bound to have a major influence on the direction of the court’s jurisprudence in the area of patent law and standards of review of lower court decisions. Those skilled in the art of reading the Federal Circuit tea leaves are betting on Moore voting to change the Cybor rule at the first possible opportunity, based on her clearly articulated inclination. The majority of Federal Circuit judges have articulated similar inclinations.

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