Thursday, February 10, 2011

Mike Schuster: Claim Construction and Technical Training

Are judges with a technical background better at construing patent claims? Practitioner W. Michael Schuster (@Patent_Nerd on Twitter) addresses this question in his working paper, Claim Construction and Technical Training: An Empirical Study of the Reversal Rates of Technically Trained Judges in Patent Claim Construction Cases. He claims to show that technically trained district judges are no less likely to be reversed by the Federal Circuit on claim construction than judges without a technical background.

"Technical background" was defined as having an undergraduate degree in science or engineering, and Schuster surveyed judges and searched with the Westlaw Profiler feature to make a database in which 28 out of 617 judges had a technical background. He found 19 patent claim decisions by 8 of these technically trained judges and compared the reversal rate in these cases with the overall claim reversal rates in David Schwartz's Practice Makes Perfect? An Empirical Study of Claim Construction Reversal Rates in Patent Cases (which found that judges with more experience in claim construction were also no less likely to be reversed). Though obviously limited by the small sample size, this is still an interesting result. But as Schuster notes, it is hard to know what to conclude; for example, technical training might only help for patents in that specific area of technology, or claim construction might just be "inherently indeterminate."

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