By Edward Reines and Nathan Greenblatt

Weil, Gotshal and Manges, LLP, Silicon Valley Office

The House version of the Patent Reform Act of 2009 includes a provision allowing interlocutory appeals of claim construction orders. As drafted, the provision gives the authority for approval for such an appeal to the district courts, without giving the Federal Circuit discretion to decline the appeal. This approach is misguided. Failure to give the court of appeals discretion in the interlocutory appeals process flouts cautions inherent in the final judgment rule since its enactment in 1789, ignores the different institutional concerns of district and appellate courts, and will create problems of piecemeal appeals, undue delay and crowded dockets that will impair the effectiveness of the Federal Circuit and contravene the purpose for enacting the provision in the first place.

Recognizing these problems, the Senate version of the bill was amended in Committee to include various procedural limitations meant to limit ill-founded appeals. However, as illuminated by the Supreme Court's recent decision in Mohawk Industries, Inc. v. Carpenter, the procedural limitations were largely ineffectual and invited the same problems that led Congress twenty years ago to adopt a different process as "the preferred means for determining whether and when prejudgment orders should be immediately appealable." The Senate ultimately scrapped the interlocutory appeals provision entirely for its patent reform bill, released on March 4, 2010.

The perceived problem of excess reversals of claim construction rulings that has motivated the current provision is a function, if anything, of the de novo review standard applicable to claim construction, not the final judgment rule.

In the end, we conclude that, instead of pursing a flawed solution to a false problem, the House should follow the Senate in scrapping the proposed interlocutory appeals provision and stick with the time-tested interlocutory appeals provision applicable to civil cases generally, set forth at 28 U.S.C Section 1292(b).

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