ABA Section of Intellectual Property | Complex Patent Suits: The Use of Special Masters for Claim Construction

When a complex patent infringement case arises, it can be in the client’s or the court’s best interest to bring in an expert on patent law and technology—as a special master—to assist the judge. Special masters can provide value to all parties in complex patent litigation by contributing in the area of most complexity and importance: claim construction. Even though claim construction is reviewed de novo on appeal by the Federal Circuit, a recent study commissioned by the Federal Judicial Center has shown that claim constructions in complex patent cases stand up better on appeal when a special master was involved in the process.

The use of a special master in patent litigation is now an established practice. Since the founding of our government, U.S. courts have had an inherent authority to appoint special masters. Federal courts, where patent cases are exclusively held, enjoy statutory authority, under Federal Rule of Civil Procedure 53, to appoint a special master—though the question of whether recent changes to Rule 53 supersede a court’s inherent authority to appoint a special master is debated. Rule 53 empowers a judge to appoint a special master (1) upon consent of the parties; (2) to hold a trial proceeding and make or recommend factual findings on issues to be decided without a jury under “some exceptional conditions”; or (3) to address pretrial and post-trial matters that an available judge or magistrate judge could not effectively and timely address. However, courts prefer to assign a special master only when the parties agree, particularly because the parties may bear and share the special master’s cost.

Who are the special masters, and what experience and education do they have? Some persons serve as special masters occasionally and others serve more regularly. The recent study commissioned by the Federal Judicial Center suggested that nearly all individuals serving as special masters were attorneys possessing strong technical and legal training who often had previously served as law clerks to judges on the Federal Circuit. Special masters also possess substantial professional experience, having, on average, spent about years after law school in a variety of highly enriching legal contexts relating to patent and technology, and many have advanced degrees in law.30 Special masters, as a result, can add great value to a complex patent infringement case.

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