Paul M. Janicke (University of Houston Law Center) has posted On the Causes of Unpredictability of Federal Circuit Decisions In Patent Cases (Northwestern Journal of Technology and Intellectual Property, Vol. 3, p. 93, 2006) on SSRN. Here is the abstract:
This paper posits four main causes of unpredictability in the Federal Circuit’s patent jurisprudence. First among these is the generality of terms in the U.S. patent statute, leaving most of the fleshing out to be done by judges on a case-by-case basis. Another is the presence in the statute of numerous mental states affecting patentability, affirmative defenses, and remedies. These presence or absence of these mental states is inherently difficult to determine long after the fact in many cases. Another injector of unpredictability revolves around the numerous difficulties encountered by the court in attempting (fruitlessly) to formulate easy rules of general applicability for determining patent claim scope. Basically an exercise in characterizing a technological family in words, the effort is never going to be easy at the margins.