IP Law Blog

#160

By Audrey Millemann

The Federal Circuit Court of Appeals issued its long-awaited decision in the patent infringement case, Phillips v. AWH Corporation, 2005 WL 1620331 (Fed. Cir. July 12, 2005).#160 The en banc opinion is significant both for what it did hold and what it did not.

The court held that patent claims are to be interpreted in accordance with the specification, and that dictionaries should not be used in the first instance.#160 After requesting briefs on the broader question of whether a district court's claim construction decision should be given any deference, and receiving over 30 amicus briefs, the court declined to reach that issue.#160

The case involves a patent for modular steel panels that can be used to form walls.#160 The inventor, Phillips, sued AWH Corporation after AWH continued to sell the patented product after a license arrangement had ended.#160 The district court granted the defendant's motion for summary judgment of non-infringement based on its construction of the term "baffle".#160 A panel of the Federal Circuit affirmed the district court's decision.#160 The court then granted Phillips' petition for re-hearing en banc and reversed the grant of summary judgment.#160

The key issue before the court was whether the patent's specification should be the primary source for claim construction or whether extrinsic evidence (e.g., dictionaries) should control.#160 The court emphatically answered the question:#160 the specification is the first and best source for interpreting claim terms.#160 The court clarified its earlier decision in Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002).#160 The Texas Digital court had interpreted the claims using ordinary dictionary definitions rather than the specification, and had suggested that there is a presumption in favor of dictionary definitions such that the patentee would have to overcome that presumption in order to rely on the specification.#160 In Phillips, the court explained that the Texas Digital court had meant well in that it had intended to prevent "one of the cardinal sins of patent law - reading a limitation from the written description into the claims", but that it had gone too far.#160 (Phillips at *12.)#160

In describing the problem with using dictionary definitions, the court stated:#160 "The main problem with elevating the dictionary to such prominence is that it focuses the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent.#160 Properly viewed, the 'ordinary meaning' of a claim term is its meaning to the ordinary artisan after reading the entire patent".#160 (Id. at *14.)#160 The court noted that the result of interpreting claims using dictionary definitions would be erroneously broad claims.#160 The court did not preclude the use of dictionaries, however, and noted that dictionaries and treatises are valuable aids for judges.#160

The court acknowledged the concern of the Texas Digital court.#160 "[W]e recognize that the distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim can be a difficult one to apply in practice."#160 (Id. at *15.)#160 The court solved this problem with a generalization that most inventors do not intend to limit their claim terms to the exact embodiments described in the specification.#160 As to those cases that cannot be solved by this general rule, the court concluded that it had "not attempt[ed] to provide a rigid algorithm for claim construction, but simply attempted to explain why, in general, certain types of evidence are more valuable than others".#160 (Id. at *16.)#160 #160

In a throw-away paragraph at the end of the opinion, the majority states that although it considered the larger question of whether the Federal Circuit should defer to the trial court's claim construction rulings, it had "decided not to address that issue at this time."#160 (Id. at *20.)#160 Thus, claim construction remains a question of law, rather than fact.#160

The two-judge dissent is absolutely scathing and certainly entertaining. #160"Now more than ever I am convinced of the futility, indeed the absurdity, of this court's persistence in adhering to the falsehood that claim construction is a matter of law devoid of any factual component.#160 Because any attempt to fashion a coherent standard under this regime is pointless, as illustrated by our many failed attempts to do so, I dissent."#160 (Id. at *22.)#160 #160

The dissent severely chastises the majority:#160 "Again today we vainly attempt to establish standards by which this court will interpret claims.#160 But after proposing no fewer than seven questions, receiving more than 30 amici curiae briefs, and whipping the bar into a frenzy of expectation, we say nothing new, but merely restate what has become the practice over the last ten years - that we will decide cases according to whatever mode or method results in the outcome we desire, or at least allows us a seemingly plausible way out of the case."#160 The dissent ends with:#160 "The court's opinion today is akin to rearranging the deck chairs on the Titanic - the orchestra is playing as if nothing is amiss, but the ship is still heading for Davey Jones' locker."