By Audrey Millemann

Federal Circuit Court of Appeals issued its long-awaited decision in the patent
infringement case,

Phillips v. AWH
2005 WL 1620331 (Fed. Cir. July 12, 2005)
The en banc opinion is significant both for what it did hold and what it
did not.

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

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

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)
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

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

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

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

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.”