IP Law Bulletin (Tuesday, July 12, 2005)–In a landmark decision that strikes at the heart of the U.S. patent litigation system, the U.S. Court of Appeals for the Federal Circuit on Tuesday laid down ground rules for determining the scope of an invention as written in the patent’s claims.
In a decision handed down by the full court, with two dissenting opinions, the Federal Circuit said it disagreed with the district courts claim construction in the much-awaited Phillips v. AWH case and reversed the summary judgment of noninfringement.
The case hinged on the meaning of the term “baffle” in inventor Edward Phillips’ patent on vandalism-resistant modular wall panels.
The decision overturned an earlier determination by a three-judge panel of the same court, in which the judges agreed with the lower court that Phillips’ patent was limited to baffles positioned at a certain angle, and that his patent had not been infringed.
Critically, the Federal Circuits decision cracked down on dictionary abuse and affirmed that claims are construed in the first instance with respect to the specification and the prosecution history, intellectual property attorneys said.
Patent claims define the metes and bounds of the patentees property right, much like a deed to a piece of land.
Heavy reliance on the dictionary divorced from the intrinsic evidence risks transforming the meaning of the claim term to the artisan into the meaning of the term in the abstract, out of its particular context, which is the specification, the court wrote in its majority opinion.
There may be a disconnect between the patentees responsibility to describe and claim his invention, and the dictionary editors objective of aggregating all possible definitions for particular words, the court wrote.
The court took pains to note, however, that it did not intend to preclude the appropriate use of dictionaries.
Dictionaries or comparable sources are often useful to assist in understanding the commonly understood meaning of words and have been used both by our court and the Supreme Court in claim interpretation, it said.
In their dissent, Judges Mayer and Newman joined in the majority’s analysis and framework for construing claims but expressed their objection to the rule that claim construction is a matter of law that should be decided de novo.
Observers said they were surprised by how cohesive the Federal Circuit appeared on the contentious issue of claim construction.
Today the Federal Circuit spoke with surprising unanimity on the multiple conflicting approaches to claim construction that has frustrated litigants and judges since the Markman decision a decade ago, said Michael Dzwonczyk, a partner at Sughrue Mion, PLLC.
He said practitioners who have grappled with the proper role of dictionaries, intrinsic evidence, experts, and a litany of conflicting “bedrock” principles of claim construction law would welcome the decision, which reaffirmed the holdings of Markman, Vitronics and Innova/Pure and clarified the role of dictionaries in the claim interpretation process.
Hopefully, panel-dependent outcomes on claim construction issues will become a thing of the past, and a practitioner’s ability to predictably advise clients with reasonable certainty is now a present reality, Dzwonczyk said.
Gary H. Levin, partner and co-chair of the Litigation Department at Woodcock Washburn LLP in Philadelphia, said the decision reaffirmed what practitioners had thought was the law for years.
What this decision does is severely deemphasize the use of dictionaries as the primary or initial claim construction tool. In particular, there had been a line of cases which supported the use of dictionaries and which the Federal Circuit today is saying had been stretched beyond the their original meaning to give dictionaries and unduly prominent place in claim construction, said Levin.
Grantland Drutchas, an attorney with the intellectual property law firm McDonnell Boehnen Hulbert & Berghoff LLP, said the decision provided welcome guidance for claim construction, an area of patent law that had become increasingly confusing.
After years of meandering, trying to determine the relative role, after the Markman v. Westview Instruments case, of intrinsic and extrinsic evidence in determining what the claims of a patent should mean, the CAFC has finally got it right, Drutchas said.
Specifically, after some cases that elevated dictionaries to an even higher level than the specification, the current en banc decision has knocked dictionaries back down a peg or two, to be considered after consulting the intrinsic evidence, Drutchas added.
Bradford Lyerla, an attorney with the intellectual property law firm Marshall Gerstein & Borun in Chicago who authored an amicus brief in the case, said Federal Circuit had rejected a formulaic approach to patent claim construction.
Instead, it reconfirmed its long jurisprudence that the most probative evidence concerning the meaning of a patent claim term will be found in the claim language and the written description of the specification. The overall approach outlined by the court today is to understand the invention as disclosed in the intrinsic record and then to interpret the claim scope to fit the invention as one of ordinary skill would understand it, Lyerla said.
Michael N. Rader, a patent attorney and litigator with Wolf Greenfield, said the decision highlighted the importance of using clear and unambiguous language in patent applications.
Crafting patents that are clearer, stronger and more easily enforced translates into value. The Phillips decision reinforces the importance of teamwork between inventors and patent attorneys. Rader said.
Townsend and Townsend and Crew partner Byron Cooper predicted the case would help clarify a fragmented area of patent law.
Competing claim construction theories regarding whether and when dictionaries or the intrinsic record should be consulted to construe a patents claim term had created confusion among lawyers and district court judges. The ambiguity contributed to a reversal rate of nearly 50% of all district court claim construction rulings, Cooper said.
The Federal Circuit’s clarity in its recent decision provides an objective system or procedure for construing patent claims, and will make it easier for litigators to advise their clients and for district court judges to rule with confidence in these matters, he added.
The Federal Circuit had originally indicated that it was going to reconsider the question of how much deference is owed to a district court’s claim construction, and the underlying bases for that construction. In Tuesdays opinion, however, the court decided not to address that issue and therefore, its previous decisions remain unchanged.
This has disappointed those who are concerned that trial court decisions in patent cases too frequently are overturned because the appeals court construes the patent claims differently, said partner David W. Long with Howrey LLP.
At the Federal Circuit, Carl F. Manthei argued for Edward H. Phillips.
Mark W. Fischer of Faegre & Benson LLP argued for AWH Corp.. With him on the brief were Neal S. Cohen and Peter J. Kinsella. Of counsel on the brief were Maurice M. Klee and Kenneth C. Bass, III of Sterne, Kessler, Goldstein & Fox. Of counsel was Scott E. Holwick of Faegre & Benson LLP.
The case is Edward H. Phillips, v. AWH Corp., Hopeman Brothers, Inc., and Lofton Corp., case no. 03-1269, -1286, U.S. Court of Appeals for the Federal Circuit.
Courtesy of IPLawBulletin.com
Find out more about… Grantland G. Drutchas