Phillips v. AWH Corp. and the Use of Dictionary Definitions in U.S. Claim Construction

Phillips v. AWH Corp. and theUse of Dictionary Definitions in U.S. Claim Construction

American Intellectual Property Law Assn.

IP Practice in Japan Committee

David Schnapf

Sheppard Mullin Richter & Hampton LLP

Darryl Webster

Wyeth

Claim ConstructionDictionary Definitions

Claims define what is covered by a U.S. Patent.

Claim construction in U.S. is very literal.– Other countries (e.g., Germany look to “essence” of

invention).

Claim construction is used in U.S. to determine what the terms in a patent claim literally mean.

Claim Construction Dictionary Definitions

General rule:

The terms used in a claim are given their ordinary and accustomed meaning from the perspective of somebody of ordinary skill in the art at the time of the invention – unless there is a reason to use a different meaning.


Reasons NOT to use the ordinary meaning:– Claim term is defined in the patent– Ordinary meaning has been disclaimed in

the patent or during prosecution– Section 112, paragraph 6 applies


Tools for Claim ConstructionIntrinsic Evidence – – The patent specification, claims and “file wrapper”

Extrinsic Evidence – Everything else – technical publications, expert

testimony, etc.

Dictionaries – Extrinsic evidence or not???


RULE: Cannot use extrinsic evidence if intrinsic

evidence is sufficient to ascertain meaning of

claim term. Thus, extrinsic evidence can only

be used when the claim language remains

ambiguous, after considering the intrinsic

evidence.


RULES FOR USE OF INTRINSIC EVIDENCE: OK to construe claim terms in light of

specification and file history. NOT OK to “import” limitations from

specification and file history. There is a fine line between these two rules!


Dictionaries

– Early cases said dictionaries are a form of “extrinsic

evidence.”

– Texas Digital Systems Inc. v. Telegenix, says that

dictionaries are NOT extrinsic evidence.

– Status is critical to determining when to consult with

dictionaries.


Texas Digital Systems v Telegenix (Fed.Cir. Oct. 2002)

“…dictionaries, encyclopedias and treatises, publicly available at the time the patent is issued, are objective resources that serve as reliable sources of information on established meanings…”


Texas Digital Systems v. Telegenix, (con’t)

“Such references are unbiased reflections of common understanding, not influenced by expert testimony or other events after the grant of the patent. These materials may be the most meaningful information sources.


Abbott Labs. v. Syntron Bioresearch (Fed. Cir. July

2003)

1st step is to decide the ordinary meaning

Looked to Webster’s dictionary.

Federal Circuit decisions citing dictionaries

1995 = 3

1996 = 14

1997 = 14

1998 = 9

1999 = 10

2000 = 23

2001 = 28

2002 = 32

2003 = 42

2004 = 34 (~ 6 mos.)

Federal Circuit decisions citing dictionaries

Use of Dictionaries

0

10

20

30

40

50

60

70

80

1995

1996

1997

1998

1999

2000

2001

2002

2003

2004

(pro

j.)

Number ofDecisions


Problems after Texas Digital: Inconsistent case law regarding status and use

of dictionaries. Battle of the dictionaries. Loss of focus on Intrinsic Evidence. Technical v. Non-technical dictionaries.

Phillips v. AWF Corporation


Phillips’ Claim 1 (U.S. Patent 4,677,798)

Building modules…for construction of fire, sound and impact

resistant security barriers…, comprising …, an outer shell of

substantially parallelepiped shaped with two outer steel plate

panel sections…, sealant means spacing the two panel sections

from steel to steel contact…, and further means … comprising

internal steel baffles…



Now pending for en banc review by Federal

Circuit.

In July order granting en banc review, “Amicus

Briefs” solicited on “7” questions.



1. Is the public notice function of patent claims better

served by referencing primarily to technical and

general purpose dictionaries and similar sources to

interpret a claim term or by looking primarily to the

patentee’s use of the term in the specification? If

both sources are to be consulted, in what order?



2. If dictionaries should serve as the primary source for claim interpretation, should the specification limit the full scope of claim language (as defined by the dictionaries) only when the patentee has acted as his own lexicographer or when the specification reflects a clear disclaimer of claim scope? If so, what language in the specification will satisfy those conditions? What use should be made of general as opposed to technical dictionaries? How does the concept of ordinary meaning apply if there are multiple dictionary definitions of the same term? If the dictionary provides multiple potentially applicable definitions for a term, is it appropriate to look to the specification to determine what definition or definitions should apply?



3. If the primary source for claim construction should be the specification, what use should be made of dictionaries? Should the range of the ordinary meaning of claim language be limited to the scope of the invention disclosed in the specification, for example, when only a single embodiment is disclosed and no other indications of breadth are disclosed?



4. Instead of viewing the claim construction methodologies in the majority and dissent of the now-vacated panel decision as alternative, conflicting approaches, should the two approaches be treated as complementary methodologies such that there is a dual restriction on claim scope, and a patentee must satisfy both limiting methodologies in order to establish the claim coverage it seeks?



5. When, if ever, should claim language be narrowly construed for the sole purpose of avoiding invalidity under, e.g., 35 U.S.C. §§ 102, 103 and 112?



6. What role should prosecution history and expert testimony by one of ordinary skill in the art play in determining the meaning of the disputed claim terms?



7. Consistent with the Supreme Court’s decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and our en banc decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998), is it appropriate for this court to accord any deference to any aspect of trial court claim construction rulings? If so, on what aspects, in what circumstances, and to what extent?


Phillips v. AWH Corporation

The AIPLA Amicus Brief:

– The balanced approach: “…strike a balance

between fair coverage for patentee’s language and

adequate notice to the public of its limits.”


The AIPLA Amicus Brief:– Intrinsic evidence should remain the primary source

for claim construction.

– OK to look to dictionaries for ordinary and

accustomed meaning of the terms consistent with

intrinsic evidence as would have been understood

by someone of ordinary skill in the art.


The AIPLA Amicus Brief:– May be necessary to consult multiple sources

iteratively to ascertain meaning by synthesizing

information.

– Since fact finding may be involved, deference to the

District Court will sometimes be appropriate.


The USPTO Amicus Brief:– Texas Digital has created conflict and confusion

– Emphasizes return to primacy of intrinsic evidence as understood by those skilled in the art

– Patent Examiners rarely refer to dictionary definitions, but do rely on specification to understand the invention.

– Fed. Cir. should defer more to District Courts.


The IPO Amicus Brief:– Intrinsic evidence should be primary source of claim

construction

– Dictionaries should be considered extrinsic evidence and should not be given any extra weight.

– Battle of the dictionaries problem

– Defer to District Court only when “fact finding” is involved.


Amicus Brief Consensus:

1. Emphasis on intrinsic evidence

2. Use dictionaries with caution

3. Split views on deference to district courts

4. Important to establish clear rules for lower courts to follow


Future Problems? Renewed emphasis on “ordinary skill in the

art” may create intense factual disputes over how to define such a person and how to prove his or her understanding.

Problems when patent using terminology which is not normally used in the art – often problem with translated applications.


AcknowledgmentThe statistics on the Federal Circuit Use of Dictionaries are

sourced from the working paper “The Proven Key: Roles & Rules

for Dictionaries at the Patent Office and the Courts” by Joseph

Scott Miller and James Hilsenteger. The paper is available at

http://www.patentlyobviousblog.com/2004/08/which dictionar.html


THANK YOU!

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Phillips v. AWH Corp. and the Use of Dictionary Definitions in U.S. Claim Construction