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

1. 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

2. 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.

3. 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.

4. Claim Construction Dictionary Definitions • 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

5. Claim ConstructionDictionary Definitions • Tools for Claim Construction Intrinsic Evidence – • The patent specification, claims and “file wrapper” Extrinsic Evidence • Everything else – technical publications, expert testimony, etc. Dictionaries • Extrinsic evidence or not???

6. Claim Construction Dictionary Definitions 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.

7. Claim Construction Dictionary Definitions 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!

8. Claim ConstructionDictionary Definitions • 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.

9. Claim ConstructionDictionary Definitions 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…”

10. Claim ConstructionDictionary Definitions 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.

11. Claim ConstructionDictionary Definitions Abbott Labs. v. Syntron Bioresearch(Fed. Cir. July 2003) • 1st step is to decide the ordinary meaning • Looked to Webster’s dictionary.

12. 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

13. Federal Circuit decisions citing dictionaries

14. Claim ConstructionDictionary Definitions 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.

15. Phillips v. AWF Corporation

16. Claim ConstructionDictionary Definitions Phillips’ Claim 1 (U.S. Patent 4,677,798) Building modules…for construction of fire, sound and impactresistant 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…

17. Claim ConstructionDictionary Definitions Phillips v. AWF Corporation • Now pending for en banc review by Federal Circuit. • In July order granting en banc review, “Amicus Briefs” solicited on “7” questions.

18. Claim ConstructionDictionary Definitions Phillips v. AWF Corporation • 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?

19. Claim ConstructionDictionary Definitions Phillips v. AWF Corporation 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?

20. Claim ConstructionDictionary Definitions Phillips v. AWF Corporation 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?

21. Claim ConstructionDictionary Definitions Phillips v. AWF Corporation 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?

22. Claim ConstructionDictionary Definitions Phillips v. AWF Corporation 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?

23. Claim ConstructionDictionary Definitions Phillips v. AWF Corporation 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?

24. Claim ConstructionDictionary Definitions Phillips v. AWF Corporation 7. Consistent with the Supreme Court’s decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and our enbanc 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?

25. Claim ConstructionDictionary Definitions 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.”

26. Claim ConstructionDictionary Definitions 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 evidenceas would have been understood by someone of ordinary skill in the art.

27. Claim ConstructionDictionary Definitions 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.

28. Claim ConstructionDictionary Definitions 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.

29. Claim ConstructionDictionary Definitions 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.

30. Claim ConstructionDictionary Definitions Amicus Brief Consensus: • Emphasis on intrinsic evidence • Use dictionaries with caution • Split views on deference to district courts • Important to establish clear rules for lower courts to follow

31. Claim ConstructionDictionary Definitions 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.

32. Claim ConstructionDictionary Definitions Acknowledgment The 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

33. Claim ConstructionDictionary Definitions THANK YOU!