claim construction before and after phillips v awh corp n.
Skip this Video
Loading SlideShow in 5 Seconds..
Claim Construction Before and After Phillips v. AWH Corp. PowerPoint Presentation
Download Presentation
Claim Construction Before and After Phillips v. AWH Corp.

Loading in 2 Seconds...

play fullscreen
1 / 26

Claim Construction Before and After Phillips v. AWH Corp. - PowerPoint PPT Presentation

  • Uploaded on

Claim Construction Before and After Phillips v. AWH Corp. Michael Pearson Nov. 29, 2005 Adv. Patent Law – Prof. Morris. § 112 ¶ 1 The specification shall contain a written description of the invention and of the manner and process of making and using it,

I am the owner, or an agent authorized to act on behalf of the owner, of the copyrighted work described.
Download Presentation

Claim Construction Before and After Phillips v. AWH Corp.

An Image/Link below is provided (as is) to download presentation

Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author.While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server.

- - - - - - - - - - - - - - - - - - - - - - - - - - E N D - - - - - - - - - - - - - - - - - - - - - - - - - -
Presentation Transcript
claim construction before and after phillips v awh corp

Claim Construction Before and After Phillips v. AWH Corp.

Michael Pearson

Nov. 29, 2005

Adv. Patent Law – Prof. Morris

§ 112 ¶ 1

The specification

shall contain

a written description

of the invention and

of the manner and process of making and using it,

in such full, clear, concise, and exact terms as to enable any person skilled in the art

to which it pertains, or

with which it is most nearly connected,

to make and use the same …

§ 112 ¶ 2

The specification shall conclude with one or more claims

-particularly pointing out and

-distinctly claiming

the subject matter which the applicant regards as his invention.

markman v westview instruments
Federal Circuit

52 F.3d 967, 979 (Apr 5, 1995)

(en banc) (MarkmanI)

(Archer, C.J.)

“ We … hold that … the court has the power and obligation to construe as a matter of law the meaning of language used in the patent claim.”

Mayer conc in judg (are underlying facts)

Rader conc in judg (off topic)

Newman dissenting (off topic)

Supreme Court

517 U.S. 370, 371 (Apr 23, 1996) (MarkmanII) (Souter, J.)

“We hold that the construction of a patent, including terms of art within its claim, is exclusively within the province of the court.”

Unanimous opinion

Markmanv. Westview Instruments
cybor v fas techs fed cir 1998 en banc
Cybor v. FAS Techs. (Fed Cir. 1998) (en banc)
  • Archer for Court
    • Don’t worry if is question of fact or law, just determine what claims mean
    • Apply de novo review
  • Bryson concurs
    • Question of law, but don’t ignore what trial court has done
  • Mayer, C.J., conc in judg (joined by Newman)
    • Construction is mongrel practice, give deference on factual findings
  • Rader dissent re: claim const., conc in judg
    • Notes almost 40% of claim interpretations reversed from Markman I to Cybor decision
    • de novo review harms predictability
  • Assigns proper weight to each type of evidence
    • Claim terms
    • Specification – defining terms
      • Explicitly, or
      • By implication
    • Prosecution History
    • Extrinsic Evidence
  • Footnote 6
    • Dictionaries and Technical Treatises valuable
    • Can be used by judge at any time
    • Mentioned in footnote in section explaining that extrinsic evidence is not to be used if intrinsic evidence gives clear meaning
implied definition
Implied Definition
  • Classic Case is Bell Atlantic v. Covad Comm., 262 F.3d 1258 (Fed. Cir. 2002) (Lourie, Plager, Gajarsa)
  • Bell is PO, wants “plurality of different modes” construed to include different rates of transfer
  • Court refuses to construe that way
    • Title separates rates and modes
    • Summary of Invention differentiates rate and mode
    • Ordinary meaning of mode may permit such construction, but in this patent can not due to implied definition of mode that does not include rate
texas digital
Texas Digital
  • (Michel, Schall, Linn)
  • Problem with starting with the specification – limits the claim terms to the preferred embodiment
  • Need to start with the claim terms
    • This is not radical – Vitronics said same thing
    • The radical shift comes if the terms are not self-defining
  • Use dictionaries and treatises to define claim terms
    • Cite Vitronics FN 6 for authority
    • Unbiased info sources
  • Give full ordinary meaning of terms
    • If are multiple definitions of term, entitled to all of them not disclaimed in specification
texas digital1
Texas Digital

Common Complaints

  • Yields overbroad claims (MAP 13:49-57)
  • Adds unpredictability – turns into war of dictionaries (Shui)
    • Would electing a dictionary in prosecution solve this? (MAP 7:65-69) (Cleary)
phillips certified questions
Phillips Certified Questions
  • 1-4 are all Dictionary v. Intrinsic Record
    • Which better serves the Public Notice function?
    • When (and how) does the specification limit the breadth of the claim terms?
    • If primarily rely on spec, what role do dictionaries have?
    • Should these be viewed as complementary methodologies?
amicus briefs
Amicus Briefs
  • 36 briefs in all
  • Diverse authors
    • firms on behalf of clients
    • national and local bar assn’s
  • Closest to en banc opinion – Bar Assn. of District of Columbia (Author: Susan M. Dadio of Burns Doane in Alexandria, VA)
    • Spec first
    • Do not limit to preferred embodiment
    • Do not answer Cybor at this time
      • Would be advisory – result was same in panel and District Court
class on briefs
Class on Briefs
  • Hawkins liked ITCTLA (Kipel) brief
  • Everyone else (on 1st comments) …

Lemley Wagner

phillips theory
Phillips – Theory
  • Court claims to reapply Vitronics and Markman I – restate proper weight of evidence
    • Claim terms
    • Specification
    • Prosecution History
  • “Properly viewed, the ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire patent.” (MAP 13:36-38)
phillips repudiate texas digital
Phillips – Repudiate Texas Digital
  • The Dictionary Presumption systematically yields overbroad claims
    • Q – Does it? If so, why doesn’t the Court cite any example of an overbroad claim from that method? (MAP 13:49-57)
  • Acknowledges “primary” concern of limiting claim scope to preferred embodiments
  • N.B. – Judge Linn (author of Texas Digital) joins without comment
phillips application claim differentiation
Phillips ApplicationClaim Differentiation
  • Need not be at angles
    • Some dependent claims say baffles at angles
    • Some independent claims just say baffles
    • Interpret claims so that each word has meaning
    • Therefore must not be required that all baffles are at angles
phillips application limiting to preferred embodiment
Phillips ApplicationLimiting to Preferred Embodiment
  • Not limited to disclosure of baffles at angles
    • Spec must teach all embodiments
    • Teaching of angled baffles describes dependent claims claiming angled baffles
  • Lourie dissents on point – all disclosure of baffles is at angles
    • Point is to deflect – need to be angled to deflect
    • Implied definition

Is this more than patentee

deserves then? (Murshak)

phillips application interpret to preserve validity
Phillips ApplicationInterpret to Preserve Validity
  • Very narrow, rarely used doctrine
  • Only to be used if no conclusive answer after “applying all the available tools of claim construction,” term is still ambiguous
    • Thus not one of the available tools
    • If used, must be last in analysis
phillips unanswered questions
Phillips – Unanswered Questions
  • When can dictionaries be used?
    • To help understand definitions of “commonly understood words” (MAP 13:103-109) – what’s the point?
  • Was Texas Digital all about preventing restriction to the preferred embodiment?
  • Why did Linn and Dyk join without comment?
phillips in 30 years class opinions
Phillips in 30 years – Class Opinions
  • Passé (Heller)
  • Still debated (Kolb)
  • Redefined (Ko)
  • “Goes without Saying” (Olin)
  • Safe to say the Class does not see this as Earth-shattering
deference phillips question 7
Deference – Phillips Question 7
  • Court certifies question of whether should revisit de novo review of Cybor
  • Accepts briefing on issue
    • Many argue Court should not answer – would be advisory opinion on these facts
    • Majority of briefs encouraging court to answer seek deference on factual findings underlying claim construction
  • Declines to address issue in opinion
    • Mayer vigorously dissents
appellate deference on facts
Appellate Deference on Facts
  • FRCP 52(a) – “… Findings of fact, whether based on oral or documentary evidence, shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of the witnesses….”
phillips is mayer right
Phillips – Is Mayer right?
  • Ko (and Heller?) say yes – methods of claim construction don’t matter unless there is deference
  • Five current judges have expressed need for some deference
    • Mayer
    • Newman (joined Mayer)
    • Rader (Cybor dissent)
    • Lourie (Phillips dissent in part – lean towards affirmance unless clear error)
    • Bryson (Cybor concurrence – de novo, but don’t throw out what trial court has done)
phillips petition for certiorari
Phillips – Petition for Certiorari
  • AWH filed brief Nov. 9
    • available at
  • Question sought for cert – “Whether the Federal Circuit is correct in holding that all aspects of a district court’s patent claim construction may be reviewed de novo on appeal.”
  • Reply brief not yet filed
chances of certiorari
Chances of Certiorari?
  • Pros
    • Issue now certified before en banc Federal Circuit three times in ten years (Markman I, Cybor, Phillips)
    • Have SCOTUS precedent on “mongrel issues” (Graham v. John Deere, Markman II)
    • Deals with Federal Circuit’s authority (Vornado)
  • Then again, it is a patent case
    • And they’ve already taken one this term…
  • Phillips may not be over, but this (last) presentation is