On February 8, 2005, the U.S. Court of Appeals for the Federal Circuit sitting en banc heard oral arguments in Phillips v. AWH Corporation, Case No. 03-1269, -1286. On July 21, 2004, the Court granted Phillips’ petition for rehearing en banc to resolve certain issues concerning the construction of patent claims and the use of dictionaries in interpreting claim terms.
In agreeing to rehear the case en banc, the Federal Circuit asked the parties to brief several issues, 1 including whether dictionaries or the specification should be the primary source for claim construction, or whether both should be used, and if so, in what order. The Court also asked the parties to address whether a claim should be narrowly construed for the sole purpose of avoiding invalidity, what the role of prosecution history and expert testimony should be in claim construction, and what, if any, level of deference should be given to the district court’s claim construction rulings. See Phillips v. AWH Corp., 376 F.3d 1382, 1383 (Fed. Cir. 2004).
The Federal Circuit’s Prior Panel Decisions on Claim Construction
The Federal Circuit was established in 1982, and was given exclusive jurisdiction over patent cases. See 28 U.S.C § 1295(a)(1). One of the directives of the Federal Circuit is to develop patent doctrine in ways that promote clarity, coherence and consistency in the field of patent law. See U.S. Court of Appeals for the Federal Circuit – A History: 1990-2002 at 11-12.
The question of claim construction is typically dispositive of litigation involving patents. Thus, the choice of a methodological approach to construing claim terms will directly affect the litigation results. The panel decisions of the Federal Circuit, however, are inconsistent and vary on their methodological approach to construing claim terms. For example, one such approach by the Court is to use dictionaries as a primary reference for construing a claim term. Another approach is to rely primarily on the patentee’s own specification. Currently, patent infringement litigation is often unpredictable because of these inconsistent panel decisions and approaches.
Patent prosecutors and litigators alike await the Court’s resolution of the issues presented in Phillips, with the hope that the Court will clarify the inconsistent panel decisions and provide clear guidance on the proper approach to construing patent claims.
Phillips sued AWH Corporation for patent infringement. The district court granted AWH’s motion for summary judgment of non-infringement concluding that because the claim contained means-plus-function language, it was subject to construction under 35 USC §112, 6, and thus limited by the specification. The district court, relying only on the embodiment disclosed in the specification, construed the term “baffle” to mean a baffle that extends inwardly at an angle other than ninety degrees (90°).
On appeal, Phillips argued that the term “baffle” is not in means-plus-function format. The Federal Circuit panel, also relying on the specification, agreed with Phillips that “baffle” was not subject to construction under 35 USC §112, 6. The Court found that the term “baffle” is a sufficient recitation of structure that carries its ordinary meaning. The Court, however, agreed with the district court that the term “baffles” as used within the wall panels must be oriented at angles other than 90°, and affirmed the district court’s finding of non-infringement. Phillips petitioned for panel rehearing and rehearing en banc.
Summary of Oral Arguments
In its en banc brief, Phillips argued that dictionaries should be used as a primary reference for understanding the ordinary meaning of a claim term. During oral arguments in the en banc proceeding, however, Phillips suggested that its current position is that the specification should be consulted first and then the claims are read to gauge whether the claims are broader than the disclosure. Thereafter, a general purpose dictionary should be consulted for ordinary terms and a technical dictionary or treatise should be consulted for terms of art. Phillips indicated that the claims should not be narrowed unless there is a clear disavowal of claim scope or explicit language in the specification that narrows the claims. Phillips also argued that the specification does not limit the claims to baffles that have an orientation other than 90°. In response to the Court’s question on whether any deference should be given to the district court’s claim construction rulings, Phillips argued that deference should be given to the district court’s findings of fact, such as the nature of one of ordinary skill in the art, which dictionary should be consulted and the credibility of expert witnesses.
AWH argued before the Court that the specification should be the primary source for claim construction. AWH suggested that if the specification implies that a claim element is narrow, then it should be so narrowed. The Court asked AWH, “how does a judge decide if there is an implicit narrowing?” AWH suggested that if a claim element is essential to the invention, but is not explicitly described in the specification, then the scope of the claim element should be narrowed or limited to what is disclosed in the specification. AWH also argued that “it is wrong to allow claims to be granted that are broader than what is taught to the public.” In response to the Court’s question on whether any deference should be given to the district court’s claim construction rulings, AWH argued that deference should be given only to the district court’s findings of pure fact.
The U.S. Patent and Trademark Office (USPTO), consistent with its en banc amicus brief, took the position that dictionaries should not be a primary reference for claim construction, in part because they are not used by examiners during prosecution. The USPTO did not articulate a clear position in response to the Court’s question on whether any deference should be given to the district court’s claim construction rulings.
The Federal Circuit decision to rehear Phillips en banc may lead to clarification of the various inconsistent panel decisions in the area of claim construction and provide clear guidance on the proper approach to construing patent claims.
1 More specifically, the Federal Circuit will resolve the following issues:
- 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?
- 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?
- 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?
- 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?
- 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?
- 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?
- 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?