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Interpreting a patent seems simple enough � in theory. But opposing parties have often spent millions of dollars fighting over the meaning of specific terms in patent claims. And conflicting court decisions, practitioners say, have done nothing but spur and encourage the disputes. Now in Phillips v. AWH Corp., the U.S. Court of Appeals for the Federal Circuit is poised to end the confusion and decide the best way to interpret a patent’s terms. The decision has the potential not only to provide clarity for lawyers and their clients, but also to save clients money and enhance predictability in the patent system. “This is the battleground on which patent litigation is fought and won,” says William Rooklidge, president-elect of the American Intellectual Property Law Association (AIPLA) and a partner at Howrey Simon Arnold & White. Indeed, Phillips may be the most significant case to tackle the issue of interpreting patent claims since the U.S. Supreme Court’s 1996 ruling in Markman v. Westview Instruments, which held that judges, not juries, should determine the meaning of patent claims. Susan McHale-McGahan, a senior attorney with the AT&T Corp., says that millions of dollars are at stake. The terms of a patent can determine whether a company’s product infringes another’s, McHale-McGahan says, adding that a definitive ruling by the court could decrease litigation costs, including the need for expert testimony. In an unusual move late last month, the Federal Circuit vacated its April 8 decision in Phillips and decided to rehear the case with all 12 judges in attendance. In addition, the court invited the patent bar to respond to seven questions, all relating to the best way to interpret a patent’s claims, or what the bar calls claim construction. The court asked in its July 21 order if dictionaries should be the primary source for defining terms in patents or whether practitioners should look first to the patent holder’s use of the terms in the patent specification approved by the U.S. Patent and Trademark Office. The court also asked the PTO to respond to its questions. Most everyone agrees that the court’s decision to reconsider the state of claim construction is a welcome relief. “Cases [will] tend to get resolved a lot earlier in the process,” cutting down on costs, says AIPLA’s Rooklidge. Bar and trade associations and the PTO are expected to respond in droves to the court’s invitation to file amicus briefs. Most groups say they have not yet committed to a particular position on the issue. “I think every organization that considers itself viable in the patent bar will file an amicus brief,” says Matthew Moore, a partner at Howrey Simon Arnold & White. Steptoe & Johnson partner Charles Schill, president of the Federal Circuit Bar Association, says, “It’s 100 percent likely” that the bar will file a brief. The Intellectual Property Owners Association continues to deliberate on the issues. The American Bar Association’s Intellectual Property Section has not decided whether it will file a brief, says Vinson & Elkins partner William LaFuze, the section’s chair-elect. SPLIT DECISIONS The inconsistency in judicial decisions on claim construction at the Federal Circuit is what draws the patent bar’s ire. Different panels of the Federal Circuit have split on how to approach the issue. One line of cases says that courts should rely primarily on dictionaries to define the terms of a patent unless the written description in the patent changes the “ordinary meaning” of the terms. Another line of cases takes the opposite approach and says the terms of a patent should be primarily defined by the inventor’s written description and claims. The contradictions in the Federal Circuit’s decisions “makes it difficult to provide your client clear guidance in terms of what their patent claims actually mean,” says Scott Doyle, a partner in the Tysons Corner, Va., office of Morrison & Foerster. Doyle agrees that litigating patent claims can be frustrating, given the current state of law. Winning at the District Court is no guarantee of ultimate success, Doyle says, “because there’s a chance you’d lose at the Federal Circuit.” Some observers blame the inconsistent case law for the high rates of reversal by the Federal Circuit of trial court decisions. In recent years, lawyers, including Mark Banner, a patent lawyer at Banner & Witcoff in Chicago, and academics have studied the Federal Circuit’s reversal rate of district court decisions. Banner concluded that about 40 percent of claim construction cases are reversed by the Federal Circuit. Kimberly Moore, a professor at George Mason University School of Law, says that her statistics show a 30 percent reversal rate. In Phillips, the battle centers around one term in the patent owned by plaintiff Edward Phillips: baffle. Phillips sued the AWH Corp., Hopeman Brothers, and the Lofton Corp. for infringing a patent that covers a vandalism-resistant wall panel used to build prison walls. Within the panels are a series of steel barriers, or baffles. The parties are fighting over the specific parameters of the word baffle because that could determine whether the defendants’ product infringes Phillips’ product. The defendants’ lawyer, Mark Fischer, a partner at Faegre & Benson in Boulder, Colo., says he hopes the en banc panel will find � as did a district judge and a Federal Circuit panel � that his clients did not infringe. But those courts reached their decisions in different ways. The District Court in Colorado focused on the patent’s specifications, while the Federal Circuit panel relied on the “ordinary meaning” of baffle as defined in Webster’s dictionary before it reviewed the specifications. Both Fischer and his adversary in the case, Phillips’ lawyer, Carl Manthei, have received calls from people across the country offering assistance in the case. “Obviously, there’s a great deal of responsibility on the litigants here,” Manthei says. While they are intent on keeping their clients’ interests as their primary goal, both lawyers realize the larger implications of the suit and their roles in it. “We’ve been asked to think about global, more policy, issues,” says Fischer. “We welcome the opportunity to do that.”

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