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Washington�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., nos. 03-1269, 03-1286, 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,” said William Rooklidge, president-elect of the American Intellectual Property Law Association (AIPLA) and a partner at Washington’s Howrey Simon Arnold & White. Indeed, Phillipsmay 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.
Seven key questions for the patent bar
The U.S. Court of Appeals for the Federal Circuit has permitted interested parties, including the U.S. Patent and Trademark Office, to file amicus curiae briefs in Phillips v. AWH Corp. answering these seven 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 the Federal Circuit’s 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?

Susan McHale-McGahan, a senior attorney with AT&T Corp., said that millions of dollars are at stake. The terms of a patent can determine whether a company’s product infringes another’s, McHale-McGahan said, 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 Phillipsand 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. Almost 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, said 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,” said Matthew Moore, a partner at Howrey Simon. Charles Schill, a partner at Washington’s Steptoe & Johnson and president of the Federal Circuit Bar Association, said, “It’s 100% likely” that the bar will file a brief. The Intellectual Property Owners Association continues to deliberate on the issues. The American Bar Association’s Section of Intellectual Property has not decided whether it will file a brief, said 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,” said Scott Doyle, a partner in the Tysons Corner, Va., office of San Francisco’s 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 said, “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% of claim construction cases are reversed by the Federal Circuit. Kimberly Moore, a professor at George Mason University School of Law, said that her statistics show a 30% 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 in the Boulder, Colo., office of Minneapolis’ Faegre & Benson, said he hopes the en banc panel will find�as did a district judge and a Federal Circuit panel�that his clients did not infringe. Decision methodology differs 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, also of Boulder, 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 said. 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,” said Fischer. “We welcome the opportunity to do that.”

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