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Judges should toss aside their dictionaries when reviewing patent cases, the U.S. Patent and Trademark Office has told the Federal Circuit U.S. Court of Appeals. In an amicus curiae brief filed in September in a closely watched case that could affect how patents are interpreted, the PTO says the court instead should analyze terminology within the context of the patent application itself. “The increased reliance on dictionary definitions as a foundation for claim meaning has generated inconsistent and unpredictable results,” James Toupin, the patent office’s general counsel, wrote in the court brief. “In some instances, beginning with a dictionary definition has resulted in a broadening of claims” while in other instances it has resulted in a narrower definition. The Federal Circuit’s differing views on how to define patent claims have been a source of contention within the patent bar and among patent holders. The court announced in July that it was addressing the issue in an en banc hearing in the case of Phillips v. AWH, 03-1269. In doing so, the court specifically asked the PTO to weigh in on the issue. The agency’s brief was joined by the U.S. Department of Justice and the Federal Trade Commission. The Federal Circuit has received at least 20 amicus briefs in the case, according to a spokesman. While it’s unclear where all the parties stand on the dictionary divide, many corporations have sided with the PTO while other groups have staked out a more nuanced stand. The American Bar Association supports a middle ground, arguing that both the patent and the dictionary should be considered in construing a patent claim term. The International Trade Commission Trial Lawyers Association believes that referring to the patent itself is the best course, but that dictionaries sometimes have to be consulted to clarify language in the patent. The American Intellectual Property Law Association is also open to the use of dictionary definitions. But it also feels that the court should recognize that a particular dictionary definition might not reflect the ordinary meaning in the relevant art or the ordinary meaning at the relevant time. A group of patent-rich companies, including Microsoft Corp., Intel Corp., IBM Corp., Google Inc. and Micron Technology Inc., has adopted its own unified position in support of the PTO stance, which it articulated in a brief authored by Mark Lemley, of counsel at San Francisco’s Keker & Van Nest. “Because there is no standard dictionary used to define terms, parties construing patents can pick and choose among hundreds of dictionaries containing thousands of definitions of any given word,” wrote Lemley. He cited a study that found the Federal Circuit has used 24 different English language dictionaries in the past nine years. “By selecting the broadest definition — or in some circumstances all of the definitions — from this multitude, patentees can expand inventions of incremental value into patents of staggering breadth,” he said. Historically, courts have looked at a patent’s written description and the negotiations between the patent applicant and examiner at the PTO — the so-called prosecution history, during which the scope of the patent is clarified — to decide the meaning of specific claims. Over the past few years, however, the Federal Circuit has issued conflicting opinions — in some cases saying that dictionary definitions should be the primary source for construing the meaning of a word and in other cases relying on the specifications in the patent. “There’s no way to predict which dictionary the court will use and therefore what patent claims will mean,” says Lemley. “You have to look to the context of the invention.” The PTO, in its brief, says patent examiners and prosecutors “rarely, if ever, explicitly rely on dictionary definitions to understand or define” the terms in a patent. By relying on dictionaries, the Federal Circuit “subordinates the patentee’s own explanation of his invention in favor of a dictionary definition never at issue during the patent prosecution before the U.S. PTO.” Brenda Sandburg is a senior writer at The Recorder, where she covers developments in patent law and other intellectual property matters.

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