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The case was scheduled for oral argument at 10 a.m. before the U.S. Court of Appeals for the Federal Circuit. By the time the gates opened at 7:30 on Feb. 8, the line already stretched to about 60 people, down the steps of the D.C. courthouse to the sidewalk, then taking a sharp turn for another 50 yards toward Pennsylvania Avenue. When the gates opened, the people crowded into elevators to ride to the fourth floor, where those who arrived early enough would get green tickets (sitting) or blue tickets (standing) for admission to the courtroom. One elevator refused to take off, causing mild panic among its occupants, until they herded into another and reached the fourth floor still in time to get the coveted green tickets. The crowd consisted mostly of patent attorneys, plus a fairly large contingent of law students from George Washington University. At least one patent owner attended, eager to see whether his recent win in another case would survive the en bancdecision in Phillips v. AWH Corp.Reportedly, about 200 persons didn’t get into the courtroom, but were allowed to listen to an audio feed of the oral argument on the second floor. The issue that has generated such intense interest, ever since the Federal Circuit’s decision to rehear the matter en bancwas announced back in July 2004, sounds quite prosaic: whether the primary tool for interpreting terms in the claims of a patent should be dictionaries or the intrinsic evidence (i.e., the description of the invention in the patent specification and the prosecution history). But because the dictionary approach would most often result in broader claims than the intrinsic evidence approach, the court’s decision could determine who wins the tens of millions (and sometimes hundreds of millions) of dollars ultimately at stake in many patent infringement cases. AN ARMCHAIR BY ANY OTHER NAME How would the difference in approach play out in practice? Suppose that a patent for an armchair has a claim that reads: “A seating apparatus comprising four legs; a seat; a back; and two arms.” The patent-holder and a rival company dispute what “arms” means. A dictionary might have three definitions: (1) a human upper limb; (2) a weapon; or (3) a slender part of a structure projecting out of the main part. A court following the dictionary approach would probably consult the drawings and text of the patent, and select the third definition as the most appropriate. A court following the intrinsic evidence approach would first consult the patent specification to determine what “arms” means. If drawings in the patent show a conventional armchair in which the arms extend from the back of the chair, the court might construe “arms” as “a pair of supporting limbs attached to and extending outwardly from either side of the back of the chair.” Although both interpretations would probably cover the majority of armchairs, the latter would not, for example, cover a chair in which the arms were attached to the seat and extended upward. Thus a competitor could readily design around this invention, lessening the scope of protection offered by the patent and significantly reducing the potential royalties. The bottom line: If the dictionary approach is established as the best way to construe patent terms, the value of a large patent portfolio will probably be significantly greater than if the intrinsic evidence approach is adopted. The Federal Circuit has received plenty of advice on how to solve this dilemma. In addition to the Patent and Trademark Office brief requested by the court, numerous amicus briefs were filed by groups as diverse as the American Bar Association; patent attorney organizations (from Boston, New York, the District of Columbia, Houston, Los Angeles, San Diego, Conejo Valley, etc.); universities (including Wisconsin, Florida, Washington, and California, as well as Yale and Rensselaer Polytechnic Institute); corporations (Novartis, Medrad, Infineon, Intel, IBM, Google, Microsoft, and Visa); and individual patent lawyers and law professors. And, surprisingly, the majority of the amicus briefs favor putting the primary focus on the specification, and using dictionaries as only a secondary resource. Even large patent owners such as IBM and Intel favor this approach, which suggests that they are more concerned about predictability (especially when they have to defend against infringement suits) than about enlarging the scope of their own intellectual property. It may be that the greatest beneficiaries of a broad approach to claim construction would be small companies and individual patent owners, who believe they need the broader protection to maximize the value of their patents, and who are generally less concerned about the threat of infringement suits. A GOOD ARGUMENT Edward Phillips, the plaintiff in this case, holds a patent on a fire-, sound-, and impact-resistant security barrier constructed in modules. A key feature of the invention is the use of steel baffles extending inwardly from the module walls. The claim construction issue is whether a “baffle” must form an angle other than 90 degrees to the wall. Can a structure at 90 degrees also fall within the meaning of “baffle”? Because the AWH Corp. builds modules with only 90-degree structures, it argued that its modules do not have baffles. The U.S. District Court agreed with AWH, granting summary judgment of noninfringement. Attorney Carl Manthei of Boulder, Colo., pleaded Phillips’ case with conviction, arguing that the plain meaning of the term covers 90-degree structures. He was questioned most sharply by Judge Alan Lourie, the author of the vacated panel opinion. Lourie relied upon the fact that the patent description only identifies (by numbering them in the drawings) certain types of structures as “baffles,” and all these structures are shown at angles other than 90 degrees. Therefore, according to Lourie, structures mounted at 90 degrees cannot be “baffles,” as that term is used. Manthei countered by pointing to Figure 7 as showing baffles at 90 degrees, even though they were not specifically numbered. Thus, he argued that because the broader construction of the term is actually described in the drawings, his client should win no matter which way the court rules on the overarching issue of whether dictionaries have primacy in claim construction. Turning to the main issue, Manthei posited three types of terms: (1) ordinary terms that are not terms of art, for which general-purpose dictionaries should be used; (2) terms of art, which should be construed using technical dictionaries and treatises; and (3) . . . Before he could describe the third category, Judge Richard Linn cut him off with a question that practically answered itself: Should the ordinary and customary meaning of a term designate the scope of claim coverage, or should the meaning discerned from the description of the invention prevail? Given this softball, Manthei had no trouble responding that the claims, not the embodiments described in the specification, must determine the scope of coverage. Only if there is a clear disavowal of the scope of a term should the scope of coverage be narrowed by the specification. Judge Timothy Dyk then asked whether there is a problem if the claims are broader in scope than the written description. Manthei said no, the job of the written description is simply to set forth the best mode of practicing the invention and to provide an enabling description of how to make and use the invention. Later on, Judge William Bryson posed what may have been the pivotal question of the hearing: Given that Manthei acknowledged that the written description could narrow the meaning of a claim term by disavowing a broad meaning, did that disavowal have to be explicit? Or could there be an implicit narrowing? Manthei said that allowing “implicit narrowing” might lead to all kinds of different interpretations. But he backed off a bit at the end of his rebuttal time, under sharp questioning by Chief Judge Paul Michel, who asked him whether he was advocating that the court overrule its 2001 precedent in Bell Atlantic Network Services v. Covad Communications Group(a case in which the Federal Circuit held that the use of a term throughout the patent specification in a manner consistent with a single meaning may define that term by implication). Eventually, Manthei admitted that implicit narrowing could occur, but maintained that it must be “pretty darn clear.” Overall, Manthei’s argument seemed very effective. He showed how his client could win even under the narrower intrinsic evidence approach, and he shifted the argument from whether the specification supported the broader meaning to whether the patentee disavowed the broader meaning. ESSENTIAL DEFENSE The defendant’s attorney, Mark Fischer of the Boulder, Colo., office of Faegre & Benson, clearly came prepared to answer all seven questions propounded in the court’s rehearing order, but was almost immediately interrupted by Judge Michel, who asked him to respond to Manthei’s arguments. Fischer quickly answered by arguing his main theme � that the specification must be the primary source for claim construction because the specification must be examined to ascertain what the invention is, and the claims must not be construed to cover something not within the scope of the invention. The discussion then turned to whether claim terms must be construed according to the purpose of a particular structure as explained in the written specification. The specification here described the baffles as having four purposes, including the deflection of bullets. The question was whether a structure that met the ordinary dictionary definition of “baffle,” but did not actually deflect bullets, could nevertheless be a baffle. Fischer’s answer was no, a structure with no substantial part at an angle other than 90 degrees to the wall could not be a baffle because it could not deflect bullets as required by the specification. But this argument was apparently vitiated by Judge Raymond Clevenger III, who pointed out that even a “baffle” mounted at 90 degrees could deflect bullets if they were fired at an angle to the wall. Following up later, Clevenger contended that Fischer had given up his case even under the narrower approach to claim construction because he admitted that Figure 7 shows a right-angle baffle, and a right-angle baffle can deflect bullets. Judge Clevenger also asked Fischer to respond to Judge Michel’s question � whether the meaning of claim terms could be narrowed implicitly by the description in the specification. Fischer argued that the Federal Circuit’s jurisprudence has always made clear that implicit narrowing can occur � for example, if the element being construed is described in the specification as essential to the nature of the invention. Clevenger then said that might be using the purpose of the invention as the touchstone for claim construction. Fischer disagreed. Here the specification states that the invention advances the art by providing bullet resistance, he said, and that property is essential to the invention. Structures that do not deflect bullets cannot be baffles, because then the invention would be missing an element described as essential to its nature. Toward the end of his argument, Judge Pauline Newman gently noted that claims are a part of the specification, and asked Fischer whether if the claims as originally drafted included the disputed term, then is there disclosure of the broader invention in the specification. Fischer said that it is wrong as a matter of policy to allow claims to be broader than the actual invention: The claims must arise out of the specification and be related to the specification in defining the limits of the patent’s exclusionary rights. GOVERNMENT WITHOUT DICTIONARIES John Whealan, solicitor for the PTO, argued on behalf of the Justice Department and the Federal Trade Commission as well as the PTO. Judge Randall Rader posed for him the following conundrum: Since the PTO uses the broadest reasonable interpretation of the claim terms during examination, does the meaning of the claims change once the patent issues? Whealan first deflected the question � the question here is what’s to be done after the patent issues � but then pointed out that the PTO would reject ambiguous claims. Judge Dyk asked Whealan for the basis for the statement in the government’s brief that examiners do not use dictionaries. Whealan’s answer was simple: It’s just the result of a factual inquiry. You don’t see examiners relying on dictionaries. You see them relying on the specification, because the statute and the regulations require the claims and the written description to be one integrated whole. At the end, Whealan explained that he would not argue against a trial judge using dictionaries in construing claims. It does not matter what the judge reads first, he said, as long as the judge starts the analysis itself with the specification and the prosecution history. Judge Rader then asked what kind of deference should be given to the trial judge. Whealan said that, right now, the meaning of every word in a claim is a question of law. However, citing the 1991 Supreme Court case of Salve Regina College v. Russell, he pointed out that even when an issue is purely a question of law, the appeals court does not start from scratch: It will likely start with the trial court’s decision. DIFFERENT JUDGES, DIFFERENT GOALS At the end of the oral argument, it did not seem as if the Federal Circuit’s judges were all on the same page. Judge Lourie’s point seemed clear: Claims should be limited to the embodiments set forth in the specification. Judge Michel appeared to be mainly concerned with establishing a precedent consistent with the court’s prior rulings. He also identified what is likely to be the next tough question: To what extent may the meaning of claim terms be implicitly narrowed by the specification? Is the meaning narrowed only when there is a clear disavowal of the broader meaning? Judges Clevenger and Dyk worked hardest at trying to answer the narrow question here � whether baffles can or cannot be set at a 90-degree angle to the wall. And most observers believed that Manthei succeeded in getting the answer he wanted to that question. Judges Rader and H. Robert Mayer appeared most concerned about an issue that has troubled trial judges ever since the Supreme Court decided in Markman v. Westview Instruments Inc.(1996) that interpreting patent claims is purely a matter of law, and therefore the responsibility of trial judges. Unfortunately, this ruling also meant that the appellate courts would review their claim interpretations de novo, without any deference. Without deference, their claim interpretations are easily reversed, i.e., they write on water (as Chief U.S. District Judge Sue Robinson of Delaware observed during one trial). Judge Linn seemed content to advocate the position he first set forth in Texas Digital Systems Inc. v. Telegenix Inc.(2002) � that dictionaries should be the primary source for determining the meaning of claim terms. Although it may be foolhardy to try to predict what the court will decide (as of this writing, the decision is still pending), it’s always fun to speculate, whether it’s the World Series, the Super Bowl, or the Federal Circuit. One guess is that the court will decide that the plain meaning of claim terms should apply, unless there is an express or very clear implicit narrowing of the meaning of a term in the specification or the prosecution history. However, there seemed to be no particular consensus as to how best to divine that plain meaning. Given the broad range of questions, the 12 judges may well find it difficult to agree on a specific algorithm for trial courts to follow in construing claim terms. Instead, the Federal Circuit will likely rule that, while judges should read the specification and the prosecution history, and study the appropriate dictionaries, they may do so in any order and use all the tools available to them. Trial judges must do what seems reasonable under the particular circumstances of the specific case. That said, the Federal Circuit will probably reverse the District Court’s claim construction rulings in this case and remand for further proceedings. And although Judges Rader and Mayer were very interested in finding a rationale for increasing the level of deference given the trial courts, no one seemed to propose a way for doing so, short of bringing the issue to the Supreme Court. Aslan Baghdadi ( [email protected]) is a partner in the McLean, Va., office of Pillsbury Winthrop Shaw Pittman, focusing on intellectual property litigation and patent prosecution.

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