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Dictionaries, it turns out, aren’t the best source for defining the terms in a patent. After years of three-judge panels issuing conflicting opinions, the Federal Circuit U.S. Court of Appeals ruled en banc Tuesday that courts should look to the language in the patent itself rather than turn first to dictionaries to determine the meaning of patent claims. “The main problem with elevating the dictionary to such prominence is that it focuses the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent,” Judge William Bryson wrote for the 10-to-2 panel. Judge Haldane Mayer wrote a scalding dissent, joined by Judge Pauline Newman. The court decided to address the contentious issue of dictionary use in Phillips v. AWH, 03-1269. A year ago it put out a call for amicus curiae briefs, and more than 40 poured in, with most opposing the use of dictionaries in defining the scope of a patent. The Federal Circuit embraced dictionary definitions in a 2002 decision, Texas Digital Systems v. Telegenix, 308 F.3d 1193. Since then the court has been split: Some panels have ruled that dictionary definitions should be the first source for construing the meaning of a word in a patent claim while others have relied on both the written description of the invention (the specification) and the back-and-forth dialogue between the patent applicant and the U.S. Patent and Trademark Office hammering out the scope of the patent. But on Tuesday the Federal Circuit found fault with the Texas Digital decision. “Although the concern expressed by the court in Texas Digital was valid, the methodology it adopted placed too much reliance on extrinsic sources such as dictionaries, treatises and encyclopedias and too little on intrinsic sources, in particular the specification and prosecution history,” Bryson wrote. Many patent lawyers were jubilant. “I think it’s a great decision,” said Stanford law professor Mark Lemley, who filed an amicus brief on behalf of Intel Corp. and other companies. “They recognized that you can’t divorce the meaning of terms from their context.” Other lawyers say the Federal Circuit has realigned itself with the U.S. Supreme Court’s 1996 ruling in Markman v. Westview Instruments, 517 U.S. 370, which directed courts to look first at intrinsic evidence in determining the scope of a claim and then turn to extrinsic evidence. “ Texas Digital had turned Markman on its head, and the court today set it back upright,” said Theodore Herhold, a partner at Townsend and Townsend and Crew who filed an amicus brief for Visa U.S.A. Inc. and others. “We’re going back to the old way of doing things,” said William Atkins, a partner in Pillsbury Winthrop Shaw Pittman’s McLean, Va., office. “It brings a bit of predictability back” to the equation. Some members of the patent bar were disappointed with the ruling, however. “Every individual patent case is going to have its own ad hoc approach to claim construction,” said R. Polk Wagner, an assistant professor at the University of Pennsylvania Law School, who filed an amicus brief in favor of dictionary use on behalf of himself and another law professor. “Virtually no patent case will be final until a panel of the Federal Circuit determines what the meaning of the terms are.” The fiercest opposition to the court’s decision, however, came from Judge Mayer in his dissent. “Now more than ever I am convinced of the futility, indeed the absurdity, of this court’s persistence in adhering to the falsehood that claim construction is a matter of law devoid of any factual component,” he wrote. The Federal Circuit, he said, has substituted the black box of the jury “with the black hole of this court,” issuing rulings that “resemble reality, if at all, only by chance.” In its request for amicus briefs the court had posed a series of questions, most notably whether the Federal Circuit should accord any deference to the trial courts in their rulings on claim construction. While the en banc panel did not address the issue, Mayer did so in his dissent, upbraiding his colleagues for failing to defer to the trial court. “While this court treats the district court as an intake clerk, whose only role is to collect, shuffle and collate evidence, the reality, as revealed by conventional practice, is far different,” Mayer wrote. “We simply must follow the example of every other appellate court, which, regarding the vast majority of factual questions, reviews the trial court for clear error.” While most of the 38-page opinion focused on the question of dictionary usage, the court also addressed the specifics of the case. Inventor Edward Phillips claimed that AWH infringed his patent on steel-shell panels resistant to vandalism. The case centered on the meaning of the term “baffles.” The en banc panel concluded that the district court and a panel of the Federal Circuit had too narrowly interpreted the term in finding AWH did not infringe the patent and remanded the case back to the district court to address the infringement claims. Judge Alan Lourie, joined by Newman, dissented from this portion of the ruling, saying he supported the original panel’s finding of noninfringement.

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