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Dictionaries aren’t the best source for defining the terms in a patent. Courts should look to the language in the patent itself rather than turn first to dictionaries to determine the meaning of patent claims, an en banc U.S. Court of Appeals for the Federal Circuit has ruled. Phillips v. AWH, No. 03-1269. “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 10-2 majority. The Federal Circuit had 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 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. Now the Federal Circuit found fault with the Texas Digitaldecision. “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. Judge Haldane Robert Mayer was fierce 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 majority opinion focused on the question of dictionary usage, the court also addressed the specifics of the case. Inventor Edward Phillips claimed that AWH had 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 interpreted the term too narrowly in finding that AWH did not infringe the patent, and remanded the case back to the district court to address the infringement claims.

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