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Had Shakespeare been a patent attorney, he would have tried to recite every attribute of the sweet smelling rose. Was it mildew resistant? Native to a particular region? A specific color? After all, in patent litigation what’s in a name is everything. Which is why patent lawyers are shaking their heads over the U.S. Court of Appeals for the Federal Circuit’s shifting views on how best to define the words — or claims — that describe the scope of a patent. The question is whether non-technical dictionaries like Webster’s should be used to define words like “card,” “bottom” and “normal,” or whether their meanings should be culled from technical resources and the patent itself. “It’s a big deal to patent holders, patent portfolio owners and the patent bar,” said William Atkins, a partner in Pillsbury Winthrop’s McLean, Va., office. “By inserting a dictionary definition into a claims analysis you are strengthening and broadening a patent.” The court’s interpretation of a word can be worth hundreds of millions of dollars. Palm Inc. is battling a patent infringement suit brought by E-Pass Technologies Inc. that seeks royalties from sales of the company’s Palm handheld devices, which topped $1 billion in 2002. The case put before the Federal Circuit hinges on the definition of the word “card.” While the district court concluded that the term as used in E-Pass Technologies’ patent means a card the size of a standard credit card, the Federal Circuit said the ordinary meaning of the term should apply: a flat, rectangular piece of stiff material. Historically courts have looked at the patent’s written description and the negotiations between the patent applicant and the examiner at the U.S. Patent and Trademark Office — the so-called prosecution history during which the scope of the patent is clarified — to decide the meaning of specific claims. But the Federal Circuit shook things up two years ago, ruling in Texas Digital Systems Inc. v. Telegenix Inc., 308 F.3d 1193, that dictionary definitions should be the first source for construing the meaning of a claim. In the last few months, however, the court seems to have had second thoughts. In a series of rulings, it’s indicated that lawyers should have more than a dictionary in hand when figuring out claim terms. “The court kind of backed off on Texas Digital,” said Raphael Lupo, a partner in the Washington, D.C., office of McDermott, Will & Emery. He said they’ve tried to harmonize it with a 1996 decision, Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, where the Federal Circuit laid out a list of tools that courts should use to evaluate claim constructions. “They are still applying Texas Digital but they’ve tried to embrace Vitronics to soften it,” Lupo said. Under Vitronics, the specifications in the patent were considered the most important tool, with dictionaries further down the list. McDermott partner Paul Devinsky said Federal Circuit Judges Paul Michel and Richard Linn have suggested two different approaches. “In Judge Linn’s view, you go to the dictionary first, and only if the specification is inconsistent with the dictionary need it be considered,” Devinsky said. “In Judge Michel’s view, the specification has to be consulted in every claim construction.” In November the Federal Circuit ruled in Combined Systems Inc. v. Defense Technology Corporation of America and Federal Laboratories Inc., 03-1251, that a district court was correct not to rely exclusively on a dictionary definition. Michel, the author of the opinion, also reiterated that a patent specification should not be consulted “solely for the limited purpose of determining whether it contradicts the dictionary meaning of a claim term.” But a month later the court concluded in Ferguson Beauregard Logic Controls v. Mega Systems LLC, 02-1380, that the district court had erred by relying on the patent specification rather than dictionary definitions of the words “normal” and “predetermined.” Linn authored that opinion. So far the Supreme Court has refused to review cases questioning the use of dictionary definitions. But at least one cert petition asks the court to address the modification of the dictionary definition in the negotiations between the patent applicant and examiner. In Bombardier Inc. v. Simmons Inc., 03-946, a patent battle between two snowmobile ski manufacturers revolves around the definition of the term “bottom.” Bombardier, which is represented by Pillsbury’s Atkins, contends that in negotiations with the patent office Simmons claimed its snowmobile ski — which had a partially flat bottom — differed from an existing snowmobile ski with a concave bottom. Bombardier contended that Simmons could not now claim its patent covers concave snowmobile skis. A district court agreed, ruling that Bombardier did not infringe Simmons’ snowmobile ski. But the Federal Circuit concluded that the term “bottom” in Simmons’ patent covered Bombardier’s product. The court overturned a non-infringement finding, Atkins wrote in the cert petition filed last month, because of a claim construction “based solely on an unmodified dictionary definition of a single word.” Atkins said dictionary definitions broaden the scope of a patent. As a result, patent battles focus on whether a patent is valid rather than whether it is infringed. Proving a patent is invalid is tougher, he said, since the standard of proof is “clear and convincing” evidence rather than the “preponderance of evidence” standard required in proving infringement. Lawyers have differing views about the use of dictionary definitions, depending on whom they represent. “I’d say people who represent plaintiffs probably like it from the view of 40,000 feet because it will result in broader claim construction and a likelihood of literal infringement,” Devinsky said. “And those who represent defendants probably don’t like it for the mirror reason.” But it’s unclear if the Federal Circuit will continue to emphasize dictionaries as a tool to interpret patents. In the past, the court has rolled out new rules and then flip-flopped. Lynn Pasahow, a partner at Fenwick & West, said the Federal Circuit ruled in the 1990s that the use of expert testimony is “rarely if ever proper” in determining the meaning of a claim but later dropped this mandate. “My view is the court has to stop making these grand pronouncements and tell the district court judges there are tools they can use and trust they will get it right,” Pasahow said.

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