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Patent lawyers are cheering a decision by the U.S. Court of Appeals for the Federal Circuit to take up a question central to every patent case: whether courts should look primarily to the dictionary to define the terms that describe the scope of an invention. The court on Wednesday issued an order saying it would address the issue en banc and invited parties, particularly the U.S. Patent and Trademark Office, to submit amicus curiae briefs. “I’m ecstatic,” said William Atkins, a partner in Pillsbury Winthrop’s McLean, Va., office. “What the Federal Circuit will tinker with is at the heart of the U.S. patent litigation system. One small modification, and it affects virtually all U.S. patents.” “All district judges and practitioners have been tearing their hair out” over how to read a patent claim, said Michael Barclay, a partner at Wilson Sonsini Goodrich & Rosati. “The problem is that three-judge panel cases have been all over the map. There have been no consistent guidelines.” Sometimes courts rely on dictionary definitions, sometimes the language in the patent itself. Barclay said district judges are reversed on claim construction 50 percent of the time, “so they might as well flip a coin.” Historically, courts have looked at the 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. But in the past few years, the Federal Circuit has issued conflicting opinions, in some cases saying that dictionary definitions should be the first source for construing the meaning of a word and in other cases relying on the specifications in the patent. The court on Wednesday agreed to address the issue in an en banc hearing of Phillips v. AWH, 03-1269. That case hinges on the meaning of the term “baffle” in inventor Edward Phillips’ patent on vandalism-resistant modular wall panels. A three-judge panel agreed with a lower court in April that Phillips’ patent was limited to baffles positioned at a certain angle, and therefore his patent had not been infringed. In agreeing to rehear the case, the court put forth a series of questions for those submitting amicus briefs. In addition to asking whether it would be better to use dictionaries or the patent language itself as a primary resource, the court inquired whether the two methodologies might be combined. It also asked what role the prosecution history and expert testimony should play in determining the meaning of the terms and whether the court should defer to any aspect of a trial court’s rulings on claim construction. M. Patricia Thayer, a partner at Heller Ehrman White & McAuliffe, said the latter question is very significant. “I’d love it if the federal district courts got together” to write an amicus brief on the issue, Thayer said. “It’s difficult for them that [they are accorded] no deference. I wouldn’t be surprised if that gets changed in the process.” Chief Judge Haldane Robert Mayer dissented from the decision to take up the issue of claim construction en banc. “Nearly a decade of confusion has resulted from the fiction that claim construction is a matter of law, when it is obvious that it depends on underlying factual determinations which, like all factual questions if disputed, are the province of the trial court, reviewable on appeal for clear error,” Mayer wrote. “I am convinced that shuffling our current precedent merely continues a charade.” IP professor Mark Lemley, of Stanford Law School, agreed that claim construction is very fact-specific, depending on what an inventor thought, the views of those skilled in the particular art and what happens during patent prosecution. But, he said, “it’s about time” the court came out with clear ground rules. “People shouldn’t expect miracles,” he added. “I’d be a little surprised if the Federal Circuit just chose one common rule of claim construction. I expect they’ll say all the evidence is relevant and that we have to put it in the right context and order.”

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