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Under Markman v. Westview, the U.S. Supreme Court held that claim construction for United States utility patents is a mater of law requiring de novo review of district court decisions by the U.S. Court of Appeals for the Federal Circuit. After struggling for over eight years with specific issues arising from the Markman case and spawning extensive jurisprudence of often-conflicting decisions among the Federal Circuit panels, the Federal Circuit in its July 21 order, Phillips v. AWH Corp., requested briefing on seven questions relating to the construction of patent claims. On these issues stands or falls a patent owner’s claim against a putative infringer during litigation. The Federal Circuit will re-hear the Phillips case en banc to provide judges, patent practitioners and patentees long-awaited insight into this oft-confusing practice. Claim construction is a world having much peril if improperly navigated. Practitioners turn to the Federal Circuit to act as their guide through the murky waters. In a series of recent decisions, the Federal Circuit has engineered a general methodology for the construction of patent claims. The terms of a claim are first accorded their ordinary and customary meaning. So what is ordinary and what is customary? Well, the Federal Circuit has looked to dictionaries (technical and otherwise) to define claim terms. What about when a term has multiple dictionary definitions? Then, the patent specification and prosecution history are reviewed to determine if the patentee has provided a special definition for the term being construed. In a case where there are multiple definitions of a term and the specification does not provide clarification, extrinsic evidence, such as outside technical references and expert testimony, can be used to assist the judge to construe the terms of claim by providing factual information, not legal opinion. Although seemingly straightforward, the application of this methodology can be confusing and can cause significant consternation. A survey of recent Federal Circuit decisions indicates an inconsistency in the application of this claim construction methodology. Sometimes the Federal Circuit has accorded more weight to dictionary definitions than the patent specification and vice versa. Additionally, some decisions have relied on expert opinion as part of the analysis, while others avoid the review of extrinsic evidence like the plague. This inconsistency can be explained by the fact that three-judge panels of different panels decide these cases. Although the panels cannot overturn previous panels’ decisions, any given panel has the flexibility of reaching its own decision (albeit conflicting with a previous decision) based on the facts of the case being decided. One can, however, take solace in the fact that the Federal Circuit is seeking to bring some clarity to the claim construction confusion with the Phillips en banc review. A reconstruction, if you will, of the existing methodology. Specifically, in the Phillips briefing order, the Federal Circuit posits four questions surrounding the use of dictionaries and the specification when construing claims. It is hoped the “which,” “if” and “how” questions surrounding the use of dictionaries and patent specifications will finally be answered with a degree of acceptable clarity. That is, “which” resource — the dictionary or specification — is to be accorded more weight than the other, or should they be both used and if so, how. Which order does one use these references in construing the claims — dictionary first, then specification, or vice versa? If the dictionary definition is used, how does the specification limit the dictionary term, or vice versa? In asking these questions, the Federal Circuit is possibly suggesting that it is considering providing a recipe for claim construction, e.g., one part specification, one part dictionary, mix and set. Alternatively, the Federal Circuit might be reviewing all positions its various panels have taken previously to decide that all evidence is relevant and it is up to the judge and practitioner to put it in the right context and order. Judges and practitioners hope that more certainty regarding the use of dictionaries and specifications will be provided. In addition to the four questions surrounding the use of dictionaries and specifications, the Federal Circuit requested briefing on three issues that were not in dispute during the district court case ( Phillips v. AWH Corp). Specifically, the Federal Circuit is seeking guidance regarding the following questions: When, if ever, should claim language be narrowly construed for the sole purpose of avoiding invalidity under the various sections of the patent statute; What role should prosecution history and expert testimony play in determining the meaning of the disputed claim terms; and, Consistent with the Supreme Court’s decision in Markman v. Westview Instruments Inc., is it appropriate for this court to accord any deference to any aspect of a trial court claim construction rulings? If so, on what aspects, in what circumstances, and to what extent? A possible theory as to why the Federal Circuit would ask for briefing on issues not presented in the lower court case is that since the court is being asked to review specific claim construction issues, it might as well address the area of claim construction on the whole for judicial efficiency. However peculiar, the Federal Circuit is clearly sending the message that it does not want to leave room for future debate. For patent owners, claim construction can be a viable means to avoid a finding of invalidity during infringement litigation. Patentees often walk a fine line of advocating claim construction having a broad enough scope to cover the accused product or process, while ensuring that such claim construction does not open the claim(s) to an invalidity attack (i.e., being anticipated by or obvious in view of prior art). In some cases, the Federal Circuit, often in the face of strong dissents, construed claims narrowly just to avoid a finding of invalidity. In his dissenting opinion in the original (now vacated) Phillips decision, Judge Timothy B. Dyk stated “the ‘axiom’ that claims should be construed to preserve invalidity is not an invitation to narrowly construe unambiguous claim language contrary to its plain meaning.” (See e.g., Libel-Flarsheim Co. v. Medrad Inc.) In asking for briefing on this issue, the Federal Circuit appears to seek consensus on whether the above narrowing claim construction practice or that which follow Dyk’s approach is the correct one. Extrinsic evidence has also been used by the courts to assist them in the construction of claim terms. Extrinsic evidence generally consists of technical references and expert testimony. Although some panels have held that such evidence is only to be used as a last resort, extrinsic evidence is generally accepted and incorporated into the claim construction analysis especially as the factual predicate to the ultimate legal determination in construing claims. It is not unthinkable that the Federal Circuit could do away with the use of extrinsic evidence or severely limit its permissible scope during claim construction. Given the current rate of reversals of the district courts’ claim construction of about 50 percent, it should come as no surprise that judges and practitioners welcome the Federal Circuit’s inquiry into whether a lower court’s claim construction should be accorded deference. Proponents of giving deference to a lower court’s claim construction submit that such practice promotes judicial efficiency as the Federal Circuit would not have to re-construe the claims, in whole or in part. Additionally, by deferring to the lower court’s claim construction, the lower courts could adopt a standard approach of claim construction. Detractors of this practice submit that since claim construction is a question of law and since the Federal Circuit reviews all patent appeals under a de novo standard, the Federal Circuit should start with a blank slate and construe the claims on its own without deference to the lower courts. Judge Haldane Robert Mayer possibly provides insight as to how the Federal Circuit might decide this specific issue. In his dissenting opinion to the Phillips en banc order, Mayer states, “Until the court is willing to reconsider its holdings in Markman v. Westview Instruments Inc., that claim construction is a pure question of law subject to de novo review in this court, any attempt to refine the process is futile.” It is suggested that Mayer believes the Federal Circuit might have overstepped bounds in its own Markman v. Westview, and subsequent Cybor Corp. decisions. Specifically, Mayer may be suggesting that lower courts should be accorded deference and, moreover, should assist the Federal Circuit in providing facts used in claim construction. The Phillips order does not provide any insight regarding how these various questions will be decided. What is certain is that uncertainty reigns supreme in trying to prognosticate how the CAFC will resolve these issues. Judges, practitioners and patentees should ready their hard hats as this construction project is sure to have plenty of falling debris. George J. Awad is an associate in the Philadelphia office of Drinker Biddle & Reath (www.dbr.com) , practicing in the areas of patent procurement, counseling and litigation with a concentration in the computing and electrical arts. George A. Frank is of counsel in the Philadelphia office of Drinker Biddle, concentrating his practice on domestic and international corporate partnering, licensing and joint ventures involving patent law, chemical technologies and biotechnology, as well as related litigation, including patents and products liability. If you are interested in submitting an article to law.com, please click here for our submission guidelines.

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