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Judges should toss aside their dictionaries when reviewing patent cases, the U.S. Patent and Trademark Office told the U.S. Court of Appeals for the Federal Circuit on Monday. In an amicus curiae brief filed in a closely watched case that could affect how patents are interpreted, the PTO said the court instead should analyze terminology within the context of the patent application itself. “The increased reliance on dictionary definitions as a foundation for claim meaning has generated inconsistent and unpredictable results,” PTO General Counsel James Toupin wrote. “In some instances, beginning with a dictionary definition has resulted in a broadening of claims,” while in other instances it has resulted in a narrower definition. The Federal Circuit’s differing views on how to define patent claims have been a source of contention in the patent bar and among patent holders. The court announced in July that it was addressing the issue in an en banc hearing of Phillips v. AWH, 03-1269, and invited parties to submit amicus briefs by Monday. The court specifically asked the PTO to weigh in on the issue, and the agency was joined by the U.S. Department of Justice and the Federal Trade Commission as signatories to the brief. A spokesman for the Federal Circuit said the court had received at least 20 amicus briefs. While it’s unclear where all the parties stand on the dictionary divide, many corporations sided with the PTO while law associations took a more nuanced stand. The American Bar Association supports a middle ground, saying both the patent and the dictionary should be considered in construing a patent claim term. The International Trade Commission Trial Lawyers Association said referring to the patent itself is the best course, but that sometimes dictionaries have to be consulted to clarify language in the patent. The American Intellectual Property Law Association was also open to the use of dictionary definitions but cautioned that the court should recognize that a particular dictionary definition might not reflect the ordinary meaning in the relevant art or the ordinary meaning at the relevant time. Microsoft Corp., Intel Corp., IBM Corp., Google Inc. and Micron Technology Inc. spoke with one voice, siding with the PTO. Keker & Van Nest of counsel Mark Lemley authored the brief for the group. “Because there is no standard dictionary used to define terms, parties construing patents can pick and choose among hundreds of dictionaries containing thousands of definitions of any given word,” Lemley wrote. He cited a study that found the Federal Circuit has used 24 different English language dictionaries in the past nine years. “By selecting the broadest definition — or in some circumstances all of the definitions — from this multitude, patentees can expand inventions of incremental value into patents of staggering breadth,” he said. 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 primary source for construing the meaning of a word, and in other cases relying on the specifications in the patent. “There’s no way to predict which dictionary the court will use and therefore what patent claims will mean,” Lemley said in an interview. “You have to look to the context of the invention.” The PTO said patent examiners and prosecutors “rarely if ever, explicitly rely on dictionary definitions to understand or define” the terms in a patent. By relying on dictionaries, the PTO argued, the court “subordinates the patentee’s own explanation of his invention in favor of a dictionary definition never at issue during the patent prosecution before the U.S. PTO.”

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