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The one-year anniversary of the U.S. Court of Appeals for the Federal Circuit’s landmark en banc decision in Phillips v. AWH Corp. , 415 F.3d 1303 (Fed. Cir. 2005), has come and gone. Roughly 150 reported decisions and almost 250 unpublished decisions have cited Phillips since the decision was issued. It is now typically the first case cited in courts’ analyses of patent claims. All in all, claim interpretation in the first year of the post- Phillips era did not experience a major sea change-at least not like that envisioned when the court of appeals first announced that the entire panel would be addressing some of the most vexing issues surrounding claim construction. But the decision has had an impact. In some cases, Phillips changed the outcome. The significance of claim construction in patent litigation easily tells the story of why all eyes were focused on Phillips . In many, if not most, patent lawsuits, obtaining a favorable claim construction translates to a total victory. A broad interpretation usually means that the defendant’s product or method infringes the plaintiff’s invention. A narrow interpretation often means the defendant escapes liability. And because claim construction is generally one of the first substantive matters addressed in a patent case, winning the claim-construction ruling is usually the quickest and most devastating blow one can deal to an opponent. A constant challenge, of course, is trying to construe patent claims in a consistent and predictable manner. Judges, practitioners, patent owners and accused infringers have struggled with this issue for decades. Litigants exhaust time, energy and money at the trial court level fighting over the meaning of claim language, only to face de novo review from the Federal Circuit. And the Federal Circuit, starting from a clean slate, is known for its high reversal rate-some estimate as high as 40% to 50%. Thus, parties have every incentive to appeal and relitigate. Years and millions of dollars later, many litigants, worn down by this long, expensive and uncertain process, will begrudgingly compromise by entering into a cross-license that allows the parties to go back to doing exactly what they were doing before the lawsuit. As the law of claim interpretation developed in this high-stakes practice area, a recurring source of confusion was the role of dictionaries. Dictionaries, as objective resources, can provide useful insight into a word’s plain and ordinary meaning, which is the heart of the claim-construction inquiry. Parties therefore scoured libraries to find the dictionaries and treatises with the most helpful definitions. Those references were then touted as authoritative on how a person having ordinary skill in the art would understand the term at issue. This practice was encouraged, if not endorsed, by the Federal Circuit’s decision in Texas Digital Systems Inc. v. Telegenix Inc. , 308 F.3d 1193 (Fed. Cir. 2002). Texas Digital elevated dictionaries to a prominent role in claim construction by presuming that a dictionary, encyclopedia or treatise definition would reflect a term’s ordinary meaning. Under Texas Digital and its progeny, a claim term would be construed to encompass all proffered definitions so long as those definitions did not contradict the intrinsic record, i.e., the patent specification and file history. In other words, a patent holder would be entitled to the broadest definitional scope provided by such references unless the patent itself either explicitly defined a term or the intrinsic evidence otherwise disavowed such a meaning. This dictionary-first approach was at odds with the Federal Circuit’s methodology articulated in its earlier en banc decision of Vitronics Corp. v. Conceptronic Inc. , 90 F.3d 1576 (Fed. Cir. 1996). Vitronics emphasized the importance of looking first to the intrinsic evidence-the claims, the specification and the prosecution history-in interpreting claims. Extrinsic evidence, on the other hand-such as expert and inventor testimony, dictionaries, treatises and other patents-can be helpful but is less significant in determining the operative meaning of claim language. A highly anticipated decision Resolving the tension between the Vitronics and Texas Digital approaches-over what type of evidence a court should consider in the interpretative process-was a central issue in the Phillips en banc proceedings. The court of appeals also posed questions about whether it should avoid a claim construction that would render a patent invalid and whether it should accord any deference to a trial court’s claim construction. The issues put forth in the order granting rehearing en banc sent a shock wave throughout the patent community. No fewer than 36 amici curiae briefs were filed with the court. Conventional wisdom was that something clearly monumental would be decided in this highly anticipated opinion. When the dust settled, the court had answered some questions and sidestepped others. Appropriately enough, the baffling issues presented in Phillips centered around the interpretation of the claim term “baffle.” Edward Phillips’ invention, U.S. Patent No. 4,677,798, covered modular, steel-shell panels used for building impact-resistant walls, such as in prisons. Specifically at issue was whether steel baffles oriented at 90� angles fell within the scope of the ’798 patent. The district court interpreted the claim term narrowly, finding that the steel baffles must be oriented at acute or obtuse angles, not 90� angles. The Federal Circuit affirmed in a 2-1 split, with the majority concluding that the nature of the invention implied a restrictive definition of the term. On July 12, 2005, the en banc Federal Circuit affirmed in part, reversed in part, dismissed in part and remanded. In a patchwork of concurring and dissenting opinions, the court ultimately found that the claim term at issue encompassed baffles oriented at 90� angles. More noteworthy than the specific factual result, however, was the court’s detailed restatement of patent claim-construction methodology.
INTELLECTUAL PROPERTY Counterfeits: Beyond the Knockoff FTC’s recent ruling in ‘Rambus.’ Cases decided since ‘Philips.’ Open-source software disputes. Emergence of Science Commons. Global patent-filing options. Keeping inventive-act records.

Most significantly, the court overruled the Texas Digital line of cases and rejected the primacy of dictionaries during claim construction. Phillips, 415 F.3d at 1317-19. Judge William C. Bryson, writing for the majority, stated that Texas Digital “focuse[d] the inquiry on the abstract meaning of words rather than on the meaning of the claim terms within the context of the patent” and permitted a construction “entirely divorced from the context of the written description.” Id. at 1321. The court emphasized that dictionaries, like other types of extrinsic evidence, are less important when construing claims than intrinsic evidence, such as a patent’s specification and prosecution history. The en banc majority reiterated that a patent’s specification is highly relevant to, and usually dispositive of, the claim-construction analysis. Phillips was not, however, a wholesale rejection of dictionaries in claim construction. Rather, the Federal Circuit endorsed the use of dictionaries during claim construction under three circumstances. First, “[d]ictionaries or comparable sources are often useful to assist in understanding the commonly understood meaning of words.” Id. at 1322. Second, courts may consult dictionaries and technical treatises to better understand the underlying technology. Third, courts may rely on dictionaries when construing claim terms, “so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents.” Id. (quoting Vitronics, 90 F.3d at 1585). Dictionaries are still used Although the Federal Circuit arguably decreased the prominence of dictionaries in claim construction, dictionaries remain an integral part of the analysis, especially when the use of dictionaries involves one of the three uses endorsed by the Federal Circuit in Phillips . See, e.g., Mass. Inst. of Tech. v. Abacus Software , nos. 05-1142, 05-1161, 05-1162, 05-1163, 2006 WL 2613439 (Fed. Cir. Sept. 13, 2006) (relying heavily on technical and nontechnical dictionary definitions to discern the meaning of disputed claim terms). Courts are careful, however, to point out that their reliance on any dictionary definition is consistent with Phillips , lest they be accused of reviving the Texas Digital experiment. See, e.g., id. at 5; Atofina v. Great Lakes Chem. Corp ., 441 F.3d 991 (Fed. Cir. 2006); Pfizer Inc. v. Teva Pharms. USA Inc. , 429 F.3d 1364, 1375 (Fed. Cir. 2005); Free Motion Fitness Inc. v. Cybex Int’l. , 423 F.3d 1343, 1348-49 (Fed. Cir. 2005). In many instances, the claim-construction outcome is the same regardless of whether the Texas Digital approach or the Phillips approach is used. Several courts actually reached this conclusion when faced with requests for rehearing or reconsideration in the wake of Phillips . An illustrative case is Intex Recreation Corp. v. Metalast S.A. , 400 F. Supp. 2d 123 (D.D.C. 2005), where the defendant sought reconsideration. The court acknowledged that the discussion of claim construction post- Phillip s would be somewhat different but stated that the result of the analysis remained the same. As the court noted, the prior construction was based on intrinsic evidence and looked to dictionary definitions only to buttress the construction. The court thus observed that the methodology used in the original decision was consistent with Phillips because it assigned only a secondary role to dictionary definitions and other extrinsic evidence. See also Translogic Tech. Inc. v. Hitachi Ltd. , 404 F. Supp. 2d 1250 (D. Ore. 2005) (denying motion for reconsideration because original claim construction was not “entirely divorced” from the written description); Akeva LLC v. Adidas Am. Inc. , 385 F. Supp. 2d 559 (D.N.C. 2005) (denying motion for rehearing). Phillips , however, did substantively alter the outcome of some cases. For example, one year before Phillips , in Nystrom v. TREX Co. , 374 F.3d 1105 (Fed. Cir. 2004), the Federal Circuit had issued a claim construction that liberally construed the claim term “board” in a patent covering building materials for exterior flooring surfaces. In its June 2004 opinion, the Federal Circuit refused to limit the term “board” to mean wood decking materials cut from logs, even though the written description of the patent and the prosecution history described the term as such. Instead, employing various dictionary definitions in accordance with Texas Digital , the court expansively interpreted “board” to encompass a piece of cut wood or sawn timber or “similarly-shaped item made of a rigid material.” That meant that the defendant, which manufactured decking planks out of synthetic materials, was not entitled to a declaratory judgment of noninfringement. Two months after Phillips, the Federal Circuit revisited its 2004 ruling and withdrew its opinion. Nystrom v. TREX Co., 424 F.3d 1136 (Fed. Cir. 2005). Because its prior ruling was premised on the subsequently repudiated Texas Digital approach, the court reinterpreted “board” as covering wood materials only. This ruling better served the public-notice function emphasized in Phillips because a person having ordinary skill in the art must interpret claim terms in view of the patent’s context. Starting with broad dictionary definitions, on the other hand, led to a claim construction divorced from the patent’s intrinsic record. A similar case is On Demand Machine Corp. v. Ingram Industries Inc. , 442 F.3d 1331 (Fed. Cir. 2006). In that case, the Federal Circuit reversed a district court’s pre- Phillips claim construction because the district court impermissibly relied on extrinsic evidence to increase the scope of the claims when the specification otherwise limited the disputed claim language. More specifically, the district court construed the disputed terms “sales information” and “customer” too broadly by resorting to dictionary definitions that were out of context. The Federal Circuit held that the patent’s specification limited “sales information” to promotional information and “customer” to the retail customer. Phillips was therefore outcome-determinative in limiting the patent’s claim scope. Enough time has passed that additional reversals, reconsiderations and rehearings of pre- Phillips decisions are unlikely. In retrospect, the big splash made by the en banc announcement had a relatively small ripple effect. Phillips achieved some important methodological clarifications, but, alas, claim construction remains an uncertain process. Patent litigants at least can expect that claim-construction hearings and Federal Circuit appeals will now focus more on intrinsic evidence and less on a battle of dictionary definitions. A welcome upshot to defendants in patent infringement cases is that fewer claims should receive unduly broad interpretations. Eric W. Hagen is a partner in the Los Angeles office of Kirkland & Ellis, where he specializes in intellectual property litigation. He can be reached at [email protected] . Jason Oh, a 3L at Harvard Law School, and Kevin Mack, a 3L at the University of California, Berkeley School of Law, both of whom were summer associates at the firm, provided research assistance for this article.

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