In an Order dated July 21, 2004, the Federal Circuit finally decided to try to resolve its conflicting claim construction precedent by granting a petition to rehear Phillips v. AWH en banc: http://fedcir.gov/opinions/03-1269o.doc.
The Phillips panel pitted Judges Lourie and Newman in the majority against a dissenting Judge Dyk. Briefly, Judge Lourie’s opinion (not surprisingly) looked to the specification and prosecution history to limit the claim term “baffles” to only baffles not oriented at 90 degree angles, because, in part, the only embodiment in the specification showed baffles not oriented at 90 degree angles and because the prior art showed 90 degree baffles. Judge Dyk (also not surprisingly) found no clear disclaimer of claim scope and would have relied on the plain meaning of the claim term "baffles," as found in a general-usage dictionary. He accused the majority of focusing on a preferred (and only) embodiment and of construing claims to satisfy the objectives of the invention, and would have ruled that the applicant did not distinguish his invention from the prior art 90 degree baffles.
In the en banc rehearing, the Court will address the following issues, among others:
- should the primary focus of claim construction be with the specification or with dictionaries?
- if dictionaries provide the primary focus under (1), under what circumstances is a claim term limited—when the patentee acted as his own lexicographer, where there is a clear disclaimer, or both—and what language in the specification can provide such a limitation?
- what is the role of general purpose dictionaries versus technical dictionaries, and how is a battle of the dictionaries resolved?
- if the specification serves as the primary focus under (1), do dictionaries serve a role in claim construction and otherwise how can the specification limit claim terms?
- when, if ever, should claim language be narrowly construed to avoid invalidity?
- what role should the prosecution history and expert testimony play in resolving claim construction disputes?
- what deference should the Federal Circuit give the claim construction rulings of district court judges?
The Court invited the parties (as well as amici) to submit additional briefs on these issues sixty days from the date of this Order.
--- Eric R. Moran of McDonnell Boehnen Hulbert & Berghoff LLP
(312) 913-3302 or at email@example.com
To the 2004 Chem/Biotech and Computer/Electronic Roadshow attendees, note yesterday's Order and the questions certified for reh'g in Philips/AWH in the context of claim construction difficulties and methodology presented at the roadshows in June. Note also Judge Rader's concurrence additionally seeking input on the following:
"Is claim construction amenable to resolution by resort to strictly algorithmic rules, e.g., specification first, dictionaries first, etc.? Or is claim construction better achieved by using the order or tools relevant in each case to discern the meaning of terms according to the understanding of one of ordinary skill in the art at the time of the invention, thus entrusting trial courts to interpret claims as a contract or statute?"
Amicus submissions are due in 60 days.
--- Michael R. Dzwonczyk of Sughrue Mion PLLC in Washington, DC
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