The Federal Circuit has clarified how claim terms should be construed in its en banc decision issued today, Phillips v. AWH Corp., No. 03-1269, slip op. (Fed. Cir. 2005).
In a majority opinion authored by Judge Bryson, the en banc court rejected the approach outlined by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002) and its progeny as placing “too much reliance on extrinsic sources such as dictionaries, treatises, and encyclopedias and too little on intrinsic sources, in particular the specification and prosecution history.” The Federal Circuit returned the focus to the specification, reaffirming precedent that holds that “the specification is ‘the single best guide to the meaning of a disputed term’” (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). In doing so, the court advanced a more common-sense approach to claim construction, focused on how one of ordinary skill in the art would understand the claim terms, rather than setting forth a rigid procedure or formula for conducting claim construction or a required sequence for analyzing sources.
The en banc Phillips court stated that “[t]he inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation” (citing Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). The court, while not explicitly providing a formula for construing claims, proceeded to discuss the publicly available sources for interpreting claims, in the following order: “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” (citing Innova, 381 F.3d at 1116).
The en banc Phillips court favorably cited well-established precedent (including Court of Customs and Patent Appeals, Federal Circuit, and Supreme Court precedent), that held that the specification is “’the primary basis for construing the claims’” (citing Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985)). Moreover, the court referred to the requirement of 35 U.S.C. § 112, ¶ 1, that “the specification describe the claimed invention in ‘full, clear, concise, and exact terms,’” and stated that “the specification necessarily informs the proper construction of the claims.” (citation omitted). Therefore, according to the court: “the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim” (citing Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
In discussing and rejecting the Texas Digital line of cases, the court expressed concern that using dictionaries as the primary source for the meaning of claim terms conflicts with the patentee’s responsibility to clearly and concisely describe its invention in the specification, “because the patent applicant did not create the dictionary to describe the invention.” Rather, the court identified “a disconnect between the patentee’s responsibility to describe and claim his invention, and the dictionary editors’ objective of aggregating all possible definitions for particular words.”
However, the court made clear that both general usage and technical dictionaries can still have a role in claim construction. “A dictionary definition has the value of being an unbiased source ‘accessible to the public in advance of litigation’” (citing Vitronics, 90 F.3d at 1585). The court cautioned repeatedly that dictionary definitions “do not necessarily reflect the inventor’s goal of distinctly setting forth his invention as a person of ordinary skill in that particular art would understand it.” The majority held that extrinsic evidence (including dictionaries) may be useful to the court and its use is permissible, but should be “considered in the context of the intrinsic evidence.”
In sum, the Federal Circuit reaffirmed the primacy of the intrinsic evidence (claims, specification, and prosecution history) consistent with its traditional jurisprudence, and once more assigned the primary role of dictionaries, and other extrinsic evidence, to serve as an aid to a lay judge in understanding the underlying technology.
To discuss these topics further, please feel free to contact the authors, Eric R. Moran (email@example.com) and Kevin E. Noonan (firstname.lastname@example.org), at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago, Illinois, USA.
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