As noted on, people came out in droves to the U.S. Court of Appeals for the Federal Circuit on Tuesday to listen to arguments for a case on claim interpretation.  In Phillips v. AWH Corp., 363 F.3d 1207 (Fed. Cir. 2004), the claimed term “baffle” was limited to baffles that were at an angle greater than 90 degrees.  Although the dictionary definition for “baffle” was broad, the Federal Circuit concluded that the specification only disclosed an embodiment having baffles with an angle other than 90 degrees. Judge Dyk dissented, based on the concepts that the narrow interpretation was contrary to the plain meaning in the dictionary.

The en banc rehearing order asked for briefing on the following questions:

1.  Is the public notice function of patent claims better served by referencing primarily to technical and general purpose dictionaries and similar sources to interpret a claim term or by looking primarily to the patentee?s use of the term in the specification?   If both sources are to be consulted, in what order?

2.  If dictionaries should serve as the primary source for claim interpretation, should the specification limit the full scope of claim language (as defined by the dictionaries) only when the patentee has acted as his own lexicographer or when the specification reflects a clear disclaimer of claim scope?  If so, what language in the specification will satisfy those conditions?  What use should be made of general as opposed to technical dictionaries?  How does the concept of ordinary meaning apply if there are multiple dictionary definitions of the same term?  If the dictionary provides multiple potentially applicable definitions for a term, is it appropriate to look to the specification to determine what definition or definitions should apply?

3.  If the primary source for claim construction should be the specification, what use should be made of dictionaries? Should the range of the ordinary meaning of claim language be limited to the scope of the invention disclosed in the specification, for example, when only a single embodiment is disclosed and no other indications of breadth are disclosed?

4.  Instead of viewing the claim construction methodologies in the majority and dissent of the now-vacated panel decision as alternative, conflicting approaches, should the two approaches be treated as complementary methodologies such that there is a dual restriction on claim scope, and a patentee must satisfy both limiting methodologies in order to establish the claim coverage it seeks?

5.  When, if ever, should claim language be narrowly construed for the sole    purpose of avoiding invalidity under, e.g., 35 U.S.C. 102, 103 and 112.

6.  What role should prosecution history and expert testimony by one of ordinary skill in the art play in determining the meaning of the disputed claim terms?

7.  Consistent with the Supreme Court’s decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and our en banc decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998), is it appropriate for this court to accord any deference to any aspect of trial court claim construction rulings?  If so, on what aspects, in what circumstances, and to what extent?

8.  [In a separate concurring opinion by Judge Rader]: 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?

9.  Chief Judge Mayer dissented, arguing that “any attempt to refine the process is future” as long as the court refuses to reconsider the fiction that claim construction is a matter of law.

See the rehearing order here.

Dennis Crouch’s Patently Obvious blog lists over 25 amicus briefs and other documents related to Phillips

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