Today’s post comes from Guest Barista C. Lee Thomason, an expert with over twenty years experience in complex patent infringement suits, on the much-anticipated Court of Appeals for the Federal Circuit decision in Phillips v. AWH Corp.:
The en banc decision in the Phillips case urges that claim construction will be done essentially in accord with three CAFC decisions, Markman, Vitronics and Innova. On that basis, the Phillips decision argues that the existing law was restated, not reformulated. The only expressed change was to remove the precedential value of the Texas Digital line of ‘dictionary’ decisions. Still, some reformulation occurred, at least in regard to ‘rating’ the sources of information offered to interpret patent claims.
One noted change is the primacy accorded to the enablement and best mode requirements from §112. The prior CAFC opinions do not start interpreting claims with §112 as the guiding premise. The §112 requirements for the written description start the analysis in Phillips (slip op. pg. 7), then come again in the middle (slip op., pg. 15, the “statutory directive”), and then toward the end of the decision §112 (pg. 27, the “inventor’s goal” and pg. 29. “important to keep in mind that the purposes of the specification are to teach and enable ..and to provide a best mode”).
The stated goal in Phillips, and the most important component of the analysis is to ascertain the meaning to the “person of ordinary skill in the art in question at the time of the invention” (slip op., pg. 9). That phrase comes, however, from the test set out in §103, not §112. Only a patent lawyer can find reason to quare: does “any person skilled in the art” per §112, ascribe the same meaning to a claim as does “a person having ordinary skill in the art” per §103?
From these threshold points, the Phillips opinion identifies, and suggests the relative worth of, several sources of textual reference. These include, the “context” in the claim, and in the “entire patent” and the “prosecution history” (slip op., pg. 10). That “context” may arise from the use of adjectives to add to ordinary meaning, or from use of a term consistently in several claims (slip op., pg. 12). Next considered is whether the disputed word is a specialized or an ordinary term (slip op., pgs. 11 & 16), which is an aspect based on intrinsic as well as “extrinsic evidence concerning relevant scientific principles, …and the state of the art” (slip op., pg. 11), including perhaps, “technical dictionaries” (slip op., pgs. 18 & 19). Not to be overlooked though, are what the inventor “intended to envelop with the claim” (slip op., pg. 15), and what is the “broadest reasonable construction” consistent with §112 (slip op., pg. 16), which does not engender the “risk of systematic overbreadth” (slip op., pg. 26). All of these are important, but the less important sources are in the prosecution history (slip op., pg. 17), the extrinsic evidence, and expert’s opinions (slip op., pg. 19 & 20).
The edicts in Phillips eliminate any “catechism for claim construction” but its hierarchy of “sources,” in practice, may perform more like a convocation among competing voices. As applied, do these “sources” result in a determination based on the weighty-est of them (once “the appropriate weight [is] assigned to these sources,” slip op., pg. 31), or does the claim interpretation result from a compromise evaluation, (not “any particular sources” analyzed not “in any specific sequence,” slip op., pg. 30).
The opinion may have wanted to amplify the rule in Vitronics, 90 F.3d at 1582, against an ambiguity being created from extrinsic evidence, but no consensus may have existed about how to integrate rules arising from ambiguity, with the stated rulings on inventor intent, prosecution history, multiple dictionary definitions and the presumption of validity (slip op., pgs. 14, 17, 26, & 36). After all, when one “person” interprets a claim term to have ambiguous multiple meanings, another person of skill may deem those as “encompass[ed]” by consistent “multiple dictionary meanings” (slip op., pg. 22 & 24), or by the “broadest reasonable construction” (slip op., pg. 16), or that the meaning of the term is “unambiguous in light of the intrinsic evidence” (slip op., pg. 31).
Perhaps the weakest part of the opinion dances the “fine line” between instances where examples in the written description are “merely …exemplary” and those which express an intention for the claims “to be limited” to the examples. (slip op., pgs. 28-30). For an en banc opinion to say that “Most of the time [this] will become clear” simply overlooks how many panel decisions have struggled in their pursuit of interpreting the claims to avoid importing limitations from the specification.
Part IV of the majority opinion was not joined by those concurring in part. That section reaffirms the doctrine of claim differentiation (slip op., pg. 32). Also, Part IV remarks that the “doctrine of construing claims to preserve their validity” is not a “regular component of claim construction” but is confined to instances of “ambiguity” (slip op., pgs. 36-37). Part IV is weakened too because like other CAFC cases, it never makes clear whether claim differentiation is a doctrine or canon of construction, or just a check against a claim being “redundant” (slip op., pg. 32), or does it act as a “presumption” favoring a broader interpretation (slip op., pg. 13).
Part IV is now the law, however, that applies a broad interpretation to a claim element that the specification suggests can serve “multiple objectives” (slip op., pg. 35). That principle is solidified in Part III of the opinion, which rejects “the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as limited to that embodiment” (slip op., pg. 29). Also, these and other aspects of the ruling may cut back on cases after Texas Digital that find, or infer, that the specification disavowed some breadth impliedly, and Phillips may restore the requirement of a “clear disavowal of claim scope” (slip op., pg. 23).
Many commentators will quote this-ship’s-going-down remarks in Judge Mayer’s opinion in dissent. Suffice it to say that the dissent cites 17 Supreme Court decisions, and only 2 of the CAFC. That suggests that His Honor is imploring the High Court to review the issue (Mayer dissent fn. 1) of whether claim construction is decided by the district judge, or the fact finder. Beyond that, it provides good material for discussing the wisdom of the majority’s rules.