On July 12, 2005 , the Federal Circuit issued its en banc decision in Phillips v. AWH Corp., addressing fundamental questions regarding patent claim construction. See Phillips v. AWH Corp., No. 03-1269, -1286 (Fed. Cir. Jul. 12, 2005 ). The decision clarifies a handful of issues central to the claim construction process, in particular, the emphasis that is to be given to various claim construction sources including the relative weights given to the patent specification and to dictionaries and other types of extrinsic evidence.
The Federal Circuit's Prior Panel Decisions on Claim Construction
The question of claim construction is typically dispositive of litigation involving patents. Thus, the choice of a methodological approach to construing claim terms will directly affect the litigation results. The panel decisions of the Federal Circuit, however, are inconsistent and vary on their methodological approach to construing claim terms. For example, one such approach by the Court is to use dictionaries as a primary reference for construing a claim term. Another approach is to rely primarily on the patentee's own specification. Therefore, patent infringement litigation is often unpredictable because of these inconsistent panel decisions and approaches.
The question of claim construction is typically dispositive of litigation involving patents. Thus, the choice of a methodological approach to construing claim terms will directly affect the litigation results. The panel decisions of the Federal Circuit, however, are inconsistent and vary on their methodological approach to construing claim terms. For example, one such approach by the Court is to use dictionaries as a primary reference for construing a claim term. Another approach is to rely primarily on the patentee's own specification. Therefore, patent infringement litigation is often unpredictable because of these inconsistent panel decisions and approaches.
Over the past few years, a split over this issue had developed within the Federal Circuit. Some panels -- exemplified by Texas Digital Sys., Inc. v. Telegenic, Inc., 308 F.3d 1193 (Fed. Cir.2002) -- strongly favored recourse to dictionaries and similar types of extrinsic evidence as a means of determining the "full breath of the limitations intended by the inventor." Other emphasized the singular importance of intrinsic evidence -- i.e., the claims, the specification and the prosecution history. For example, the Federal Circuit in the Vitronics case discouraged the use of extrinsic evidence (i.e., anything beyond the Patent Office record) except in rare cases. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996)
The Texas Digital case, the leading case in a line of Federal Circuit panel decisions placing a greater emphasis on dictionary definitions of claim terms relative to the roles of the specification and prosecution history, provided a methodology under which dictionaries, encyclopedias, and treatises could first be consulted in order to determine a claim term's ordinary meaning. See Texas Texas
Summary of Phillips v. AWH Corp.
En Banc Federal Circuit Phillips v. AWH Corp. case changes the law for claim construction by finding that patent specification, not the dictionary, is the first/best source for claim interpretation. The en banc opinion abandoned the failed Texas Digital case rules of using the dictionary first, and gives guidance of when and how to use evidence such as: dictionaries, specification, and expert testimony.
In the case, the inventor Phillips claimed that AWH infringed his patent, U.S. Patent No. 4,677,798 (the "'798 Patent"), on steel-shell panels resistant to vandalism. Each claim of the '798 Patent at issue recites internal "baffles" (e.g., Claim 1 recites "internal steel baffles extending inwardly from the steel shell walls"). The parties agreed that the accused product had internal steel panels that extended perpendicularly inward from steel shell walls. The central claim construction issue was whether the claim term "baffles" could include surfaces oriented at 90º to steel shell walls, such as the accused products, or whether the claimed baffles were limited to non-perpendicularly projecting structures.
The district court granted summary judgment of non-infringement. The three-judge panel affirmed the district court's ruling on the ground that the specification compelled a narrow interpretation of the claim and concluded that "baffles must be oriented at angles other than 90º." Phillips v. AWH Corp., 363 F.3d 1207, 1213 (Fed. Cir. 2004)
The court reversed the three-judge panel ruling by refocusing the claim construction process on a more detailed analysis of the patent specification, and moving away from previous panel decisions' heavy reliance on dictionaries. In emphasizing the importance of the specification in claim construction, the majority stated that it is "entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims." Phillips, slip op. at 16.
First, the en banc Phillips court deemphasized the role that dictionaries should play in claim construction. The court points out that a patent applicant may only in rare instances look to dictionaries in determining the claim scope he intends to assert. See id., slip op. at 25-26. The Phillips court thus was particularly concerned with the possible use of a dictionary definition to broaden the interpretation of a claim term possibly intended by the patentee to have a narrower scope in light of the claims, specification, and prosecution history,
Then, the en banc Phillips majority refocuses claim construction on the specification and prosecution history, and warns against importing limitations from the specification into the claims, a key concern that was an animating factor behind the now-deemphasized Texas Digital line of cases. The court conceded that in some cases it will be difficult to determine whether a person of skill in the art would understand embodiments described in the specification to define outer limits of a claim term, or to be merely exemplary in nature, but went on to note that "attempting to resolve that problem in the context of the particular patent is likely to capture the scope of the actual invention more accurately than either strictly limiting the scope of the claims to the embodiments disclosed in the specification or divorcing the claim language from the specification." Phillips, slip op. at 30.
The end result of the majority's discussion of claim construction methodology was thus an affirmation of the claim construction approach outlined in the Vitronics case, which focuses on the appropriate weight to be assigned to various potential sources of claim construction guidance. Specifically, when interpreting the meaning of particular claim terms, the Phillips en banc decision requires that one should look to the following sources, in order of importance: the claims themselves (including differences in the phrasing of respective claims of the patent, which may indicate an intended difference in claim scope); the specification; the prosecution history; unbiased extrinsic evidence (such as dictionaries and treatises and, in particular, technical dictionaries); and biased extrinsic evidence (such as expert testimony). See Phillips, slip op. at 11-20. With respect to extrinsic evidence, the Phillips majority indicated that such evidence could provide guidance regarding the field of the invention and could help determine what a person of ordinary skill in the art would understand claim terms to mean, but the majority also cautioned any court using such evidence to "keep in mind the flaws inherent in each type of evidence and assess that evidence accordingly." Id.
The en banc Phillips majority applied these principles to construe the '798 Patent claim term "baffles" to include surfaces oriented at both oblique and right angles relative to the steel shell walls. See id., slip op. at 31-35. As a result, a surface oriented at 90º was found to be covered by the claim term, despite the fact that no embodiment in the specification described or illustrated such an orientation. In particular, the court noted that the numerous specification statements touting the projectile-deflection abilities of the baffles specifically applied only to the claims that actually called out such feature, and not to those claims that did not. See id., slip op. at 32-35.
The en banc panel rejected the Texas Digital methodology because it "placed 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 court acknowledged that extrinsic evidence may be useful to assist in understanding the meaning that one of skill in the art would ascribe to terminology used in the claims, but holds that such evidence is less significant than the intrinsic record in determining the meaning of claim language.
Additionally, the majority acknowledged the continuing importance of its warnings against importing into the claims limitations from the specification. This improper result can best be avoided, the court observed, by ensuring that district courts focus "on understanding how a person of ordinary skill in the art would understand the claim terms." The court opined that it would often be clear simply from reading the specification whether the patentee intended the embodiments disclosed in the specification to serve as examples to teach those of skill in the art how to make or use the invention (a primary purpose of the specification), or whether the patentee intended the claims and the embodiments to be co-extensive.
Two additional points are also important from the case. First, the court reaffirmed that the time when one determines the meaning of claim terms is the time of the invention – that is, as of the effective filing date of the patent application. Second, the court limited the cases, in which it would apply the maxim that claims are to be construed to preserve their validity, to those in which the claim language remains ambiguous after all other claim construction tools have been applied.
Conclusion
Under Phillips, the court appears to be unanimous in declaring that dictionaries are to be considered extrinsic evidence, and ordinarily should be disfavored in claim construction, and the specification is the most important tool for claim word interpretation. This case law makes it more important for the patent attorney to properly write the specifications to define the claim words give proper meaning and scope.
Implication of Phillips v. AWH Corp.
The effect of the Phillips ruling will be to push district courts to construe claims in light of the specification and other intrinsic evidence, and with much less regard for extrinsic evidence, such as dictionary definitions and technical treatises. Although in Phillips the court reversed a summary judgment of non-infringement, as a practical matter the Phillips decision may in some cases result in claims being construed more narrowly than they would have been under the Texas Digital approach. On the other hand, the court's limitation of the maxim to only those cases in which the claim construction process fails to yield an unambiguous outcome may result, in some cases, in a broader claim construction than would otherwise have been applied. Because the decision's impact cannot be consistently predicted, it highlights the importance of carefully drafting the patent claims and specification to maximize the allowable breadth of the claims and the value of patent portfolio.
When preparing patent applications, the manner in which the claims may ultimately be construed is an important consideration. Perhaps the most significant impact of the Phillips decision on patent drafting is the emphasis that will likely be given to specification statements or characterizations of the invention. Prudence, therefore, must accordingly be practiced in the drafting of the specification. Consistency between the terms used in the claims and in the specification, and a full explanation of the intended meaning or scope of these terms, will prove extremely important, as a misplaced or superfluous remark in the specification could have an unexpected effect on the meaning assigned to the claims by a court. In addition, if the specification includes various embodiments, features, and/or descriptions of the invention and its components that are alternative, exemplary, or optional in nature, this fact should be clearly indicated, as the increased emphasis given to the specification in light of the Phillips decision could otherwise lead to an undesired narrowing of the claims so as to limit them, in effect, to covering only disclosed embodiments.
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Connie
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