Claim Construction Before and After Phillips v. AWH Corp.

Claim Construction Claim Construction Before and After Before and After

Phillips v. AWH Corp.Phillips v. AWH Corp.

Michael PearsonMichael Pearson

Nov. 29, 2005Nov. 29, 2005

Adv. Patent Law – Prof. MorrisAdv. Patent Law – Prof. Morris

StatutesStatutes

§ 112 ¶ 1§ 112 ¶ 1The specificationThe specification

shall containshall contain

a written descriptiona written description of the of the invention invention and of the manner and process of

making and using it, in such full, clear, concise,

and exact terms as to enable

any person skilled in the art to which it pertains, or with which it is most nearly

connected,

to make and use the same …

§ 112 ¶ 2§ 112 ¶ 2

The specification shall The specification shall conclude with one or more conclude with one or more claimsclaims

-particularly -particularly pointing out pointing out andand

-distinctly claiming-distinctly claiming

the subject matter which the the subject matter which the applicant regards as his applicant regards as his invention.invention.

MarkmanMarkman v. Westview Instrumentsv. Westview Instruments

Federal Circuit Federal Circuit 52 F.3d 967, 979 (Apr 5, 1995) 52 F.3d 967, 979 (Apr 5, 1995)

(en banc) ((en banc) (MarkmanMarkman II) ) (Archer, C.J.)(Archer, C.J.)

“ “ We … hold that … the court We … hold that … the court has the power and has the power and obligation to construe as a obligation to construe as a matter of lawmatter of law the meaning the meaning of language used in the of language used in the patent claim.”patent claim.”

Mayer conc in judg (are Mayer conc in judg (are underlying facts)underlying facts)

Rader conc in judg (off topic)Rader conc in judg (off topic)Newman dissenting (off topic)Newman dissenting (off topic)

Supreme CourtSupreme Court517 U.S. 370, 371 (Apr 23, 517 U.S. 370, 371 (Apr 23,

1996) (1996) (MarkmanMarkman IIII) ) (Souter, J.)(Souter, J.)

““We hold that the We hold that the construction of a patent, construction of a patent, including terms of art including terms of art within its claim, is within its claim, is exclusively within the exclusively within the province of the courtprovince of the court.”.”

Unanimous opinionUnanimous opinion

Cybor v. FAS Techs. Cybor v. FAS Techs. (Fed Cir. 1998) (en banc)(Fed Cir. 1998) (en banc)

Archer for CourtArcher for Court Don’t worry if is question of fact or law, just determine Don’t worry if is question of fact or law, just determine

what claims meanwhat claims mean Apply de novo reviewApply de novo review

Bryson concursBryson concurs Question of law, but don’t ignore what trial court has Question of law, but don’t ignore what trial court has

donedone Mayer, C.J., conc in judg (joined by Newman)Mayer, C.J., conc in judg (joined by Newman)

Construction is mongrel practice, give deference on Construction is mongrel practice, give deference on factual findingsfactual findings

Rader dissent re: claim const., conc in judgRader dissent re: claim const., conc in judg Notes almost 40% of claim interpretations reversed from Notes almost 40% of claim interpretations reversed from

Markman IMarkman I to to CyborCybor decision decision de novo review harms predictabilityde novo review harms predictability

VitronicsVitronics

Assigns proper weight to each type Assigns proper weight to each type of evidenceof evidence Claim termsClaim terms Specification – defining termsSpecification – defining terms

Explicitly, orExplicitly, or By implicationBy implication

Prosecution HistoryProsecution History Extrinsic EvidenceExtrinsic Evidence

VitronicsVitronics

Footnote 6Footnote 6 Dictionaries and Technical Treatises Dictionaries and Technical Treatises

valuablevaluable Can be used by judge at any timeCan be used by judge at any time Mentioned in footnote in section Mentioned in footnote in section

explaining that extrinsic evidence is not explaining that extrinsic evidence is not to be used if intrinsic evidence gives to be used if intrinsic evidence gives clear meaningclear meaning

Implied DefinitionImplied Definition Classic Case is Classic Case is Bell Atlantic v. Covad Comm.Bell Atlantic v. Covad Comm., ,

262 F.3d 1258 (Fed. Cir. 2002) (Lourie, Plager, 262 F.3d 1258 (Fed. Cir. 2002) (Lourie, Plager, GajarsaGajarsa))

Bell is PO, wants “plurality of different modes” Bell is PO, wants “plurality of different modes” construed to include different rates of transferconstrued to include different rates of transfer

Court refuses to construe that wayCourt refuses to construe that way Title separates rates and modesTitle separates rates and modes Summary of Invention differentiates rate and modeSummary of Invention differentiates rate and mode Ordinary meaning of mode may permit such Ordinary meaning of mode may permit such

construction, but in this patent can not due to construction, but in this patent can not due to implied definition of mode that does not include rateimplied definition of mode that does not include rate

Texas DigitalTexas Digital (Michel, Schall, (Michel, Schall, LinnLinn)) Problem with starting with the specification – limits Problem with starting with the specification – limits

the claim terms to the preferred embodimentthe claim terms to the preferred embodiment Need to start with the claim termsNeed to start with the claim terms

This is not radical – This is not radical – VitronicsVitronics said same thing said same thing The radical shift comes if the terms are not self-definingThe radical shift comes if the terms are not self-defining

Use dictionaries and treatises to define claim termsUse dictionaries and treatises to define claim terms Cite Cite VitronicsVitronics FN 6 for authority FN 6 for authority Unbiased info sourcesUnbiased info sources

Give full ordinary meaning of termsGive full ordinary meaning of terms If are multiple definitions of term, entitled to If are multiple definitions of term, entitled to allall of them not of them not

disclaimed in specificationdisclaimed in specification

Texas DigitalTexas Digital

Common ComplaintsCommon Complaints Yields overbroad Yields overbroad

claims (MAP 13:49-57)claims (MAP 13:49-57) Adds unpredictability – Adds unpredictability –

turns into war of turns into war of dictionaries (Shui)dictionaries (Shui) Would electing a Would electing a

dictionary in dictionary in prosecution solve this? prosecution solve this? (MAP 7:65-69) (Cleary)(MAP 7:65-69) (Cleary)

Phillips Phillips Certified QuestionsCertified Questions

1-4 are all Dictionary v. Intrinsic 1-4 are all Dictionary v. Intrinsic RecordRecord Which better serves the Public Notice Which better serves the Public Notice

function?function? When (and how) does the specification When (and how) does the specification

limit the breadth of the claim terms?limit the breadth of the claim terms? If primarily rely on spec, what role do If primarily rely on spec, what role do

dictionaries have?dictionaries have? Should these be viewed as Should these be viewed as

complementary methodologies?complementary methodologies?

Amicus BriefsAmicus Briefs 36 briefs in all36 briefs in all Diverse authorsDiverse authors

firms on behalf of clients firms on behalf of clients national and local bar assn’snational and local bar assn’s

Closest to en banc opinion – Bar Assn. of Closest to en banc opinion – Bar Assn. of District of Columbia (Author: Susan M. District of Columbia (Author: Susan M. Dadio of Burns Doane in Alexandria, VA)Dadio of Burns Doane in Alexandria, VA) Spec firstSpec first Do not limit to preferred embodimentDo not limit to preferred embodiment Do not answer Do not answer CyborCybor at this time at this time

Would be advisory – result was same in panel and Would be advisory – result was same in panel and District CourtDistrict Court

Class on BriefsClass on Briefs

Hawkins liked ITCTLA (Kipel) briefHawkins liked ITCTLA (Kipel) brief Everyone else (on 1Everyone else (on 1stst comments) … comments) …

Lemley WagnerLemley Wagner

PhillipsPhillips – Theory – Theory Court claims to reapply Court claims to reapply

VitronicsVitronics and and Markman I Markman I – – restate proper weight restate proper weight of evidenceof evidence Claim termsClaim terms SpecificationSpecification Prosecution HistoryProsecution History

““Properly viewed, the Properly viewed, the ordinary meaning of a ordinary meaning of a claim term is its claim term is its meaning to the ordinary meaning to the ordinary artisan after reading the artisan after reading the entire patent.” (MAP entire patent.” (MAP 13:36-38)13:36-38)

PhillipsPhillips – Repudiate – Repudiate Texas DigitalTexas Digital

The Dictionary Presumption systematically The Dictionary Presumption systematically yields overbroad claimsyields overbroad claims Q – Does it? If so, why doesn’t the Court cite Q – Does it? If so, why doesn’t the Court cite

anyany example of an overbroad claim from that example of an overbroad claim from that method? (MAP 13:49-57)method? (MAP 13:49-57)

Acknowledges “primary” concern of Acknowledges “primary” concern of limiting claim scope to preferred limiting claim scope to preferred embodimentsembodiments

N.B. – Judge Linn (author of N.B. – Judge Linn (author of Texas Digital) Texas Digital) joins without commentjoins without comment

PhillipsPhillips Application ApplicationClaim DifferentiationClaim Differentiation

Need not be at anglesNeed not be at angles Some dependent claims say baffles at Some dependent claims say baffles at

anglesangles Some independent claims just say bafflesSome independent claims just say baffles Interpret claims so that each word has Interpret claims so that each word has

meaningmeaning Therefore must not be required that all Therefore must not be required that all

baffles are at anglesbaffles are at angles

PhillipsPhillips Application ApplicationLimiting to Preferred EmbodimentLimiting to Preferred Embodiment

Not limited to disclosure of baffles at anglesNot limited to disclosure of baffles at angles Spec must teach all embodimentsSpec must teach all embodiments Teaching of angled baffles describes dependent Teaching of angled baffles describes dependent

claims claiming angled bafflesclaims claiming angled baffles Lourie dissents on point – Lourie dissents on point – allall disclosure of disclosure of

baffles is at anglesbaffles is at angles Point is to deflect – need to be angled to deflectPoint is to deflect – need to be angled to deflect Implied definitionImplied definition

Is this more than patentee Is this more than patentee deserves then? (Murshak)deserves then? (Murshak)

PhillipsPhillips Application ApplicationInterpret to Preserve ValidityInterpret to Preserve Validity

Very narrow, rarely used doctrineVery narrow, rarely used doctrine Only to be used if no conclusive Only to be used if no conclusive

answer after “applying all the answer after “applying all the available tools of claim construction,” available tools of claim construction,” term is still ambiguousterm is still ambiguous Thus not one of the available toolsThus not one of the available tools If used, must be last in analysisIf used, must be last in analysis

PhillipsPhillips Outcome OutcomeDistriDistrict ct CourtCourt

Panel Panel MajoritMajorityy

(Lourie)(Lourie)

Panel Panel DissentDissent

(Dyk)(Dyk)

En En banc banc MajoritMajorityy

(Bryso(Bryson)n)

Method of Method of ConstructiConstructionon

112 112 ¶6¶6

VitronicVitronics- s- define define by by impl.impl.

Texas Texas DigitalDigital, , ordinarordinary y meaninmeaningg

VitroniVitronicscs- - claim claim diff.diff.

Baffles Baffles must be must be angled?angled?

YesYes YesYes NoNo NoNo

PhillipsPhillips – Unanswered Questions – Unanswered Questions

When can dictionaries When can dictionaries be used?be used? To help understand To help understand

definitions of definitions of “commonly understood “commonly understood words” (MAP 13:103-words” (MAP 13:103-109) – what’s the point?109) – what’s the point?

Was Was Texas DigitalTexas Digital all all about preventing about preventing restriction to the restriction to the preferred preferred embodiment?embodiment?

Why did Linn and Dyk Why did Linn and Dyk join without comment?join without comment?

PhillipsPhillips in 30 years – Class Opinions in 30 years – Class Opinions

Passé (Heller)Passé (Heller) Still debated (Kolb)Still debated (Kolb) Redefined (Ko)Redefined (Ko) ““Goes without Saying” (Olin)Goes without Saying” (Olin)

Safe to say the Class does not see Safe to say the Class does not see this as Earth-shattering this as Earth-shattering

Deference – Deference – PhillipsPhillips Question 7 Question 7

Court certifies question of whether should Court certifies question of whether should revisit revisit de novode novo review of review of CyborCybor

Accepts briefing on issueAccepts briefing on issue Many argue Court should not answer – would Many argue Court should not answer – would

be advisory opinion on these factsbe advisory opinion on these facts Majority of briefs encouraging court to answer Majority of briefs encouraging court to answer

seek deference on factual findings underlying seek deference on factual findings underlying claim constructionclaim construction

Declines to address issue in opinionDeclines to address issue in opinion Mayer vigorously dissentsMayer vigorously dissents

Appellate Deference on FactsAppellate Deference on Facts

FRCP 52(a) – “… Findings of FRCP 52(a) – “… Findings of factfact, , whether based on oral or whether based on oral or documentary evidence, shall not be documentary evidence, shall not be set aside unless set aside unless clearly erroneousclearly erroneous, , and due regard shall be given to the and due regard shall be given to the opportunity of the trial court to judge opportunity of the trial court to judge of the credibility of the witnesses….”of the credibility of the witnesses….”

PhillipsPhillips – Is Mayer right? – Is Mayer right? Ko (and Heller?) say yes – Ko (and Heller?) say yes –

methods of claim methods of claim construction don’t matter construction don’t matter unless there is deferenceunless there is deference

Five current judges have Five current judges have expressed need for some expressed need for some deferencedeference MayerMayer Newman (joined Mayer)Newman (joined Mayer) Rader (Rader (CyborCybor dissent) dissent) Lourie (Lourie (PhillipsPhillips dissent in dissent in

part – lean towards part – lean towards affirmance unless clear affirmance unless clear error)error)

Bryson (Bryson (CyborCybor concurrence – de novo, concurrence – de novo, but don’t throw out what but don’t throw out what trial court has done)trial court has done)

PhillipsPhillips – Petition for Certiorari – Petition for Certiorari

AWH filed brief Nov. 9AWH filed brief Nov. 9 available at available at

http://patentlaw.typepad.com/patent/Phillips_2http://patentlaw.typepad.com/patent/Phillips_20v_20_20AWH_20Petition_20for_20Cert_20_2820v_20_20AWH_20Petition_20for_20Cert_20_282_29.pdf_29.pdf

Question sought for cert – “Whether the Question sought for cert – “Whether the Federal Circuit is correct in holding that all Federal Circuit is correct in holding that all aspects of a district court’s patent claim aspects of a district court’s patent claim construction may be reviewed construction may be reviewed de novode novo on on appeal.”appeal.”

Reply brief not yet filedReply brief not yet filed

Chances of Certiorari?Chances of Certiorari?

ProsPros Issue now certified before en banc Federal Issue now certified before en banc Federal

Circuit three times in ten years (Circuit three times in ten years (Markman Markman II, , CyborCybor, , PhillipsPhillips))

Have SCOTUS precedent on “mongrel Have SCOTUS precedent on “mongrel issues” (issues” (Graham v. John DeereGraham v. John Deere, , Markman Markman IIII))

Deals with Federal Circuit’s authority Deals with Federal Circuit’s authority ((VornadoVornado))

Then again, it is a patent caseThen again, it is a patent case And they’ve already taken one this term…And they’ve already taken one this term…

Thanks!Thanks!

PhillipsPhillips may not be over, but this may not be over, but this (last) presentation is (last) presentation is