September 2004 Chair's Bulletin Addendum

Several significant matters were discussed at the Section Council meeting in Atlanta on August 7, 2004.

First, the Court of Appeals for the Federal Circuit recently issued an order in which it took en banc the case of Phillips v. AWH Corp. Appeal No. 03-1269, -1286 (Fed. Cir.). In the Phillips case, the court requested briefing from the bar on the following claim construction issues:

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?

In response to the Federal Circuit's order, the Section Council and ABA House of Delegates passed a resolution that states the position of the Association, as follows:
RESOLVED, That the American Bar Association recommends that courts apply the following principles in interpreting claim terms in a patent-

--In construing a patent claim term, the ordinary meaning of the claim term to one of ordinary skill in the art as used in the context of the patent shall apply, unless (a) the patentee has acted as his or her own lexicographer, in which case the patentee's definition should control; or (b) there has been a clear disavowal of claim scope, in which case the patentee should be bound by such action. In determining the ordinary meaning of the claim term to one of ordinary skill in the art as used in the context of the patent, the court shall look to dictionaries and similar sources, the specification and the prosecution history;

--While technical dictionaries should be given more weight than general-purpose dictionaries, all types of dictionaries and similar sources should be considered;

--In construing or interpreting any disputed portion of a patent claim, courts should not rely on dictionaries and similar sources unless (a) that material has been made part of the record and (b) the parties have had a full and fair opportunity to address, challenge, or rebut that material;

--Courts should not apply a rule of claim construction whereby the specification is the primary source for claim construction such that the range of ordinary meaning of claim language is limited to the scope of the invention disclosed in the specification;

--Courts should not apply a rule of claim construction whereby the claim construction methodologies in the majority and dissent in the now-vacated panel opinion in Phillips v. AWH Corp., 363 F.3d 1207 (Fed. Cir. 2004), are 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;

--Courts should not consider invalidity under, e.g. 35 U.S.C. 102, 103, and 112, when construing claim terms in a patent;

--Courts should apply a rule of claim construction in which the prosecution history is given the same weight as the specification and both are considered in every case when evaluating the meaning of a claim term;

--Trial courts should receive expert testimony at the court's discretion to educate the court on the technology, but expert testimony may not be used to contradict the claim meaning discernable from the dictionaries and similar sources, specification, and prosecution history;

--While the ultimate issue of claim construction should be reviewed de novo, an appellate court should review only by the clearly erroneous standard any underlying findings of fact made by a trial court in connection with construing a claim term.
The Phillips case is an extremely important case for patent practitioners and users of the patent system. The current state of uncertainty and unpredictability regarding the construction of patent claims, caused in part by contradictory Federal Circuit panel decisions, frustrate the patent systems. With uncertain and unpredictable boundaries of the patent monopoly, practitioners and patent owners are unable to determine with certainty what is inside and outside the proper scope of the patent. This makes it difficult to determine both infringement and validity questions. Patent owner and those threatened with infringement both need to be able to tell with a reasonable degree of certainty the limits of a patent. Don Dunner and Richard Rainey are busy working on an amicus brief that will be filed in the name of the ABA to advocate the positions of the Association on these important issues.

Also, Don Martens has led a task force that prepared a report regarding the FTC recommendations. The report will be finalized soon and sent to the FTC. The FTC report seeks to implement many substantive changes to the patent law that will impact all practitioners.

A special word of thanks goes to our House of Delegates representatives Donald Dunner and Jack Goldstein who have worked hard to advocate important Section positions through the ABA House of Delegates. Both are dedicated servants of the Section and their efforts are appreciated. Most recently, Don and Jack presented resolutions to the House of Delegates regarding resolutions dealing with the Weldon Amendment and the Section's position on the Phillips v. AWH case.