Claim Construction Before and After Phillips v. AWH Corp. Michael Pearson Nov. 29, 2005 Adv. Patent Law – Prof. Morris

Statutes § 112 ¶ 1 § 112 ¶ 1 The specification shall contain a written description of the invention of the 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 The specification shall conclude with one or more claims -particularly pointing out and -distinctly claiming the subject matter which the applicant regards as his invention.

Markman v. Westview Instruments Federal Circuit 52 F.3d 967, 979 (Apr 5, 1995) (en banc) (Markman I) (Archer, C.J.) “ We … hold that … the court has the power and obligation to construe as a matter of law the meaning of language used in the patent claim.” Mayer conc in judg (are underlying facts) Rader conc in judg (off topic) Newman dissenting (off topic) Supreme Court 517 U.S. 370, 371 (Apr 23, 1996) (Markman II) (Souter, J.) “We hold that the construction of a patent, including terms of art within its claim, is exclusively within the province of the court.” Unanimous opinion

Cybor v. FAS Techs. (Fed Cir. 1998) (en banc) Archer for Court Archer for Court Don’t worry if is question of fact or law, just determine what claims mean Don’t worry if is question of fact or law, just determine what claims mean Apply de novo review Apply de novo review Bryson concurs Bryson concurs Question of law, but don’t ignore what trial court has done Question of law, but don’t ignore what trial court has done 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 factual findings Construction is mongrel practice, give deference on factual findings Rader dissent re: claim const., conc in judg Rader dissent re: claim const., conc in judg Notes almost 40% of claim interpretations reversed from Markman I to Cybor decision Notes almost 40% of claim interpretations reversed from Markman I to Cybor decision de novo review harms predictability de novo review harms predictability

Vitronics Assigns proper weight to each type of evidence Assigns proper weight to each type of evidence Claim terms Claim terms Specification – defining terms Specification – defining terms Explicitly, or Explicitly, or By implication By implication Prosecution History Prosecution History Extrinsic Evidence Extrinsic Evidence

Vitronics Footnote 6 Footnote 6 Dictionaries and Technical Treatises valuable Dictionaries and Technical Treatises valuable Can be used by judge at any time Can be used by judge at any time Mentioned in footnote in section explaining that extrinsic evidence is not to be used if intrinsic evidence gives clear meaning Mentioned in footnote in section explaining that extrinsic evidence is not to be used if intrinsic evidence gives clear meaning

Implied Definition Classic Case is Bell Atlantic v. Covad Comm., 262 F.3d 1258 (Fed. Cir. 2002) (Lourie, Plager, Gajarsa) Classic Case is Bell Atlantic v. Covad Comm., 262 F.3d 1258 (Fed. Cir. 2002) (Lourie, Plager, Gajarsa) Bell is PO, wants “plurality of different modes” construed to include different rates of transfer Bell is PO, wants “plurality of different modes” construed to include different rates of transfer Court refuses to construe that way Court refuses to construe that way Title separates rates and modes Title separates rates and modes Summary of Invention differentiates rate and mode Summary of Invention differentiates rate and mode Ordinary meaning of mode may permit such construction, but in this patent can not due to implied definition of mode that does not include rate Ordinary meaning of mode may permit such construction, but in this patent can not due to implied definition of mode that does not include rate

Texas Digital (Michel, Schall, Linn) (Michel, Schall, Linn) Problem with starting with the specification – limits the claim terms to the preferred embodiment Problem with starting with the specification – limits the claim terms to the preferred embodiment Need to start with the claim terms Need to start with the claim terms This is not radical – Vitronics said same thing This is not radical – Vitronics said same thing The radical shift comes if the terms are not self-defining The radical shift comes if the terms are not self-defining Use dictionaries and treatises to define claim terms Use dictionaries and treatises to define claim terms Cite Vitronics FN 6 for authority Cite Vitronics FN 6 for authority Unbiased info sources Unbiased info sources Give full ordinary meaning of terms Give full ordinary meaning of terms If are multiple definitions of term, entitled to all of them not disclaimed in specification If are multiple definitions of term, entitled to all of them not disclaimed in specification

Texas Digital Common Complaints Yields overbroad claims (MAP 13:49-57) Yields overbroad claims (MAP 13:49-57) Adds unpredictability – turns into war of dictionaries (Shui) Adds unpredictability – turns into war of dictionaries (Shui) Would electing a dictionary in prosecution solve this? (MAP 7:65-69) (Cleary) Would electing a dictionary in prosecution solve this? (MAP 7:65-69) (Cleary)

Phillips Certified Questions 1-4 are all Dictionary v. Intrinsic Record 1-4 are all Dictionary v. Intrinsic Record Which better serves the Public Notice function? Which better serves the Public Notice function? When (and how) does the specification limit the breadth of the claim terms? When (and how) does the specification limit the breadth of the claim terms? If primarily rely on spec, what role do dictionaries have? If primarily rely on spec, what role do dictionaries have? Should these be viewed as complementary methodologies? Should these be viewed as complementary methodologies?

Amicus Briefs 36 briefs in all 36 briefs in all Diverse authors Diverse authors firms on behalf of clients firms on behalf of clients national and local bar assn’s national and local bar assn’s Closest to en banc opinion – Bar Assn. of District of Columbia (Author: Susan M. Dadio of Burns Doane in Alexandria, VA) Closest to en banc opinion – Bar Assn. of District of Columbia (Author: Susan M. Dadio of Burns Doane in Alexandria, VA) Spec first Spec first Do not limit to preferred embodiment Do not limit to preferred embodiment Do not answer Cybor at this time Do not answer Cybor at this time Would be advisory – result was same in panel and District Court Would be advisory – result was same in panel and District Court

Class on Briefs Hawkins liked ITCTLA (Kipel) brief Hawkins liked ITCTLA (Kipel) brief Everyone else (on 1 st comments) … Everyone else (on 1 st comments) … Lemley Wagner Lemley Wagner

Phillips – Theory Court claims to reapply Vitronics and Markman I – restate proper weight of evidence Claim terms Specification Prosecution History “Properly viewed, the ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire patent.” (MAP 13:36-38)

Phillips – Repudiate Texas Digital The Dictionary Presumption systematically yields overbroad claims The Dictionary Presumption systematically yields overbroad claims Q – Does it? If so, why doesn’t the Court cite any example of an overbroad claim from that method? (MAP 13:49-57) Q – Does it? If so, why doesn’t the Court cite any example of an overbroad claim from that method? (MAP 13:49-57) Acknowledges “primary” concern of limiting claim scope to preferred embodiments Acknowledges “primary” concern of limiting claim scope to preferred embodiments N.B. – Judge Linn (author of Texas Digital) joins without comment N.B. – Judge Linn (author of Texas Digital) joins without comment

Phillips Application Claim Differentiation Need not be at angles Need not be at angles Some dependent claims say baffles at angles Some dependent claims say baffles at angles Some independent claims just say baffles Some independent claims just say baffles Interpret claims so that each word has meaning Interpret claims so that each word has meaning Therefore must not be required that all baffles are at angles Therefore must not be required that all baffles are at angles

Phillips Application Limiting to Preferred Embodiment Not limited to disclosure of baffles at angles Not limited to disclosure of baffles at angles Spec must teach all embodiments Spec must teach all embodiments Teaching of angled baffles describes dependent claims claiming angled baffles Teaching of angled baffles describes dependent claims claiming angled baffles Lourie dissents on point – all disclosure of baffles is at angles Lourie dissents on point – all disclosure of baffles is at angles Point is to deflect – need to be angled to deflect Point is to deflect – need to be angled to deflect Implied definition Implied definition Is this more than patentee deserves then? (Murshak)

Phillips Application Interpret to Preserve Validity Very narrow, rarely used doctrine Very narrow, rarely used doctrine Only to be used if no conclusive answer after “applying all the available tools of claim construction,” term is still ambiguous Only to be used if no conclusive answer after “applying all the available tools of claim construction,” term is still ambiguous Thus not one of the available tools Thus not one of the available tools If used, must be last in analysis If used, must be last in analysis

Phillips Outcome District Court Panel Majority (Lourie) Panel Dissent (Dyk) En banc Majority (Bryson ) Method of Construction 112 ¶6 Vitronics - define by impl. Texas Digital, ordinary meaning Vitronics - claim diff. Baffles must be angled? YesYesNoNo

Phillips – Unanswered Questions When can dictionaries be used? When can dictionaries be used? To help understand definitions of “commonly understood words” (MAP 13: ) – what’s the point? To help understand definitions of “commonly understood words” (MAP 13: ) – what’s the point? Was Texas Digital all about preventing restriction to the preferred embodiment? Was Texas Digital all about preventing restriction to the preferred embodiment? Why did Linn and Dyk join without comment? Why did Linn and Dyk join without comment?

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

Deference – Phillips Question 7 Court certifies question of whether should revisit de novo review of Cybor Court certifies question of whether should revisit de novo review of Cybor Accepts briefing on issue Accepts briefing on issue Many argue Court should not answer – would be advisory opinion on these facts Many argue Court should not answer – would be advisory opinion on these facts Majority of briefs encouraging court to answer seek deference on factual findings underlying claim construction Majority of briefs encouraging court to answer seek deference on factual findings underlying claim construction Declines to address issue in opinion Declines to address issue in opinion Mayer vigorously dissents Mayer vigorously dissents

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

Phillips – Is Mayer right? Ko (and Heller?) say yes – methods of claim construction don’t matter unless there is deference Ko (and Heller?) say yes – methods of claim construction don’t matter unless there is deference Five current judges have expressed need for some deference Five current judges have expressed need for some deference Mayer Mayer Newman (joined Mayer) Newman (joined Mayer) Rader (Cybor dissent) Rader (Cybor dissent) Lourie (Phillips dissent in part – lean towards affirmance unless clear error) Lourie (Phillips dissent in part – lean towards affirmance unless clear error) Bryson (Cybor concurrence – de novo, but don’t throw out what trial court has done) Bryson (Cybor concurrence – de novo, but don’t throw out what trial court has done)

Phillips – Petition for Certiorari AWH filed brief Nov. 9 AWH filed brief Nov. 9 available at _20AWH_20Petition_20for_20Cert_20_282_29.pdf available at _20AWH_20Petition_20for_20Cert_20_282_29.pdf _20AWH_20Petition_20for_20Cert_20_282_29.pdf _20AWH_20Petition_20for_20Cert_20_282_29.pdf Question sought for cert – “Whether the Federal Circuit is correct in holding that all aspects of a district court’s patent claim construction may be reviewed de novo on appeal.” Question sought for cert – “Whether the Federal Circuit is correct in holding that all aspects of a district court’s patent claim construction may be reviewed de novo on appeal.” Reply brief not yet filed Reply brief not yet filed

Chances of Certiorari? Pros Pros Issue now certified before en banc Federal Circuit three times in ten years (Markman I, Cybor, Phillips) Issue now certified before en banc Federal Circuit three times in ten years (Markman I, Cybor, Phillips) Have SCOTUS precedent on “mongrel issues” (Graham v. John Deere, Markman II) Have SCOTUS precedent on “mongrel issues” (Graham v. John Deere, Markman II) Deals with Federal Circuit’s authority (Vornado) Deals with Federal Circuit’s authority (Vornado) Then again, it is a patent case Then again, it is a patent case And they’ve already taken one this term… And they’ve already taken one this term…

Thanks! Phillips may not be over, but this (last) presentation is Phillips may not be over, but this (last) presentation is