THE USE OF DICTIONARIES IN MARKMAN CLAIM CONSTRUCTION. By Arthur H. Seidel

Transcription

1 THE USE OF DICTIONARIES IN MARKMAN CLAIM CONSTRUCTION Click on the image to review Drinker Biddle s Intellectual Property capabilities. By Arthur H. Seidel S ince Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), there is no room for doubt that patent claim interpretation is a conclusion of law to be determined by judges. As a result, Markman hearings to determine the meaning and scope of patent claims are routine. After Markman, it was generally accepted that claim construction should be determined by intrinsic evidence, with extrinsic evidence being secondary. Until Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002), the role of dictionaries in patent claim interpretation was far from clear. Texas Digital squarely addressed the role that dictionaries should play in Markman claim construction. Texas Digital has been characterized in a recent Journal of the Patent & Trademark Society ( J.P.T.O.S. ) article as at least a momentary high water mark toward attributing increasing significance to dictionaries under Markman. 1 Intrinsic Evidence and Dictionaries Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) defined intrinsic evidence as the patent itself, the claims, the specification and, if in evidence, the prosecution history. Vitronics established a hierarchy of intrinsic evidence, starting with the words of the claims, and then moving to the words of the specification, with the specification being the single best guide to the meaning of a disputed term. Id. at Thereafter, if in evidence, the prosecution history was to be consulted. The Court noted that the prosecution history frequently defines as to what the claims do not cover. Vitronics distinguished intrinsic evidence from extrinsic evidence, namely evidence which was external to the patent file history and illustrated by dictionaries, and technical treatises and articles. Id. at The hierarchy espoused by Vitronics was challenged, and possibly restructured by Texas Digital. Using a statement in Vitronics at fn. 6 that technical treatises and dictionaries... are worthy of special note. Judges are free to consult such resources at any time... and may also rely on dictionary definitions when construing claim terms..., the unanimous court in Texas Digital per Judge Linn went on to hold that categorizing them as extrinsic evidence or even a special form of 1 Hattenbach, 85 J.P.T.O.S. 181 (2003). See also Barney, 85 J.P.T.O.S. 101, (2003).

2 extrinsic evidence is misplaced and does not inform the analysis. Id. at However, the Texas Digital opinion then subordinated dictionary definitions to the intrinsic record, cautioning that the intrinsic record must always be consulted to identify which of the different possible dictionary meanings of the claim terms in issue is most consistent with the use of the words by the inventor. Id. at Complicating the role of dictionaries is Judge Michel s opinion in Lacks Indus. Inc. v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335 (Fed. Cir. 3/13/03). Judge Michel was on the panel of Texas Digital, and at its oral argument was the most active judicial participant. Despite Judge Linn s view that designating dictionary definitions as extrinsic evidence was misplaced, Judge Michel viewed dictionary definitions as extrinsic evidence in Lacks: In engaging in the first step, claim construction, we begin with an examination of the intrinsic evidence, i.e., the claims, the other portions of the specification, and the prosecution history (if in evidence). Gart v. Logitech, Inc., 254 F.3d 1334, 1339, 59 USPQ2d 1290, (Fed. Cir. 2001). Courts may also review extrinsic evidence in construing a claim. E.g., Spectrum Int l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378, 49 USPQ2d 1065, 1068 (Fed. Cir. 1998). Additionally, dictionary definitions, although extrinsic, may be used to establish a claim term s ordinary meaning. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6, 39 USPQ2d 1573, 1580 n.6 (Fed. Cir. 1996). Judge Michel went on to reject the dictionary definitions offered by Lacks, both because the dictionary definitions did not provide a plain meaning and because the District Court s construction from the claim language and the specification appeared more credible: Lacks arguments fail to persuade us that its construction is correct. First, the dictionary definitions do not provide a plain meaning. As McKechnie points out, these definitions also fit the district court s construction. Second, Lacks amendment to overcome the Beith patent, although providing some support for Lacks construction, does not outweigh the support for the district court s construction present in the claim language and the specification. The district court observed that the limitation appears at three points in claim 1 of the 809 patent and concluded, from this context, that the axial peripheral lip is not covered by the panel and touches the edge of the decorative layer in such a way that aesthetic blending occurs. Lacks, 55 F. Supp. 2d at 710. The final point is key, because under Lacks construction this aesthetic blending would have to occur between two things that are 2

3 not adjacent: the outermost edge of the wheel rim and the edge of the cladding. While this is not impossible, it is unlikely and the district court s construction avoids such a problem. In sum, the weight of the intrinsic evidence supports the district court s construction and we therefore uphold the district court s construction of axial peripheral lip. Hence, it now appears that both dictionary definitions along with intrinsic evidence ought to be examined, with the intrinsic evidence being given more weight. However, the Federal Circuit has not clarified the sequential priority between dictionaries and intrinsic evidence (assuming dictionaries are not intrinsic evidence). This leaves the open question as to which should be consulted first, the dictionaries or the intrinsic evidence. Hattenbach has termed this in the title of his article as Chickens, Eggs, and Other Impediments to Escalating Reliance on Dictionaries in Patent Claim Construction. As to the question of whether dictionaries are always authoritative, precise and scholarly, he cites to an article pointing up that they are not, Aprill, The Law Of The Word: Dictionary Shopping in the Supreme Court, 30 Ariz. St. L.J. 275, 277, 287 and 297 (1998). In a closing footnote he also cites to the best seller by Simon Winchester, The Professor and the Madman- A Tale of Murder, Insanity, and the Making of the Oxford English Dictionary (1998). This book noted that the Oxford English Dictionary, probably the most prestigious dictionary in the English language, was based in significant part on the contributions of a psychopathic murderer, who furnished lexicographic information from prison over a period of 20 years. Caveats Regarding Use of Dictionary Definitions Both because of the paucity of the English language as to new technological advances and because it is black letter law that where a term is explicitly defined in a patent specification that definition is controlling, there are risks attendant to the use of dictionary definitions, especially when used when there are multiple dictionary definitions for a term. When a patentee functions as his own lexicographer, his definition is controlling. In one of its first opinions, the newly created Federal Circuit held that the terms of a patent claim are given their ordinary meaning to one of skill in the art unless it appears from the patent and file history that the terms were used differently by the inventor. Envirotech v. Al George, Inc., 730 F.2d 753, 759 (Fed. Cir. 1984). The definition selected by the patent applicant controls, Renishaw PLC v. Marposs Soc., 158 F.3d 1243, 1249 (Fed. Cir. 1998). The Federal Circuit has even held that patent specifications can define terms by amplification, Bell Atlantic Network Services v. Kovad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). Hence, it would appear that when the file history does not provide the inventor s definition for a term, the Court may consult an appropriate dictionary to determine the ordinary meaning to one of skill in the art for that term. 3

4 Texas Digital held that when a court is faced with multiple dictionary definitions, the intrinsic record must always be consulted to identify which of the different possible dictionary meanings of the claim terms in issue is most consistent with the use of the words by the inventor. Furthermore, If more than one dictionary definition is consistent with the use of the words in the intrinsic record, the claim terms may be construed to encompass all such consistent meanings, Texas Digital at For this Texas Digital cited Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1343 (Fed. Cir. 2001), which had held that the claim term portion may be interpreted in accordance with the dictionary definitions to encompass both separate and integral parts of an object. 2 As between conflicting meanings between dictionaries and the intrinsic record, relying upon Renishaw PLC v. Marposs Soc. Per Anzoni, 158 F.3d 1243, 1250, (Fed. Cir. 1998), Texas Digital stated: The construction that stays true to the claim language and most naturally aligns with the patent s description of the invention will be, in the end, the correct construction, and [A] common meaning, such as one expressed in a relevant dictionary, that flies in the face of the patent disclosure is undeserving of fealty. As recognized in Liebscher v. Boothroyd, 258 F.2d 948, 951 (CCPA 1958) and cited in Texas Digital: Indiscriminant reliance on definitions found in dictionaries can often produce absurd results. Hence, a dictionary definition may not displace the intrinsic record. Texas Digital repeatedly emphasized that the dictionary to be selected (or encyclopedia or treatise) must be relevant. Where technical terms are involved in the patent claims, the dictionary should be a technical dictionary, and where non-technical words are involved the dictionary should be a general English language dictionary. Where a word appears to be drawn from general parlance, there is a presumption that it carries its ordinary meaning as contained in a general dictionary. However, if the word has a special meaning to one skilled in the art, then one must look to the relevant technical dictionary. Hence, general dictionaries, preferably published in the United States as opposed to Great Britain, should be used for non-technical words, and specialized dictionaries should be used for technical terms. The Federal Circuit has recognized this distinction and has held that a general dictionary definition is secondary to the specific meaning of a technical term as it is used and understood in a particular technical field, AFG Industries, Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239, (Fed. Cir. 2001). There is annexed from 6 Gilson, Trademark Protection and Practice, App. 10 a collection of General English Language Dictionaries, and a further collection of dictionaries dealing with the Vocabulary of Specialized Fields. The availability of dictionaries should not obscure the overwhelming importance of the language in the specification and claims. Judge Michel s opinion in Lacks found both that the dictionary definitions were not always dispositive, and in appropriate cases were outweighed by the 2 The Encarta Unabridged World English Dictionary has forty-one distinct meanings for set as a verb, another fifteen distinct meanings for set as a noun and another six distinctive meanings for set as an adjective. 4

5 language of the claims and of the specification. Furthermore, dictionaries are not a panacea and may suffer from handicaps, such as not keeping abreast of technology. Also, words may not exist to describe the invention. Under those circumstances, new terms must be created (patentees serving as their own lexicographer) or a multiple word description that is not to be found in any dictionary must be used. A predecessor court to the Federal Circuit recognized these handicaps decades ago, Autogiro Co. of America v. U.S., 384 F.2d 391 (Ct. Cl. 1967). Hattenbach argues in his J.P.T.O.S. article that increased reliance on dictionaries in claim construction may lead to new battlefields. Opposing experts could fight over the selection of the most appropriate dictionary for particular circumstances and/or the choice of definitions within a dictionary. Hattenbach foresees serious difficulties if a court were to consult dictionaries before consulting patent specifications. He believes that litigants might argue over the implications relative to dictionary definitions with vast numbers of potential dictionaries offered by the parties, complicating the argument. While Hattenbach s fears have some merit, he does not offer a solution to the problems facing our district courts that have led to a 40% reversal rate in Markman hearings. A member of our firm s litigation team that litigated Texas Digital was fortunate in being able to speak to Judge Linn (long after the decision was published) as to why the Texas Digital opinion devoted so much attention to dictionaries. Judge Linn explained that he had attended a conference of district court judges that included a session on patent claim construction. He was repeatedly told by district court judges that interpreting patent claims was their major problem in patent cases, as reflected in the high reversal rate in Markman appeals. District judge after district judge suggested to him that they wanted to adopt dictionary definitions because such definitions were very clear, unbiased, and could be understood by non-technical judges. However, many district judges were concerned that might lead to error, because the Federal Circuit had characterized dictionary definitions as extrinsic evidence, and hence inferior to intrinsic evidence. A number of the judges even asked Judge Linn if he thought it would be appropriate for them to adopt dictionary definitions without attributing their sources, namely, not stating that the definitions were derived from dictionaries. Shortly after this conference of district judges, Judge Linn had the opportunity to write the opinion in Texas Digital. As a result, Judge Linn decided to make it very clear what district judges should do with dictionaries when construing claim language. In Texas Digital, Judge Linn made a very detailed review of the approaches to claim construction that had been used by the Federal Circuit. He emphasized that the analytical focus both begins and remains centered on the language of the claims themselves, since that is the language the patentee chose to particularly point out and distinctly claim the subject matter which the patentee regarded as his invention. Judge Linn added that, unless compelled to do otherwise, a court is to give a claim term its full range of its ordinary meaning as understood by persons skilled in the relevant art. He then flatly stated that dictionaries, encyclopedias and treatises are particularly useful resources to 5

6 assist the court in determining the ordinary and custom meanings of claim terms, and that dictionaries are always available to a court to aid in the task of determining meanings, at any stage of a proceeding. This means that both a district court and the Federal Circuit are free to consult dictionaries, encyclopedias, and treatises at any time to help determine the meaning of claim terms. As to the hierarchical status of dictionaries versus intrinsic evidence, he deprecated categorizing dictionaries as extrinsic evidence or even a special form of extrinsic evidence, and observed that categorizing them with such terminology was misplaced and does not inform the analysis. Judge Linn found support for the availability of dictionaries to interpret claims in Vanguard Prods. Corp. v. Parker Hannifan Corp., 234 F.3d 1370, 1372 (Fed. Cir. 2000): A dictionary is not prohibited extrinsic evidence, and is an available resource of claim construction. In what is clearly an attempt by Judge Linn to give the district courts an objective standard that would avoid reliance on the arguments of highly paid counsel or highly paid experts, he stated at 308 F.3d 1203: Such references [dictionaries, treatises and encyclopedias] are unbiased reflections of common understanding not influenced by expert testimony or events subsequent to the fixing of the intrinsic record by the grant of a patent, not colored by the motives of the parties, and not inspired by litigation. Indeed, these materials may be the most meaningful sources of information to aid judges in better understanding both the technology and the terminology used by those skilled in the art to describe the technology. As between dictionaries which were available as of a patent s filing date as opposed to dictionaries available as of the time a patent was issued, he chose the latter as being an objective resource that served as a reliable source of information on the meaning that would have been attributed to claim terms by those of skill in the art as of the date of the patent s issuance. This conflicts with a number of earlier Federal Circuit decisions, which led to the comment in Inverness Medical Switzerland v. Warner Lambert Co., 309 F.3d 1373, 1378 n.2 (Fed. Cir. 2002): Our decisions have not always been consistent as to whether the pertinent date [publication date of dictionary] is the filing date of the application or the issue date of the patent. Hence, the inconsistencies in Federal Circuit decisions as to the pertinent dictionary date, namely the filing date of the involved patent application or its issue date, remains unresolved. It is to be noted that in mature technologies, the meaning of technical terms is usually relatively fixed. However, in young technologies the meaning of a technical term may vary within short periods of time. Hence, this inconsistency within the Federal Circuit may have serious consequences with young technologies. Limitations in the Specification May Not Be Read into Claims in Absence of Clear Direction to do so 6

7 It is classical patent law that limitations in the specification do not limit the plain language of the claims, unless the specification directs that the claims be so limited. Frequently, if the specification discloses only one embodiment, attempts are made to limit the claims to that embodiment. That is improper. As the Federal Circuit stated shortly after its creation: that a specification describes only one embodiment does not require that each claim be limited to that one embodiment, SRI Int l., Inc. v. Matushita Elec. Corp., 775 F.2d 1107,1121, n.14 (Fed. Cir. 1985). Id. at The court noted that the critical factor is the meaning of the words of the claims to persons of skill in the art. Hence, if such persons read the words of the claims to limit the claims to the single embodiment, that would be controlling. However, if such persons did not understand the claims to be so limited then restricting the claims to the disclosed embodiment would mandate the wrong result and would violate our proscription of not reading limitations from the specification into the claims. Id. at It should always be remembered that the interpretation of a claim is a question of law and not a finding of fact. Hence, the judge is always free to adopt what he deems to be the best approach. However, because the construction of a claim is a conclusion of law and not a finding of fact, an interesting issue may arise on appellate review. Under F.R.C.P. 52: Findings of fact, whether based on oral or documentary evidence, shall not be set aside unless clearly erroneous. Conclusions of law are not entitled to this preference. Hence, while construing a document to determine the content of prior art is subject to the clearly erroneous provision of Rule 52, it would appear that preferring one dictionary to another, or one dictionary definition to another, does not receive parallel treatment. Prior Writings by Patentee or Use of Other Patents to Define Term Prior writings or prior patents of the patentee, or of others, not rising to the level of a treatise or an article in a peer-reviewed journal have sometimes been offered to construe patent terms. Though the defendant in Texas Digital introduced a patent by the same inventor to indicate the meaning of a claim term, that approach was not accepted by the Federal Circuit, which set the determination as meanings that would have been attributed by those of skill in the relevant art to any disputed terms used by the inventors in the claims. A possible reason for the courts not considering prior patents by the patentee of a patent to construe patent claims is that the inventor usually does not prepare the patent application, but it is prepared by his patent attorney. 3 Somewhat analogously, a prior patent may be focused on a different issue from that of the patent in suit. Furthermore, the construction of a patent claim in the absence of the inventor being his own lexicographer is what one of ordinary skill in the art would understand was meant by the claim language. Construing Phrases Claim terms that must be construed are frequently more than a single word and comprise phrases. In Texas Digital the word repeatedly was held to be correctly construed by the District 3 In Texas Digital, the inventor alone drafted and prosecuted the patents in suit, without the aid of a patent attorney or agent. 7

8 Court. However, the District Court s construction of the phrase repeatedly substantially simultaneously activating was held to be in error in that it ignored the meaning of the term activating. Hence, in construing phrases, close attention must be paid to the tense of a verb, as the Court drew a distinction between activating and activated. Means Plus Function Claims The claims involved in Texas Digital included means plus function limitations in many of the claims, such as: color control means for selectively controlling the durations of the pulses applied to the light sources in selected display areas to control the portions of the primary color light signals emitted therefrom, to thereby control the color of the exhibited display unit. Texas Digital held that this limitation was subject to 35 U.S.C. 112, 6 because it is expressed in means plus function language and because it does not recite definite structure in support of its function. The Court addressed the two steps that must be followed in construing a means plus function limitation, namely, to first identify the function of the means plus function limitation and then to identify the corresponding structure in the written description necessary to perform that function. Id. at In construing 35 U.S.C. 112, 6, a court cannot use expert testimony to broaden the court s view of corresponding structure in the second step. In Texas Digital, the district court was reversed because it identified a broad array of possible structures not mentioned anywhere in the specification in its identifying of corresponding structure necessary to perform the stated function: Where the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight. Vitronics, 90 F.3d at 1584, 39 USPQ2d at The converter means performs the function of converting the display color control signals to obtain complementary color control signals. The corresponding structure includes inverters 26a-c depicted in Fig. 3 and described in the specification at col. 3, ll , and col. 4, ll The converter means is limited to this corresponding structure and equivalents thereof. Id. at

9 The Texas Digital Court looked with disfavor on attempts to broaden the disclosure of corresponding structure to the recited means plus function clause. In Texas Digital, the patentee attempted to go beyond the specification by inter alia relying on the disclosure of a figure from the patent as well as the specification language. This was roundly rejected by the Court: Concerning the district court s identification of corresponding structure, it is undisputed that such structure includes the non-inverting buses described in the specification. However, the district court ventures beyond the specification to include in its construction any firmware, software and/or hardware that performs the identified function. Committing the same error as with the converter means, the district court relied on expert testimony to broaden its interpretation of the corresponding structure beyond that appearing in the specification. Although TDS argues that Figure 2 identifies structure broader than the inverting and non-inverting buses described in the written description, Figure 2 fails to describe any structure for the first and second means sufficient to comport with section 112, paragraph six. If a patentee fails to disclose an adequate corresponding structure in the specification, the patentee may fail to satisfy the bargain embodied in the statutory quid pro quo of section 112, paragraph six. See Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1360, 54 USPQ2d 1308, 1313 (Fed. Cir. 2000). Notwithstanding its adequacy, Figure 2 provides no support whatsoever for the district court s identification of the corresponding structure as including any firmware, software and/or hardware. We conclude that the district court s claim construction for first means and second means was flawed to the extent that it misidentified the functions recited in claim 4 of the 890 patent and included in the corresponding structure any firmware, software and/or hardware. Id. at Prejudicial Error That a district court errs in construing claim limitations is by itself not enough to challenge jury instructions with respect thereto. For a challenge to jury instructions to be successful, it is necessary to demonstrate legal error. Even further, a party challenging a jury instruction must demonstrate both that the jury instructions actually given were fatally flawed and that the requested instruction was proper and could have corrected the flaw. Texas Digital at In other words, the claim construction errors committed by the district court must be prejudicial. 9

10 CONCLUSION Virtually all Federal Circuit precedent and Markman claims can be reconciled easily if one conforms to the following: (a) Always begin with the wording of the claims; (b) (c) (d) (e) If the claim language is clear on its face, there s no need to consult any other evidence; If the claim language is not clear, other evidence may be consulted, including dictionaries; Dictionary definitions may be applied as long as they do not conflict with what the patentee may have said in the specification or prosecution history about the subject claim terms; and If the patentee doesn t say anything about the claim term, a dictionary definition is the best evidence of what those skilled in the art would understand the term to mean. * * * 10

11 Arthur H. Seidel is of counsel in the Intellectual Property Practice Group of Drinker Biddle & Reath LLP, a full service law firm of more than 450 lawyers that was founded in Mr. Seidel s intellectual property practice spans more than 55 years, including the founding of a boutique IP firm that was combined with Drinker Biddle in This paper was included in the Pennsylvania Bar Institute Program Markman Hearings, Litigating Patent Infringement Claims held in Pittsburgh on July 22, 2003 and in Philadelphia on July 28, One Logan Square 18 th and Cherry Streets Philadelphia, PA Arthur Seidel (fax) Arthur.Seidel@dbr.com Philadelphia New York Washington Los Angeles San Francisco Princeton Florham Park Berwyn Wilmington 2003 Drinker Biddle & Reath LLP, a Pennsylvania limited liability partnership. All rights reserved. This discussion is not intended to constitute legal advice regarding any client s legal problems or specific questions and should not be relied upon as such. 11