Claim Construction: What Can the Phillips Decision Clarify?

Claim Construction: What Can the Phillips Decision Clarify? MEREDITH ADDY February 25, 2005

Claim Construction Where Are We Now? Wasn t Markman supposed to clarify things? Markman v. Westview Instr., Inc., 52 F.2d 967 (Fed. Cir. 1995) (en banc), aff d 517 U.S. 370 (1996). Claim construction is a matter of law for the court. Today, 10 years later is the law any clearer? Does nearly every case really turn on claim construction? What is the proper rubric for claim construction? Deference to the district judge. Is this all really a pure question of law? 2

Does Every Case Turn on Claim Construction and Use Dictionaries? Annual Federal Circuit claim construction output tripled (from 49 to 151 cases), and the district court opinion output more than tripled (from 125 to 406), from 1993 to 2003. * The last nine years have seen more than a ten-fold increase in the number of times per year that the Federal Circuit expressly relies on publicly available reference sources such as dictionaries, encyclopedias, and learned treatises... in majority opinions of the court. * *Both Quotes from: Joseph Scott Miller & James A. Hilsenteger, The Proven Key: Roles & Rules for Dictionaries at the Patent Office and the Courts, forthcoming in 54 AMERICAN UNIVERSITY LAW REVIEW at 4 (May 2005), also available for download at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=577262/. (hereinafter, Miller, Proven Key ). 3

Claim Construction Where Are We Now? Phillips v. AWH Corp., 03-1269, -1286 (argued en banc Feb 8, 2005). 7 Questions: http://www.fedcir.gov/opinions/03-1269o.doc At least 2 Broad Categories: The Rubric: How and to what extent various types of evidence, particularly the specification and dictionaries, should be relied on for claim construction; Deference: What deference, if any, should this Court give a district court s claim construction. See Brief of the United States as Amicus Curiae in Phillips v. AWH, at 2. 4

Phillips Briefing: There were over 30 amicus briefs from such notables as: United States (PTO, DOJ, FTC) ABA AIPLA IPO FCBA Most major city IPLA s files briefs. Both the biotech and electrical/computer industry were well represented. Law firms and law professors filed briefs. 5

Phillips Oral Argument: February 8, 2005 Disappointing from a doctrinal perspective: Court raised all these doctrinal questions in the order granting en banc but oral argument focused on specific facts of the case. Solicitor spoke more about the doctrines, but did not answer that burning question, lurking below the surface: Are there underlying factual issues? Court didn t ask that question Court asked about deference. Solicitor directed the Court to Supreme Court precedent holding that deference is proper. Both parties thought some deference is appropriate in claim construction and that there are some underlying factual issues. 6

Claim Construction Where Are We Now? Are we are back where we started 10 years ago at an en banc decision on claim construction. Not exactly, we do know: Rubric: Intrinsic of primary importance, then extrinsic if necessary. See Vitronics v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996). Deference: Claim construction is a question of law. See Markman. But what about deference? Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc). 7

How Did We Return to an En Banc Claim Construction Case? Vitronics type cases make sense, but.... Interactive Gift Express v. Compuserve, 256 F.3d 1323 (Fed. Cir. 2001). 8 Requires a particular order of intrinsic analysis. claims specification prosecution Cites to Vitronics and Bell Communications, but these cases arguably don t emphasize a particular order of analysis Lays foundation for dictionary approach. Notes that dictionaries, although extrinsic evidence, may be considered with intrinsic evidence. Id. at 1332 n.1. Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002). Elevated the importance of dictionaries over the intrinsic evidence. In fact, Texas Digital suggested starting with dictionaries, and then looking to the intrinsic record only to determine whether the dictionary definition is rebutted. Id. at 1204. Seemed to contradict earlier holdings in Vitronics.

Post Texas Digital -- Battle of the dictionaries! What type? What year? Which one? Which definition within a dictionary? How do most patent attorneys handle the dictionary dilemma? 9

Post Texas Digital Battle of the Dictionaries! Nystrom v. Trex Co., 374 F.3d 1105, 1106 (Fed. Cir. 2004). Interpretation of board to cover wood and any hard surface. Dissent noted that this broad definition likely would not be supported in the specification. Intellectual Property Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1315-16 (Fed. Cir. 2003) Court adopted a restrictive definition of high frequency that was common to all dictionaries consulted. Court rejected the contention that looking to the dictionary first put the cart before the horse. 10

Post Texas Digital Battle of the Dictionaries! Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294 (Fed. Cir. 2003). Dictionaries are only a first step in the analysis. Dissent noted that this broad definition likely would not be supported in the specification. International Rectifier Corp. v. IXYS Corp., 361 F.3d 1363 (Fed. Cir. 2004). Specification must be consulted to determine ordinary meaning. The dictionary in and of itself is not sufficient. Vanderlande Indus. Nederland BC. v. Int l Trade Comm n, 366 F.3d 1311 (Fed. Cir. 2004). General usage dictionaries are irrelevant to technical dictionaries, or even expert testimony that demonstrates that a special meaning or no meaning at all would be applied to a term. 11

Is This Primacy of Dictionaries Correct? A court may consult a dictionary at any time during the proceedings. Vitronics v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996). But not in lieu of the intrinsic evidence.... Even the Federal Circuit has not been consistent with which dictionary definition is uses: Webster s Ninth New Collegiate Dictionary Webster s Third New International Dictionary** Oxford English Dictionary Merriam-Webster Collegiate Dictionary American Heritage Dictionary **(this is the Court s favorite and most quoted dictionary. See Miller, Proven Key, abstract). 12

Reaction to Texas Digital Texas Digital approach considered a competing methodology with the traditional approach. Astrazeneca AB v. Mutual Pharm., 384 F.3d 1333 (Fed. Cir. 2004). Texas Digital Systems cannot be read as holding that a dictionary definition trumps the intrinsic record. CR Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 868 (Fed. Cir. 2004). [O]ur precedent requires that the correct meaning of claim terms is that determined from the standpoint of a person of ordinary skill in the relevant art and at the time of the patent. Looking primarily to the ordinary meaning yields unduly broad claim constructions. Superguide v. DirectTV Enter., 358 F.3d 870 (Fed. Cir. 2004) (Michel, J., concurring). Pressure to take another claim construction case en banc to try to resolve some of these issues. 13

What Can Phillips decide? The Court will reign-in use of dictionaries: Supreme Court precedent supports use of specification: [I]t is fundamental that claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention. United States v. Adams, 383 U.S. 39, 48-49 (1966). Both litigants and the Solicitor argued for emphasis on specification: Primary reliance on dictionaries that are not part of the patent s public record subordinates the patentee s own explanation of his invention in favor of a dictionary definition never at issue during the patent prosecution before the USPTO. USPTO Brief at 9. Most of the amici argued for emphasis on the specification and other intrinsic evidence. 14

Where are we going? Intrinsic Evidence of Primary Importance: Thus, the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. Vitronics, 90 F.3d at 1582 (citations omitted). The specification may still define [a term] by implication such that the meaning may be found or ascertained by a reading of the patent documents. Novartis Pharms. V. Abbott Labs., 375 F.3d 1328, 1334 (Fed. Cir. 2004); accord Bell Atlantic Network Servs. v. Covad Communs. Grp., 262 F.3d 1258, 1271 (Fed. Cir. 2001). 15

The proper place for Dictionaries? Dictionaries: While a dictionary definition should not be the baseline for interpreting a claim term, the objectivity of a dictionary may provide a useful tool in weighing the parties contentions as to the ordinary meaning. USPTO Brief at 14. Extrinsic evidence is to be used for the court's understanding of the patent, not for the purpose of varying or contradicting the terms of the claims. See Markman, 52 F.3d at 981. Indiscriminate reliance on definitions found in dictionaries can often produce absurd results. Renishaw PLC v. Marposs Societá Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). 16

Deference Underlying Factual Issues? Are there really underlying factual issues? Both the litigants in Phillips said yes. Most of the amici said yes. Solicitor did not answer, deferred to the deference question. Will the Federal Circuit rule that claim construction contains underlying factual issues and hence overrule Cybor? Probably not, and not necessary to so rule here. How would such a ruling affect the other precedent following Markman and Cybor? 17

Deference Yet Still a Legal Issue? Could the Federal Circuit rule that the district court s process should be given deference even though claim construction remains a purely legal question? Th[e] weight [given to the trial judge s view] may vary depending on the care, as shown in the record, with which that view was developed, and the information on which it is based. Cybor (Plager, J., concurring). [A] reviewing court should take care both to review findings of historical fact only for clear error and to give due weight to inferences drawn from those facts... Ornelas v. United States, 517 U.S. 690, 699 (1996) (quoting Salve Regina College v. Russell, 499 U.S. 255 (1991)). 18

Deference Yet Still a Legal Issue? Markman held: [T]he court is looking to the extrinsic evidence to assist in its construction of the written document, a task it is required to perform. Id., 52 F.3d at 981. The district court s claim construction, enlightened by such extrinsic evidence as may be helpful, is still based upon the patent and prosecution history. Id. (footnote omitted). In those cases, the Court should defer to the trial court with respect to findings of fact such as credibility determinations and review those findings of fact for clear error. See Brief of Amicus Curiae Intellectual Property Owners Association (IPO) at 15. 19

Deference Yet Still a Legal Issue? Would a ruling by the Federal Circuit that heightened deference is appropriate help remedy high reversal rate? Probably But this case doesn t raise this issue. Here, there is no underlying factual dispute. The decision turns on a legal interpretation of the patent. Even if the court held that heightened deference is appropriate but claim construction still is a purely legal issue, is it just a band-aid on the wound, not a cure? 20

Judge Mayer s dissent from en banc: Until the court is willing to reconsider its holdings in Markman,... and Cybor... that claim construction is a pure question of law subject to de novo review in this court, any attempt to refine the process is futile. Nearly a decade of confusion has resulted from the fiction that claim construction is a matter of law, when it is obvious that it depends on underlying factual determinations which, like all factual questions if disputed, are the province of the trial court, reviewable on appeal for clear error. To pretend otherwise inspires cynicism. Therefore, and because I am convinced that shuffling our current precedent merely continues a charade, I dissent from the en banc order. Phillips v. AWH Corp., 03-1269, -1286 (July 21, 2004) (En Banc Order) (Mayer, J., dissenting) (paragraphing added). 21

Thank you, MEREDITH ADDY