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July 13, 2005

Phillips: Look to the Intrinsic Evidence

The eagerly awaited en banc opinion in Phillips v. AWH Corp. came down from the Federal Circuit yesterday, and while it turned away from the use of dictionaries and other extrinsic evidence in claim construction, it was silent on one of questions it posed in requesting amicus briefs:  whether deference should be accorded to the claim construction of trial courts.  Hewing more tightly to the Supreme Court’s opinion in Markman v. Westview Instruments, 517 U.S. 370 (1996), Judge Bryson’s opinion for the majority criticized the claim construction approach of Texas Digital Systems v. Telegenix, 308 F.3d 1193 (Fed. Cir. 2002), which directed courts to consult the specification for claim interpretation only after the ordinary meaning of a disputed claim term was determined, with the assistance of a dictionary, treatise, or other source.  Decisions in the years since Texas Digital have varied widely on the use of dictionary definitions in claim construction, and Phillips now focuses claim construction back on the intrinsic evidence of the specification and prosecution history, and away from extrinsic evidence.

But what of the possibility that the Federal Circuit was considering moving to a clear error standard in reviewing claim constructions as questions of fact and not law?  Giving deference to the trial courts' claim constructions in the absence of clear error would presumably lead to fewer reversals of constructions on appeal.  Despite having raised the issue sua sponte, and even though the court received a plethora of amicus briefs on the subject, Part VI of Phillips stated only that “[a]fter consideration of the matter, we have decided not to address that issue at this time.”  Judge Mayer’s dramatic dissent likened the majority’s refusal to tackle the question as “akin to rearranging the deck chairs on the Titanic,” and at a minimum, Phillips leaves litigants and trial courts with the prospect of continuing high de novo reversal rates on claim construction.  Does the Federal Circuit’s request for briefing on the topic, but subsequent refusal to address it, portend a split among the judges?  We almost certainly have not heard the last from the Federal Circuit on the appropriate standard for reviewing claim construction.  What do you think?

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I agree with your assessment of the Phillips decision. Further, as an in-house patent attorney, I read the decision as a broad guideline for how claim construction should be handled by the lower court judges. At the very least, no matter what the circumstances, greater weight should be placed on the specification and prosecution history before ever turning to extrinsic evidence to evaluate the meaning of the claims. Each dispute will have its own set of circumstances that will come into play that may result in a reversal later own.

As an aside, I suggested in my blog, IP Counsel Blog (http://ipcounsel.blogspot.com), that it is always a good idea to include a glossary of terms with both broad and narrow or specific definitions. This would allow you to support your narrow interpretations during prosecution and then hopefully be able to argue for a more broad meaning when asserting your claims as a patentee. Any thoughts?

ipcounsel.blogspot.com

Posted by: Todd Mayover | Jul 20, 2005 3:28:05 PM

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