Claim construction is one of the most important issues, if not the most important issue, in patent law. However, the rules on how one properly interprets a claim have been difficult and confusing, if not at times inconsistent. Help may be on the horizon; certainty and clarification may be coming. On July 21, 2004, the U.S. Court of Appeals for the Federal Circuit granted a petition to rehear en banc a case that hopefully will help resolve issues concerning the construction of patent claims. The case is Phillips v. AWH Corp., No. 03-1269, -1286.
The court invited the parties, as well as other interested persons or organizations, to submit additional briefs on seven specific issues of claim construction. These issues included:
- Whether dictionaries or the specification should be the primary source for claim construction
- Whether claim construction should be influenced for the sole purpose of avoiding invalidity
- What is the role of expert testimony and the prosecution history in interpreting the meaning of disputed claim terms
- To what extent, if any, should the federal circuit defer to the trial court on claim construction
Judge Rader concurred in the order. However, Judge Rader wanted the court to obtain additional commentary on the issue of whether "algorithmic" rules can be applied to claim construction such as whether to use the specification first or dictionaries first in interpreting claims.
Chief Judge Mayer dissented from the order. He stated that "Nearly a decade of confusion has resulted from the fiction that claim construction is a matter of law." It was his view that hearing this case en banc "continues a charade" unless the court reconsiders its precedent that claim construction is a matter of law.
The court’s decision in this en banc case promises to be one of the most important decisions of the court in the last 10 years.
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