In what may lead to a clarifying opinion regarding patent claim construction, the U.S. Court of Appeals for the Federal Circuit agreed to rehear, en banc, an appeal previously decided by a three-judge panel. Phillips v. AWH Corporation, et al., Case Nos. 03-1269, 1286 (Fed. Cir. July 21, 2004) (Mayer, C.J.).
The April 8, 2004 panel decision of the Federal Circit affirmed the district court’s summary judgment of non-infringement by AWH of Phillips’ wall modules. The district court based its decision on the term "baffle," a claimed element of the wall module. The district court, relying only on the embodiment in the specification, construed the term to mean a baffle that extends inwardly at an angle other than ninety degrees. The Federal Circuit panel, also relying on the specification, affirmed the district court’s construction. Judge Dyk dissented, arguing that the term "baffle" should be given its plain meaning, and should not be limited to an angle other than ninety degrees.
In agreeing to rehear the case en banc, the Federal Circuit asked the parties to brief several issues, including whether dictionaries or the specification should be the primary source for claim construction, or whether both should be used and in what order. It also asked the parties to address whether there are certain cases in which the claim should be narrowly construed to avoid invalidity, what the role of prosecution history and expert testimony should be in claim construction and what level of deference should be given to the trial court’s claim construction. Chief Judge Mayer dissented from the order for rehearing, asserting that the Court should first reconsider its prior holdings that claim construction is a matter of law.
The Federal Circuit decision to rehear the case may lead to clarification of the various inconsistent panel decisions in the area of claim construction. Currently, patent infringement litigation is often unpredictable because of these inconsistent panel decisions. A shift by the Federal Circuit in its approach to claim construction, either towards using a term’s plain meaning supported by dictionaries, or towards relying primarily on the patentee’s own specification, could have a significant impact on
patent scope.
The Federal Circuit specifically asked the U.S. Patent and Trademark Office (USPTO) to submit an amicus curiae brief in the case. This may well lead to more strict procedures by the USPTO requiring clear definition of claim terms in the patent specification itself, thereby changing the manner in which patent practitioners write patent applications. Such requirements would have the greatest impact on patent applications concerning new and emerging technologies, such as nanotechnology and bioinformatics, where claim terms are often not found in existing references.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
