Thursday, September 23, 2004

Amicus briefs in Phillips

The Patently Obvious blog (Dennis Crouch) has links to several of the amicus briefs filed in Phillips v. AWH (2004 U.S. App. LEXIS 15065), a case that may resolve issues in the Texas Digital line of cases (308 F.3d 1193 (CAFC 2002)).

I notice that the brief of IP section of the ABA, filed Sept. 20, responded to Judge Rader's suggestion.

The issues upon which the court requested briefing (and a few of my comments) are as follows (see Int. Prop. Today, pp. 34-37 (Sept. 2004)):

1. Is the public notice function of patent claims better served by referencing primarily to technical and general purpose dictionaries and similar sources to interpret a claim term or by looking primarily to the patentee’’s use of the term in the specification? If both sources are to be consulted, in what order?
2. If dictionaries should serve as the primary source for claim interpretation, should the specification limit the full scope of claim language (as defined by the dictionaries) only when the patentee has acted as his own lexicographer or when the specification reflects a clear disclaimer of claim scope? If so, what language in the specification will satisfy those conditions? What use should be made of general as opposed to technical dictionaries? How does the concept of ordinary meaning apply if there are multiple dictionary definitions of the same term? If the dictionary provides multiple potentially applicable definitions for a term, is it appropriate to look to the specification to determine what definition or definitions should apply?
3. If the primary source for claim construction should be the specification, what use should be made of dictionaries? Should the range of the ordinary meaning of claim language be limited to the scope of the invention disclosed in the specification, for example, when only a single embodiment is disclosed and no other indications of breadth are disclosed?
4. Instead of viewing the claim construction methodologies in the majority and dissent of the now-vacated panel decision as alternative, conflicting approaches, should the two approaches be treated as complementary methodologies such that there is a dual restriction on claim scope, and a patentee must satisfy both limiting methodologies in order to establish the claim coverage it seeks?
5. When, if ever, should claim language be narrowly construed for the sole purpose of avoiding invalidity under, e.g., 35 U.S.C. §§§§ 102, 103 and 112?
6. What role should prosecution history and expert testimony by one of ordinary skill in the art play in determining the meaning of the disputed claim terms?
7. Consistent with the Supreme Court’’s decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and our en banc decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (CAFC 1998), is it appropriate for this court to accord any deference to any aspect of trial court claim construction rulings? If so, on what aspects, in what circumstances, and to what extent?

The touchstone for divining the meaning of a term of art should be the understanding of that term by one of ordinary skill. One of ordinary skill would view a term in the context of its use, so one suspects that a definition of a term of art in the specification should control over dictionary definitions. Further, in the absence of a definition of a term of art in the specification (e.g., hydrosol ), the meaning understood by artisans is intended, so that a technical dictionary definition should suffice and control over a general dictionary definition. General dictionaries could be consulted for the meaning of non-technical words. In all of this, one has to distinguish issues about term definition from issues about allowable scope through written description limitations. One suspects that issues from University of Rochester v. Searle may still linger.

Of the hydrosol case:

See discussion of the meaning of hydrosol in Novartis v. Eon, 363 F.3d 1306 (CAFC 2004) in Lawrence B. Ebert, Int. Prop. Today, p. 8 (May 2004): “Separate from the specific technical issues pertaining to hydrosol, the larger concern with Novartis is with the approach in which
general purpose dictionaries, which are not concerned with technical nuances, can be used to limit claim terms in ways which might not be apparent to one of ordinary skill and which might not accord with the knowledge of one of ordinary skill. A technical person would not go to Webster's to learn about the meaning of hydrosol, and would not rely on such definition in research.” In Phillips, the concern was over the meaning of “baffles” in vandal-resistant building wall modules, with the initial holding that the claim in question covered only baffles not oriented at 90 degrees to the wall. The Innova case is also relevant to term meaning and written description.

Of the Rochester case:

Contemplate endnote 5 of James J. Kelley, Are there 2 or 3 requirements in 35 USC 112 P1?, Int. Prop. Today, p. 34 (Jan. 2004) in comparison to Judge Rader’s dissent from the decision not to hear the case en banc (Univ. Of Rochester v. Searle, 2004 U.S. App. LEXIS 13784, on appeal from 358 F.3d 916 (CAFC 2004)) wherein Judge Rader said “Indeed a brief survey of the literature on this topic, an astounding amount in a few short years, shows 31 articles criticizing the Eli Lilly doctrine, 7 articles defending the doctrine, and 16 neutrally commenting on the state of this evolving case law.” Of the Rochester decision, see also Lawrence B. Ebert, There's Always Something There To Remind You, Int. Prop. Today, p. 49 (May 2003).


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