Monday, October 25, 2004

Background on Phillips v. AWH, 376 F.3d 1382 (CAFC 2004)

The Phillips case, currently pending before the Federal Circuit, is recognized as a significant case for the future of patent litigation. The Phillips case, once decided, will give some guidance on how the meaing of terms in patent claims will be determined. For example, the first question to be decided is:

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?

HOWEVER, one judge is skeptical that the Phillips case will yield a final resolution. In dissent, Chief Judge Mayer wrote:

Until the court is willing to reconsider its holdings in Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd on other grounds, 517 U.S. 370, 134 L. Ed. 2d 577, 116 S. Ct. 1384 (1996), and Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), 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 [**7] 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.
[376 F3d at 1384]

With the legal significance in mind, it is useful to contemplate some of the underlying details of what this case is about.

from Daily Camera, October 24, 2004, on the case Phillips v. AWH, 376 F.3d 1382 (CAFC 2004), 2004 US App LEXIS 15065, now pending before an en banc Federal Circuit:

-->The squabble in question dates back to the 1990s.

Phillips, who lives near Estes Park, says AWH infringed on a patent he holds for steel-plate panels used in prison cells after his contract work expired with the company.

The sheet metal products maker sold its own panels to seven prison projects in a six-year span after the contract with Phillips. It then exited that business, citing economic concerns.

Phillips' patent details the use of steel baffles inside his panels. The panels are sturdy, diminish noise, resist fire and deflect projectiles, such as bullets, the patent says.

Phillips says the baffles allow all of those things to happen.

AWH says the patent only suggests the baffles, by connecting to form an intermediate barrier inside the panels, help deflect projectiles. AWH says it only used steel studs inside its panels as a strengthening mechanism, not for deflection.

Phillips hired Boulder attorney Carl Manthei and filed a lawsuit in district court in 1997 seeking damages. AWH hired Mark Fischer, a lawyer with Boulder-based Chrisman, Bynum & Johnson, which has since merged with Faegre & Benson.

Both the trial court and the appeals court favored AWH, although each used slightly different reasons. But the crux of the decisions centered on how terms are defined in the patent.

Manthei says his client's patent uses the word baffle to generally describe all of the features performed by the panel, and a dictionary definition suggests as much.

The Webster's New World Dictionary explains a baffle "as to interfere with; hinder; impede .... an obstructing device, as a wall or screen to hold back or turn aside the flow of liquids, gases."

"Our position is that baffle means what the dictionary says it means," he says.

The trial court, though, said Phillips' panels, as described in his patent, use the baffles specifically for deflection.

The three-judge appeals court favored AWH in a 2-1 decision, the one dissenter saying a dictionary should be used.

****20 to 50%?

Appeals courts often disagree with the way trial courts define terms in patents, an expensive source of frustration for plaintiffs and defendants.

The ABA's Dunner says the problem is significant, adding various observers estimate the issue arises anywhere from 20 percent to 50 percent of the time. <--


Edward H. Phillips has several patents in the area of baffles.

-->US 4,928,468, Filed: December 5, 1988

first claim:
1. A generally rectangular building panel module for defining at least a portion of a building wall, floor, or ceiling when a plurality of modules are assembled, the module comprising:

(a) at least three rectangular metallic plates arranged in parallel to define a hollow, generally rectangular panel module having a pair of spaced, substantially parallel outer faces, at least one of the plates including inwardly extending legs and being symmetrical relative to a longitudinal centerline, at least two of the plates including at least one inwardly extending leg that is joined to an inwardly extending leg of an adjacent plate on the same face of the module to define a longitudinally extending I-beam element having a central web member and a pair of spaced, substantially parallel transverse end members extending outwardly from longitudinally extending edges of the central web member, the end members including an outer end member defining a part of a panel module outer face and an inner end member spaced inwardly from each of the panel module faces, the inner end members each defining first baffle members positioned within the interior of the panel module, the I-beam element providing longitudinal stiffness to the panel module to withstand longitudinally applied compression loads and to provide transverse strength to the panel module to withstand tranversely applied bending loads;

(b) a discontinuous intermediate inner wall positioned between the outer faces, the inner wall defined by respective ones of the first baffle members and by transversely offset second baffle members carried by at least one end leg of each of the plates plates, the first and second baffle members being substantially planar and positioned relative to each other in overlapping relationship and spaced from each other in a transverse direction of the module to prevent direct transmission therebetween of heat and sound and to prevent unimpeded passage through the module of ballistic projectiles that penetrate one face of the module, and thereby provide resistance to passage through the module of ballistic projectiles heat, and sound; and

(c) end cap means extending across respective longitudinally spaced ends of the panel module for interconnecting respective ones of the plates to provide a unitary panel module that can be handled and transported as a unit for assembly with correspondingly-shaped panel modules for defining a portion of a structural, load bearing building surface.

[no claim of priority to other applications. Subsequently cited by four US patents, including 5,228,257]

-->US 4,731,964 This is a continuation-in-part of copending application Ser. No. 852,021, filed Apr. 14, 1986 now U.S. Pat. No. 4,677,798.

first claim:
. A building panel element for forming a part of a building wall surface, said element comprising;

(a) a generally rectangular metallic wall member having an inner wall surface and an outer wall surface, said wall member having a predetermined height and width and including longitudinally extending edges and laterally extending edges;

(b) a pair of laterally spaced baffle members each extending inwardly from respective ones of said longitudinal edges, at least one of said baffle members defining an acute angle with said inner wall surface; and

(c) end flanges carried along longitudinally extending innermost edges of each of said baffle members and extending inwardly toward the inner wall surface of the panel element.

--> US 4,677,798 Filed: April 14, 1986

first claim:

1. Building modules adapted to fit together for construction of fire, sound and impact resistant security barriers and rooms for use in securing records and persons, comprising in combination, an outer shell of substantially parallelepiped shaped with two outer steel plate panel sections of greater surface area serving as inner and outer walls for a structure when a plurality of the modules are fitted together, sealant means spacing the two panel sections from steel to steel contact with each other by a thermal-acoustical barrier material, and further means disposed inside the shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel shell walls.

[no claim of priority to earlier applications. Subsequently cited by four US patents, including US 5,228,257.]


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