Wednesday, July 13, 2005

The oddity in Phillips v. AWH

Several comments [in italics below] by Aslan Baghdadi in Legal Times in April 4 are worth considering in light of the July 12 decision.

Recall that it was the defense (AWH) that argued for the primacy of the specification in interpretation:

The defendant's attorney, Mark Fischer of the Boulder, Colo., office
of Faegre & Benson, clearly came prepared to answer all seven questions
propounded in the court's rehearing order, but was almost immediately interrupted
by Judge Michel, who asked him to respond to Manthei's arguments. Fischer
quickly answered by arguing his main theme -- that the specification must be
the primary source for claim construction
because the specification must be
examined to ascertain what the invention is, and the claims must not be construed
to cover something not within the scope of the invention.

NOTE: AWH who was pushing the specification-centric approach, which was basically adopted by the CAFC, but AWH lost the case!

The patentee, as frequently is the situation, was arguing for the broader, dictionary, plain meaning approach:

Carl Manthei of Boulder, Colo., pleaded Phillips' case with
conviction, arguing that the plain meaning of the term covers 90-degree
structures. He was questioned most sharply by Judge Alan Lourie, the
author of the vacated panel opinion. Lourie relied upon the fact that the patent
description only identifies (by numbering them in the drawings) certain
types of structures as "baffles," and all these structures are shown at angles
other than 90 degrees. Therefore, according to Lourie, structures mounted at 90
degrees cannot be "baffles," as that term is used.

Judges Clevenger and Dyk worked hardest at trying to answer the
narrow question here -- whether baffles can or cannot be set at a 90-degree
angle to the wall. And most observers believed that Manthei (for Phillips) succeeded in getting the answer he wanted to that question.

NOTE: The result on July 12, 2005 confirms this observation.

Given the broad range of questions, the 12 judges may well find it
difficult to agree on a specific algorithm for trial courts to follow in
construing claim terms. Instead, the Federal Circuit will likely rule that, while judges should read the specification and the prosecution history, and study the
appropriate dictionaries, they may do so in any order and use all the tools
available to them. Trial judges must do what seems reasonable under the particular
circumstances of the specific case.

[NOTE: use of dictionaries was de-emphasized.]

That said, the Federal Circuit will probably reverse the District
Court's claim construction rulings in this case and remand for further

[NOTE: right again.]


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