Wednesday, July 13, 2005

Wegner on Phillips (Feb. 28, 05)

from National Law Journal, February 28, 2005, Sean A. Passino, Stephen B. Maebius and Harold C. Wegner

On Phillips -->

In addition, claim construction basics will be reconsidered en banc.
Eleven of 12 judges of the Federal Circuit decided to revisit, review and/or
revise how a patent's claims are interpreted. Phillips v. AWH Corp., 376 F.3d 1382
[Fed. Cir. 2004] [en banc] [per curiam order]. This case is not as important
for its underlying facts as it is for its potential effect on the single most
valuable attribute of a patent, namely, the scope and meaning of its claims. In
fact, if all seven of the issues identified in the order were to be decided,
then the Phillips case would most likely overshadow in importance all previous
Federal Circuit opinions since at least Markman v. Westview Instruments Inc.,
52 F.3d 967 [Fed. Cir. 1995] [en banc], aff'd, 517 U.S. 370 [1996].

[Note: after the July 12 decision, this is not clear. The CAFC seemed to think that it is business as usual, as in Markman and in Innova, for example.]

Four of seven issues concern the interplay between both the role of
the patent's specification and the roles of dictionaries and similar
sources to interpret a claim term. Should one be used over the other? Should both
sources be used? And if so, in what order should they be used? Moreover, Judge
Randall R. Rader, in concurring with the order, solicited comments on whether
claims should be construed using "strictly algorithmic rules, e.g.,
specification first, dictionaries first, etc." or using "tools relevant in each
case," much like the interpretation of a contract or statute.

Three of seven issues concern, quite frankly, questions about what
should have been, by now, axioms of claim interpretation. What should be the
roles of the fact-finder and of expert testimony? How should one use the file
prosecution history of the application that produced the patent whose claims are
being interpreted? Will the prior art and/or the statutory requirements for
patentability affect the meaning of a claim term? Clearly, the potential impact
of this case could serve either to clarify or to stupefy the patent bar
in 2005, unless, of course, this case "continues a charade," as expressed by
then-Chief Circuit Judge Haldane Robert Mayer in a harsh dissent.


At oral argument below, infringer Merck had abandoned an
"experimental use" defense under classic case law because of a perception that Federal Circuit case law denied the existence of a nonstatutory "experimental use"
defense-although just five years earlier the court had said that "[t]he law has long
recognized the distinction between inventions put to experimental use and products
sold commercially." Pfaff v. Wells Electronics Inc., 525 U.S. 55, 64 [1998].

NOTE: The experimental use at issue in Pfaff pertained to activities by the patent applicant before patent grant. The experimental use that was at issue in the pre-1995 activities of Merck pertained to activities by a third party after patent grant.


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