Alerts and Updates
Federal Circuit Alert
August 2005
En Banc Federal Circuit Decision Confirms Primary Role of Specification in Claim Construction
Phillips v. AWH Corp. et al., Nos. 03-1269 and -1286 (363 F.3d 1207)
In a long-awaited decision, the Federal Circuit, sitting en banc, reaffirmed the approach to patent claim construction laid out in its earlier decisions and disapproved the methodology adopted by a Federal Circuit panel in Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002) as it "placed too much reliance on extrinsic sources such as dictionaries, treatises, and encyclopedias and too little on intrinsic sources, in particular the specification and prosecution history."
The en banc decision arose from a patent infringement suit initiated by Edward H. Phillips, the owner of a patent on modular steel-shell panels that can be welded together to form vandalism-resistant walls. Mr. Phillips sued AWH Corporation and other manufacturers and sellers of vandalism-resistant wall panels. The disputed asserted claim in the patent requires that the walls include "internal steel baffles extending inwardly from the steel shell walls." The parties differed on the meaning of the word "baffles," and the U.S. District Court for the District of Colorado held that the baffles must extend inwardly from the walls at an oblique or acute angle and excluded baffles oriented at a 90-degree angle and granted summary judgment of non-infringement. Upon appeal, a three-judge panel of the Federal Circuit upheld the district court's claim construction and summary judgment ruling. After granting a petition for rehearing en banc and vacating the panel decision, the Federal Circuit overturned the panel's claim construction and, in the process, addressed the claim construction roles of the intrinsic record, including the claims, specification and prosecution history, and extrinsic evidence, such as dictionaries and expert testimony.
The Federal Circuit started its summary of claim construction principles by noting the bedrock principle that "the claims of a patent define the invention to which the patentee is entitled the right to exclude" and confirmed that terms in the claims must be given their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time the invention was made. While acknowledging that the ordinary meaning of claim language may be readily apparent to judges, the Federal Circuit explained that often the meaning of a claim term is not immediately apparent and it is sometimes necessary to look at sources available to the public, including the words of the claims, the remainder of the specification, the prosecution history and extrinsic evidence concerning relevant scientific principles, the meaning of the technical terms and the state of the art.
The Federal Circuit described the role of the claims themselves as providing "substantial guidance" and being "highly instructive." The Court proceeded to point out the importance of the specification in claim construction, stating that the specification is "the primary basis for construing the claims" and noting that the importance of the specification derives from the statutory requirement (35 U.S.C. §112, ¶1) that the specification describe the claimed invention in "full, clear, concise and exact terms." While the Federal Circuit confirmed that the patent's prosecution history can also be considered, the Court cautioned that because the prosecution history represents an ongoing negotiation between the Patent Office and the applicant, "it often lacks the clarity of the specification and thus is less useful for claim construction purposes."
In a clarification of its precedent, the Federal Circuit limited its endorsement of the use of extrinsic evidence, commenting that extrinsic evidence is "unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." The court singled out for disapproval the methodology taken in Texas Digital and a line of cases that followed the reasoning of that decision.
In Texas Digital, a panel of the Federal Circuit started with extrinsic evidence ("dictionaries, encyclopedias and treatises") in its determination of the "ordinary and customary" meaning of patent claim terms, turning to the specification only to determine whether the patentee used the terms inconsistently with the "ordinary and customary" meaning as defined by dictionaries. The Federal Circuit found this "dictionaries first" approach placed too much reliance on extrinsic sources of information and too little on intrinsic sources, explaining,
The main problem with elevating the dictionary to such prominence is that it focuses the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent.
The Phillips decision does not preclude the use of dictionaries or other extrinsic information in claim construction, nor does it limit the order or timing with which a court may review extrinsic sources when construing a claim. Instead, the Phillips decision emphasizes that a district court's focus must remain on understanding how a person of ordinary skill in the art would understand the claim term in view of the specification. However, the Phillips decision also suggests that a claim construction methodology starting with a broad meaning of a claim term ascertained from extrinsic sources and using the specification to whittle away at the construction would not withstand appellate scrutiny.
For the full opinion, see:
http://www.fedcir.gov/opinions/03-1269.pdf
Examiner Statement - Standing Alone - Does Not Limit Claim Scope or Give Rise to Prosecution History Estoppel
Salazar v. Procter & Gamble Co., No. 04-1013
In a July 8, 2005, decision limiting the reach of prosecution history estoppel, the Federal Circuit (opinion by Judge Rader joined by Judge Gajarsa; Judge Bryson dissenting) held the district court erred in using the patent examiner's Reasons for Allowance to exclude nylon from the scope of the claim term "elastic" and vacated the grant of summary judgment and remanded the case.
Plaintiff Alfred Salazar acting pro se sued Procter & Gamble ("P&G") for patent infringement in the U.S. District Court for the Northern District of Oklahoma on a patent for a toothbrush having elastic polishing rods for cleaning teeth and elastic stimulator rods for stimulating the gums. P&G moved for summary judgment because its toothbrushes did not include the "elastic" limitation in claim 1, the only independent claim of the patent. The district court construed the term "elastic" as any material other than nylon, capable of returning to an initial state or form after deformation and granted summary judgment to P&G because - based on this construction - P&G's product did not infringe literally or under the doctrine of equivalents. Plaintiff appealed.
The first and only time the examiner discussed the "elastic" limitation was as part of a patent office action known as a Statement of Reasons for Allowance in which the examiner allowed the claim and remarked:
Although the [prior art] appears to have the recited structure, the [prior art] rods are made of nylon, which is not considered "elastic." Obviously, the rods of [the prior art] are flexible, but are not considered "elastic" as recited by the claim.
The applicant did not respond to these remarks by the examiner. After noting that except for the examiner's remark, the prosecution history did not contain any discussion of the "elastic" limitation by either the examiner or the applicant, the Federal Circuit framed the issue on appeal as requiring:
[T]his court to decide whether unilateral statements of an examiner in stating reasons for allowance can create a clear and unambiguous disavowal of claim scope and give rise to prosecution history estoppel.
After distinguishing the law relied upon by P&G, the Federal Circuit refused to create a rule or presumption an applicant can disavow claim scope by silence. Instead, the Court held that an applicant's silence regarding statements made by the examiner during prosecution, without more, cannot amount to a clear and unmistakable disavowal of claim scope. The Court proceeded to note that the examiner's reasons for allowance are still pertinent to claim construction and can be "evidence of how one skilled in the art understood the term at the time the application was filed."
The Federal Circuit also reversed the district court's subsequent holding that the examiner's remarks created prosecution history estoppel. Specifically, the Federal Circuit rejected the district court's conclusion that the examiner's remarks "amended" the asserted claim, noting that an examiner's statement cannot amend a claim.
Judge Bryson dissented, reasoning that an applicant should face a heavy burden in challenging the examiner's interpretation where the applicant sat by idly while the examiner indicated the claim language had a particular meaning and only regarded the invention as patentable based on that meaning.
For the full opinion, see:
http://www.fedcir.gov/opinions/04-1013.pdfTestimony of Co-Inventor of Patent in Suit Regarding Accused Device Excluded as Improper Expert Testimony
Air Turbine Technology, Inc. v. Atlas Copco AB, No. 04-1387
Air Turbine Technology, Inc. ("Air Turbine"), the owner of a patent on a pneumatic turbine pencil grinder, sued Atlas Copco and related entities ("Atlas") in the U.S. District Court for the Southern District of Florida for patent infringement, violation of the Lanham Act, and various state law claims under Florida law. After dismissing all but two claims on summary judgment, Air Turbine's claims for patent infringement and breach of confidential relationship proceeded to trial. The jury returned a verdict against Air Turbine on both its infringement and breach of confidential relationship claims and the district court denied Air Turbine's motion for a new trial on its patent infringement claims based on, among other things, the district court's evidentiary ruling excluding the testimony of the co-inventor on the patent in suit. Air Turbine appealed.
Air Turbine contended that the district court erred in excluding the testimony of a co-inventor of the patent in suit on the grounds that the testimony was simply based on the co-inventor's observations of the accused device. Atlas objected on the ground that the co-inventor was not an expert and his testimony violated Federal Rule of Evidence 701 as testimony of a lay witness on a matter requiring special scientific knowledge. Air Turbine countered that Rule 701 does not prohibit a witness from testifying to a matter "rationally based on their own perceptions and experience" and the co-inventor was entitled to testify as to what he observed when he disassembled the accused product.
Although the underlying claim was for patent infringement, the issues presented were not unique to patent law, so the Federal Circuit applied the relevant law of the Eleventh Circuit. In the Eleventh Circuit, a district court's evidentiary rulings are not subject to reversal on appeal "absent a clear abuse of discretion." Under this standard of review, the Federal Circuit saw no reason to disturb the judgment against Air Turbine on the patent infringement part of the case. The Federal Circuit noted that the co-inventor's testimony referred to not only the structural components of the accused device he observed, but also their respective functions and stated:
The fact that the co-inventor may have particularized knowledge and experience as a co-inventor of the patent in suit does not necessarily mean he also has particularized knowledge and experience in the structure and workings of the accused device.
Under these circumstances, the Federal Circuit held that the district court did not abuse its discretion in concluding that the co-inventor's testimony amounted to improper expert testimony.
For the full opinion, see:
http://www.fedcir.gov/opinions/04-1387.pdfAbout Duane Morris
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