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July 16, 2005

Claim Construction Priority Stack

Phillips v. AWH hopefully marks a watershed ruling on claim construction. Let's begin by reviewing the highlights of Phillips v. AWH, then mix in NAC v. Plastipak. To finish the meal with some fruit, some comments on Judges Mayar's and Newman's raspberry in Phillips v. AWH.

Below are highlight quotations from Phillips v. AWH -

All hail claims - The written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of claims.

Ordinary meaning - ... the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application....Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.

Claim context - Quite apart from the written description and the prosecution history, the claims themselves provide substantial guidance as to the meaning of particular claim terms....To begin with, the context in which a term is used in the asserted claim can be highly instructive....Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term.

Specification - The claims are directed to the invention that is described in the specification; they do not have meaning removed from the context from which they arose....the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs....To avoid importing limitations from the specification into the claims, it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so.

Prosecution history - ....because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.

Extrinsic evidence - Although we have emphasized the importance of intrinsic evidence in claim construction, we have also authorized district courts to rely on extrinsic evidence, which “consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.”...Because dictionaries, and especially technical dictionaries, endeavor to collect the accepted meanings of terms used in various fields of science and technology, those resources have been properly recognized as among the many tools that can assist the court in determining the meaning of particular terminology to those of skill in the art of the invention....We have viewed extrinsic evidence in general as less reliable than the patent and its prosecution history in determining how to read claim terms, for several reasons....In sum, extrinsic evidence may be useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence.

Presumed validity - While we have acknowledged the maxim that claims should be construed to preserve their validity, we have not applied that principle broadly, and we have certainly not endorsed a regime in which validity analysis is a regular component of claim construction.

The above quotes were snatched out of order from the ruling, but read as if properly put together, thus forming a coherent priority stack of claim construction.

[1] Consider the ordinary meaning to one skilled in the art, as most importantly personified by the inventor himself (hence laying the foundation for first considering intrinsic evidence).

[2] Thus consider, if reference is needed, the intrinsic evidence first - a) usage context within the claims, where the same word in the claims should typically have the same meaning, and different words may be presumed to have somewhat different meanings, unless evidences points otherwise; b) the specification; c) the prosecution history.

[3] Consider extrinsic evidence, such as a) dictionaries, and b) expert testimony. Note that dictionaries trump experts, because dictionaries are unbiased evidence of common usage, while testifying experts are just whores with PhD's.

[4] There is a presumption that the claim construction should render the claim valid, but validity analysis and claim construction are two different beasts, and something along the way could have been overlooked by the Examiner, so the presumption of validity through claim construction is not iron-clad, and may be overcome through convincing argument backed by evidence.

Yes, every case is different, as claim construction varies case by case, often hinging on a very few words or phrases, from the rather mundane, such as the ordinary word "generally" in NAC v. Plastipak, to the seemingly ordinary but more technical "baffles" in Phillips v. AWH, to some word or phrase only one truly skilled in a particular art could intelligibly argue about. But the CAFC has, in Phillips v. AWH, affirmed and clarified a rather long-standing priority stack for claim construction.

Re-read NAC v. Plastipak and see the consistency within the priority stack listed above. For the everyday word "generally", naturally go to a dictionary, then consider any deviation from the ordinary meaning from intrinsic evidence. No other method makes sense. And, ultimately, sense is what needs to be made in claim construction.

In their dissent, Judges Mayer and Newman set up a straw man and then made themselves laughingstocks of jurisprudence.

Now more than ever I am convinced of the futility, indeed the absurdity, of this court’s persistence in adhering to the falsehood that claim construction is a matter of law devoid of any factual component. Because any attempt to fashion a coherent standard under this regime is pointless, as illustrated by our many failed attempts to do so, I dissent.

The straw man is the ridiculous concept of it being suggested that claim construction is "devoid of any factual component". Mayer and Newman go on in their dissent to pose as anarchists, without proffering a workable alternative to the majority opinion. Do Mayer and Newman want to overturn Markman and make claim construction part of the trial process, a finding of fact, give patent litigation more of a circus atmosphere? In the finale, they fling: "Eloquent words can mask much mischief," a statement best taken as self-referential.

Patents are legal documents of technical material. Claim construction is and always has been the process of determining legal boundaries of technical scope. The coherency of legal method is established by having a priority stack of references by which claim construction may be made, regardless of the technology or claim construction issue.

This is exactly the significance of Phillips v. AWH, which, if properly interpreted, may become as important for claim construction method as Markman has become for claim construction process (which basically stated: construe claims before tackling other issues). Stronger topical organization in the Phillips ruling would have made it more of a legal brick house, but the content is there and the message clear for those with the sense to see it.

Posted by Patent Hawk at July 16, 2005 12:30 AM | Claim Construction