Patent Claims in Court

An upcoming appeals court ruling could have a significant impact on the way inventions are described by inventors and their patent attorneys or agents. The case, involving a patent on wall construction, has the potential to clarify, on a broad scale, how and what sources the courts will use to define the terms in patent claims.

Patents are designed to give an inventor a temporary monopoly to practice his or her invention or license the right to practice it to another party. If during this protected period--which lasts 20 years from the date of filing the patent application--a party is found to be practicing this invention without the inventor's permission, the inventor has the right to sue the party for patent infringement.

But before a patent infringement case is heard by a jury, the court must determine the scope of the patent. The scope of a patent is defined by the patent claims, which come at the end of the patent. Judges interpret these claims using information from other parts of the patent--particularly, the specification that describes the invention--as well as outside sources such as dictionaries and expert witnesses. Unfortunately, how such information should be prioritized is not always obvious to judges when they're determining the meaning of claims.

One case that may provide some guidance in the area of claim interpretation is the case of Phillips v. AWH. As in many other patent infringement cases, the scope of the patent in question hinges on how the court defines a single word--"baffle"--used in the claims. Specifically at issue is whether the court should draw the term's meaning from the patent document itself or from a dictionary.

In this case, Edward H. Phillips is suing the group of AWH Corp., Hopeman Brothers Inc., and Lofton Corp. for infringement of a patent he holds for a modular wall panel design. The properties of this wall panel, which consists of a configuration of baffles, are described in the patent claims to include being resistant to sound, fire, and impact from projectiles like bullets or from bombs. The wall panel also has axial and lateral load-bearing qualities.

Key to the design is the use of baffles, putting the term's meaning at the center of the court's ruling. The patent showed examples only when the baffles were formed at angles other than 90°. Under this definition, there is no patent infringement, and the case would be dropped. If, however, the court decides to use a dictionary definition, which does not limit the angle, the patent would be interpreted as having a broader coverage. This broader coverage would allow the infringement case to move forward.

To understand the importance of this case, it is first necessary to understand more about patent infringement cases. Because the patent statute is federal law, when an infringement case is filed, it is first heard in a district court.

"When a case goes before a district court, you are facing judges that hear all types of cases, and not just patent cases," notes William C. Youngblood, an associate with the Philadelphia-based intellectual property law firm of Caesar, Rivise, Bernstein, Cohen & Pokotilow. This is important because the judges in these courts may not be as familiar with the law and may encounter more difficulty in determining which case law--prior rulings from higher courts--to follow, he says.

THE SITUATION changes, however, when the case is appealed. Such cases then move into the jurisdiction of the U.S. Court of Appeals for the Federal Circuit, which hears all appealed patent infringement cases. The judges from this court are very familiar with patent law, and their rulings provide most of the case law for claim interpretation.

"Over the years, the Federal Circuit has set out any number of rules that district courts--the trial courts--should follow when interpreting claims," says Ilan N. Barzilay, an associate in the litigation practice group at the Boston intellectual property firm of Wolf, Greenfield & Sacks. "It's gotten to a point where it is a little bit complicated for district courts to know exactly in what order the rules should be followed and when certain rules should be followed over others" when two exclusive rules apply to a given set of facts in a case, he notes.

Echoing Barzilay, Youngblood points to two cases that have a direct bearing on the Phillips case and illustrate the difficulties judges face when trying to follow the case law for claim interpretation. In the case of CCS Fitness Inc. v. Brunswick Corp., the Federal Circuit ruled in 2002 that in cases where the meanings of claim terms are not narrowed by the patent itself (for example, the specification) or its prosecution history (which is the collection of amendments and other documents generated when the application is going through the patent process at the U.S. Patent & Trademark Office), then the court can rely on common and technical dictionaries to determine a term's ordinary meaning.

That same year, the Federal Circuit ruled in the case of Texas Digital Systems Inc. v. Telegenix that "dictionaries, encyclopedias, and treatises publicly available at the time the patent was issued may be the most meaningful sources of information to aid judges in understanding ... the technology." One problem with this ruling, Youngblood says, is that there are many different technical and nontechnical dictionaries that may or may not contain the definition intended by the inventor.

With these and other cases in mind, the Federal Circuit heard the Phillips appeal. At this initial hearing, a panel of three out of the 12 Federal Circuit judges heard the case--a standard practice for cases that come before this court. The panel members handed down their decision in April 2004: They determined that the meaning of baffle should be as described in the patent and not the broader dictionary definition.

After this decision, Phillips requested that because of the larger legal question represented by this case, it be reheard by all 12 Federal Circuit judges--referred to as en banc. In July 2004, the Federal Circuit agreed and vacated its earlier judgment. In addition, the court also asked the parties of the case and all other interested parties to file briefs addressing a series of seven questions.

"This is the rarity of the case," Barzilay points out, adding that the court asks for such broad input only when facing a question of law for which the resolution will be important to those practicing law in this area. "The case then became very important in that the Federal Circuit was basically saying that it was going to review all of the rules on claim construction and everyone gets to say something about it if they want to," he explains.

And say something, they did. The court received nearly 30 briefs addressing the proposed questions. The input came from bar associations, trade and industry associations, and government entities such as the U.S. Patent & Trademark Office, as well as the parties directly involved in the case.

In these briefs, the parties laid out their arguments for how they believe the courts should deal with claim interpretation. In addressing the court's questions, the briefs allowed parties to offer their opinions on what kind of weight dictionary definitions should hold in determining the scope of a claim and how much deference should be given to lower courts.

"I think the general consensus is that dictionary definitions have a place. However, they shouldn't have primacy," Youngblood reports based on the briefs. "In other words, dictionaries should not be the primary basis for determining the ordinary meaning of claims."

Early last month, the Federal Circuit reheard the case en banc. Although the court's ruling is not expected for several months, there appear to be several ways the court could rule.

According to Barzilay, the Federal Circuit could come down with a "very particular legal sort of 'how-to guide' for district courts to use in claim interpretation." Another possible ruling would be less direct by perhaps providing a few new rules to use as guidelines when choosing which rules to apply to a given case, he says. Finally, he points out, the court could decide to dodge the broader issues and hand down a ruling that affects mainly the parties of the case.

"I personally believe that the Federal Circuit judges will be dealing head-on with at least several of the issues that they raised," Barzilay says. "But there is always the chance that they could just say, 'Well, we're going to decide only one or two of these issues and leave the rest as they were,' " he says.

At any rate, Barzilay says he doesn't expect the court's ruling to "shake the tree" too much. "All the judges are going to carefully consider the issue, but I don't think they're going to come down with a decision that drastically alters how patents are dealt with in the district courts," he says.

Youngblood agrees, saying he's not expecting the court to take a "great leap;" however, he thinks "they will provide some clarity as to how they believe claim interpretation should take place." And he sees "confusion on the Federal Circuit as to how the judges are going to figure this out. In other words, they want to try to be clear, so that people like myself have a direction, but they are really struggling with how these patents should be interpreted--in particular, the claims."

THE OUTCOME of this case will not have a direct impact on scientists and engineers creating the patentable inventions, but Youngblood notes that it should send a message to them.

"It's important for engineers and scientists to realize the state of the law and the courts in that once a patent goes to litigation, the courts often look to dictionary definitions to aid in claim interpretation," Youngblood says. "If you're using a term in the patent claims in a way that can be construed to be different than what appears in a dictionary, you must make sure it is explained in the patent specification, which will be given a lot of weight by the courts," he explains.

To ensure that such terms are properly defined, Youngblood stresses the need for improved communication between the inventor and the attorney or agent who drafts the patent application.

"The problems that arise during litigation with regard to claim construction can often be attributed to poor application drafting or prosecution," Youngblood points out. "Often, it's a disconnect between the inventor and the person actually drafting the application," he says. This disconnect, coupled with the patent application writer's desire to be as broad as possible in the invention--to get the maximum coverage of the patent--leads to wording in the patent that does not always clearly define the invention.

To avoid these types of problems, Youngblood notes that the inventors need to be as specific as possible when communicating with their attorneys or patent agents. "That way, the attorney, who knows the law, will have a better appreciation for whether something should be defined down to the last atom or molecule, or whether it's advantageous not to do that. A lot of the time, these details don't make their way to the person drafting the patent--leaving the drafter to be creative on his or her own," he explains.