Articles

Federal Court Clarifies Claim Construction Process In Phillips v. AWH Corp.

Michael Hawes and Chad Walters

On July 12 of this year, the Federal Circuit issued its eagerly anticipated en banc decision in Phillips v. AWH Corp., addressing fundamental questions regarding patent claim construction. See Phillips v. AWH Corp., No. 03-1269, -1286 (Fed. Cir. Jul. 12, 2005). The order granting the en banc hearing had invited briefing on a host of far-ranging claim construction issues and had “whipp[ed] the bar into a frenzy of expectation.” Phillips, slip op. at 2 (Mayer, J., dissenting). The final en banc decision clarifies a handful of issues central to the claim construction process, in particular, the emphasis that is to be given to various claim construction sources including the relative weights given to the patent specification and to dictionaries. This article discusses the Phillips opinion and its impact both on claim construction by the courts and on patent claim drafting. Read More...

The Scope Of Waiver When A Party Relies On An Advice of Counsel Defense To An Allegation Of Willful Patent Infringement:  Various Judicial Approaches, And Steps To Limit The Impact Of The Waiver

Eliot Williams

Parties accused of patent infringement face a difficult dilemma when they have procured an opinion of patent counsel as to their grounds for believing that they do not infringe the patentee’s patent(s). Those who choose to rely on the opinion and invoke the advice of counsel as a defense against a claim of willful infringement (and potential triple damages and attorney fees) must waive the attorney-client privilege -- and perhaps work product protection -- with respect to the subject matter of the advice received. On the other hand, alleged infringers who choose not to produce the opinion letter may preserve the attorney-client privilege, but they may also forego one of the best ways to counter an allegation of willfulness. Read More...

IP Spotlight

		Gene Spears
		Gene Spears is a partner residing in Baker Botts’ Houston office. Mr. Spear’s practice is well-suited to being located in a petrochemical center like Houston, as the majority of his practices involves all types of intellectual property protection in the chemical field. In addition to patent prosecution and counseling, Mr. Spears helps clients with patent opinions and the licensing and acquisition of intellectual property. He has litigated chemical patent related cases in courts throughout the United States. These litigation cases have involved a wide-ranging group of subjects from sulfur detection to the production of low-fat cheesecakes. His litigation experience has been before a number of different bodies including the federal courts nationwide, the Court of Appeals for the Federal Circuit and the International Trade Commission. Mr. Spears holds undergraduate degrees in both chemistry and physics and was a National Science Foundation doctoral fellow in chemistry.

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