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.

The Phillips Opinion And Claim Construction

The Phillips case dealt with U.S. Patent No. 4,677,798 (the “‘798 Patent”), directed toward steel shell modules for prisoner detention facilities. Each claim of the ‘798 Patent at issue recites internal “baffles” (e.g., Claim 1 recites “internal steel baffles extending inwardly from the steel shell walls”). The parties agreed that the accused product had internal steel panels that extended perpendicularly inward from steel shell walls. The central claim construction issue was whether the claim term “baffles” could include surfaces oriented at 90º to steel shell walls, such as the accused products, or whether the claimed baffles were limited to non-perpendicularly projecting structures.1

The Federal Circuit’s order granting the en banc rehearing, Phillips v. AWH Corp., 376 F.3d 1382 (Fed. Cir. 2004) (en banc) (granting rehearing), withdrew a 2-1 Federal Circuit panel opinion concluding that “baffles must be oriented at angles other than 90º.” Phillips v. AWH Corp., 363 F.3d 1207, 1213 (Fed. Cir. 2004). The majority panel opinion had noted that all of the disclosed embodiments in the ‘798 Patent included baffles oriented at angles other than 90º relative to the steel walls and that baffles directed at 90º “cannot deflect projectiles,” which was a noted advantage of the invention of the ‘798 Patent. See id. at 1213-14. In addition, the Federal Circuit’s order granting en banc rehearing invited briefing on fourteen distinct points of claim construction law, including the role of dictionaries in the claim construction process and the level of deference that the Federal Circuit should give to trial court claim construction rulings. See Phillips, 376 F.3d at 1383.

The en banc Federal Circuit’s majority opinion specifically focused on the relative importance of various sources of claim construction guidance and the emphasis that a particular line of Federal Circuit panel decisions (the Texas Digital cases) had placed on dictionaries as a claim construction tool. Judge Bryson wrote the majority opinion, joined by Chief Judge Michel and Judges Clevenger, Rader, Schall, Gajarsa, Linn, Dyk, and Prost. The decision refocuses the claim construction process on a more detailed analysis of the patent specification, and moves away from previous panel decisions’ heavy reliance on dictionaries. In emphasizing the importance of the specification in claim construction, the majority stated that it is “entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims.” Phillips, slip op. at 16.

The Texas Digital case, the leading case in a line of Federal Circuit panel decisions placing a greater emphasis on dictionary definitions of claim terms relative to the roles of the specification and prosecution history, provided a methodology under which dictionaries, encyclopedias, and treatises could first be consulted in order to determine a claim term’s ordinary meaning. See Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202-05 (Fed. Cir. 2002). Thereafter, the patent’s specification and prosecution history would be consulted to determine if the patentee had used the words of the claim “in a manner clearly inconsistent with the ordinary meaning reflected, for example, in a dictionary definition.” Id. 308 F.3d at 1204.
Considering this methodology, the en banc Phillips majority wrote that:

[T]he Texas Digital approach limits the role of the specification in claim construction to serving as a check on the dictionary meaning of a claim term if the specification requires the court to conclude that fewer than all the dictionary definitions apply, or if the specification contains a sufficiently specific alternative definition or disavowal. . . . That approach, in our view, improperly restricts the role of the specification in claim construction.

Phillips, slip op. at 23-24. The Phillips court was particularly concerned with the possible use of a dictionary definition to broaden the interpretation of a claim term possibly intended by the patentee to have a narrower scope in light of the claims, specification, and prosecution history, given that a patent applicant may only in rare instances look to dictionaries in determining the claim scope he intends to assert. See id., slip op. at 25-26. The en banc Phillips court thus deemphasized the role that dictionaries should play in claim construction. However, the court noted that it did not intend to preclude the appropriate use of dictionaries, stating that judges are free to consult dictionaries and technical treatises “at any time in order to better understand the underlying technology and may also rely on dictionary definitions when construing claim terms, so long as the dictionary definition does [not] contradict any definition found in or ascertained by a reading of the patent documents.” Phillips, slip op. at 28 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996)).

The en banc Phillips majority thus refocuses claim construction on the specification and prosecution history but also warns against importing limitations from the specification into the claims, a key concern that was an animating factor behind the now-deemphasized Texas Digital line of cases. The court conceded that in some cases it will be difficult to determine whether a person of skill in the art would understand embodiments described in the specification to define outer limits of a claim term, or to be merely exemplary in nature, but went on to note that “attempting to resolve that problem in the context of the particular patent is likely to capture the scope of the actual invention more accurately than either strictly limiting the scope of the claims to the embodiments disclosed in the specification or divorcing the claim language from the specification.” Phillips, slip op. at 30.

The end result of the majority’s discussion of claim construction methodology was thus an affirmation of the claim construction approach outlined in the Vitronics case, which focuses on the appropriate weight to be assigned to various potential sources of claim construction guidance. See Phillips, slip op. at 31. Specifically, when interpreting the meaning of particular claim terms, the Phillips en banc decision requires that one should look to the following sources, in order of importance: the claims themselves (including differences in the phrasing of respective claims of the patent, which may indicate an intended difference in claim scope); the specification; the prosecution history; unbiased extrinsic evidence (such as dictionaries and treatises and, in particular, technical dictionaries); and biased extrinsic evidence (such as expert testimony). See Phillips, slip op. at 11-20. With respect to extrinsic evidence, the Phillips majority indicated that such evidence could provide guidance regarding the field of the invention and could help determine what a person of ordinary skill in the art would understand claim terms to mean, but the majority also cautioned any court using such evidence to “keep in mind the flaws inherent in each type of evidence and assess that evidence accordingly.” Id., slip op. at 21.

The en banc Phillips majority applied these principles to construe the ‘798 Patent claim term “baffles” to include surfaces oriented at both oblique and right angles relative to the steel shell walls. See id., slip op. at 31-35. As a result, a surface oriented at 90º was found to be covered by the claim term, despite the fact that no embodiment in the specification described or illustrated such an orientation. In particular, the court noted that the numerous specification statements touting the projectile-deflection abilities of the baffles specifically applied only to the claims that actually called out such feature2, and not to those claims that did not. See id., slip op. at 32-35.

Judge Mayer wrote a stinging dissent from the en banc majority opinion, joined by Judge Newman. His dissent did not take issue with the majority’s interpretation of “baffles” nor with the actual claim construction methodology set forth in the majority opinion, but rather condemned the basic principle of de novo review by the Federal Circuit of trial court claim construction issues, particularly based on his view that such review necessarily entails making various underlying factual determinations better suited for the trial court to whom the evidence is originally presented. See Phillips, slip op. passim (Mayer, J., dissenting). The en banc majority had declined to affirmatively address the fundamental issue of whether claim construction decisions should be handled on a de novo basis by the Federal Circuit, an issue that Judge Mayer deemed to be of utmost urgency in view of what he saw as the increased costs, inefficiency, and uncertainty resulting from de novo review:

[A]ny attempt to fashion a coherent [claim construction] standard under this regime is pointless, as illustrated by our many failed attempts to do so . . . .
. . . .
. . . The court’s opinion today is akin to rearranging the deck chairs on the Titanic—the orchestra is playing as if nothing is amiss, but the ship is still heading for Davey Jones’ locker.

Id., slip op. at 1-7 (Mayer, J., dissenting).

While the en banc Phillips majority opinion provides a thorough analysis of claim construction principles and reasonable guidance for construing claims in the future, the principles and guidance, as Judge Mayer so eloquently stated, do not guarantee predictability or certainty for future claim construction decisions. The application of these claim construction principles may still lead to inconsistent results and frequent appellate reversals of trial court claim constructions. Strikingly, even among the en banc majority, Judge Lourie joined in the majority’s pronouncements regarding the relative weights to be afforded to the specification and dictionaries in interpreting patent claims, but (despite presumably applying the same hierarchy of interpretation sources as the rest of the majority), came to a substantially different view as to the appropriate interpretation of the term “baffles.” See Phillips, slip op. at 1-3 (Lourie, J., concurring in part, dissenting in part). And as Judge Lourie noted, the original Federal Circuit panel decision had decided the case based on the same prioritization of interpretation sources and emphasis on the specification that the en banc majority has now reaffirmed -- yet the trial court, too, reached the exact opposite conclusion from the en banc majority as to the meaning of “baffles.” See Phillips, slip op. at 1-2 (Lourie, J., concurring in part, dissenting in part).

Phillips’s Effects On Patent Drafting

When preparing patent applications, the manner in which the claims may ultimately be construed is an important consideration. As discussed above, the en banc Phillips decision provides the most recent judicial guidance concerning claim construction methodology and, importantly, the relative weight to be given to various claim construction sources. Perhaps the most significant impact of the Phillips decision on patent drafting, however, is the emphasis that will likely be given to specification statements or characterizations of the invention, which in the past may have been drafted without sufficient consideration of their potential impact on later judicial interpretation of claim terms. Prudence, therefore, must accordingly be practiced in the drafting of the specification. Consistency between the terms used in the claims and in the specification, and a full explanation of the intended meaning or scope of these terms, will prove extremely important, as a misplaced or superfluous remark in the specification could have an unexpected effect on the meaning assigned to the claims by a court. In addition, if the specification includes various embodiments, features, and/or descriptions of the invention and its components that are alternative, exemplary, or optional in nature, this fact should be clearly indicated, as the increased emphasis given to the specification in light of the Phillips decision could otherwise lead to an undesired narrowing of the claims so as to limit them, in effect, to covering only disclosed embodiments.

Conclusion

The Phillips en banc decision represents something of an anti-climax in view of the far-ranging briefing that the Federal Circuit had encouraged, insofar as the latter suggested that fundamental changes to the canons of claim construction might be in the offing. By essentially reiterating the claim construction rubric set forth a decade ago in Vitronics (and repudiating the Texas Digital line of “dictionary first” cases), the Federal Circuit has neither significantly changed the rules of claim construction, nor provided a new regime that will guarantee clarity and consistency in district court claim interpretation. As long as Phillips remains the last word on claim construction (and as long as the Federal Circuit retains de novo review power over claim interpretation issues), both litigants and patent applicants will continue to look to the patent specification as the first source of claim meaning, knowing at the same time that secondary sources of evidence as to such meaning will continue to have relevance in certain circumstances.

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1The en banc Federal Circuit also addressed other issues, affirming the district court’s judgment addressing trade secret misappropriation claims, but, like the prior Federal Circuit panel decision in the case, disagreeing with the district court as to its treatment of the term “baffles” as invoking the “means-plus-function” claim format of 35 U.S.C. § 112, paragraph 6. See Phillips, slip op. at 3-5.

2For example, Claim 2 of the ‘798 Patent stated that the baffles may be “oriented with the panel sections disposed at angles for deflecting projectiles such as bullets able to penetrate the steel plates.”

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