Copyright ChicagoKent Journal of Intellectual Property THE PROPER METHOD FOR USING DICTIONARIES TO CONSTRUE PATENT CLAIMS Scott A

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Copyright © 2006, Chicago-Kent Journal of Intellectual Property THE PROPER METHOD FOR USING DICTIONARIES TO CONSTRUE PATENT CLAIMS Scott A. Turk* "A word is not a crystal, transparent and unchanged; it is the skin of a living thought and may vary greatly in color and content according to the circumstances and the time in which it is used." -- Justice Oliver Wendell Holmes' Introduction The first step towards analyzing potential patent infringement is construing the claims of the patent. 2 While construing the claims, or determining what the claims mean, may sound relatively simple, it is a task that federal district courts, the Court of Appeals for the Federal Circuit ("CAFC"), and even the United States Supreme Court have struggled with for years. Invention complexity, linguistic interpretation, and shifting court rules have kept inventors, the United States Patent and Trademark Office ("USPTO"), and patent attorneys guessing as to what patent claims actually cover.4 There have been and still are many problems with claim construction. Some examples include the use of dictionaries and what kind of evidence they constitute, 5 the type of methodological approach used by the judges of the CAFC, 6 the judicial panel dependency of * Scott A. Turk is an Assistant State's Attorney with the Lake County State's Attorney's Office. He graduated from the Chicago-Kent College of Law in May 2005 and was Editor-in-Chief of the Chicago-Kent Journal of Intellectual Property. He would like to thank his wife, Carin Turk, and his parents, Helen & Jerry Turk, for their continued and unwavering support throughout law school. Mr. Turk would also like to thank Daniel Shanes who provided the initial push towards law school. 1 Towne v. Eisner, 245 U.S. 418, 425 (1918) (quoted in Markman v. Westview Instruments, 52 F.3d 967, 1006 (Fed. Cir. 1995) (en banc) (Newman, J., dissenting)). 2 Markman, 52 F.3d at 976. 3 See Kimberly A. Moore, Are District Court Judges Equipped to Resolve Patent Cases?, 15 Harv. J.L. & Tech. (2001) (finding that the Federal Circuit reverses district court claim constructions 33% of the time); see also Christian A. Chu, Emperical Analysis of the Federal Circuit's Claim Construction Trends, 16 Berkeley Tech. L.J. 1075, 1098-1100 (2001) (finding a reversal rate between 36.6% and 47.3%, depending on the assumptions used, and noting that the rate was increasing). 4 See Stephen G. Kunin, Mark Nagumo, Brian Stanton, Linda S. Therkorn, Stephen Walsh, Reach-Through Claims in the Age ofBiotechnology, 51 Am. U.L. Rev. 609, 617 n.46 (April, 2002); see also Peter Zura, Looking for Fire Amidst the Smoke Is the Federal Circuit Really Exceeding its Appellate Authority in Patent Infringement Cases?, 12 U. Balt. Intell. Prop. L.J. 1 (Fall 2003). 5 Compare Markman, 52 F.3d at 980 with Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996) 6 R. Polk Wagner and Lee Petherbridge, Is the Federal Circuit Succeeding? An Empirical Assessment of Judicial Performance, 152 U. Pa. L. Rev. 1105, 1111 (January 2004) (discussing two distinct methodological approaches, procedure and holistic, that lead to distinct results). 6 Chi.-Kent J. Intell. Prop. 43
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Copyright © 2006, Chicago-Kent Journal of Intellectual Property decisions, 7 and the fact that the law of the claim (since claim construction is a matter of law) is not determined until after a lawsuit is initiated. 8 It is, thus, "difficult and in many cases impossible to know whether one is 'trespassing' upon another's intellectual property right." Recently, the CAFC decided to tackle the problems of claim construction, including the use of dictionaries, through the Phillips I case.1 0 A key problem was defining the term "baffle" as used in a claim." Phillips argued that the term should be given its ordinary and customary meaning. 2 The district court found the term ambiguous and, as opposed to the ordinary and customary meaning, limited the term to the structures in the specification since the claim contained means-plus-function 3 language, 4 which Phillips argued was improperly reading limitations from the specification into the claim.' 5 A majority of the original three-judge panel of the CAFC agreed with the district court's claim construction, 6 even though it did not agree that the claim contained means-plus-function language.1 7 Judge Dyk's dissent disagreed with the majority's structural limitations based upon the patentee's preferred embodiments since this violated the plain meaning of the term "baffles" from a dictionary.1 8 Thus, the dissent highlighted the contention between referring to the intrinsic evidence, such as the specification, and the ordinary and customary meaning, such as the dictionary, in determining the scope of word as used in a claim. 9 The CAFC then withdrew this opinion and decided to hear the case en banc. 0 The Court decided to solidify how claims are construed and asked various questions: how dictionaries impact the public notice function of patent claims, if dictionaries should serve as the primary source for claim interpretation, what kind of dictionary should be used, what definition should be used if multiple ones are given for a particular word, and how should dictionaries and the patent specification inter-relate in determining claim term meaning. 1 Many Id. at 1112. ' See Mark A. Lemley, What's Different About Intellectual Property?, 83 Tex. L. Rev. 1097, 1100-01 (March 2005) 9 Id. at 1100. '0 363 F.3d 1207 (Fed. Cir. 2004), withdrawn ("Phillips 1"); 376 F.3d 1382 (Fed. Cir. 2004) ("Phillips II"). 11 Phillips 1, 363 F.3d at 1209. 12 Id. at 1211. 13 "[A]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such a claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." Id. at 1212. Id. at 1210. Id. at 1211. Id. at 1212. 17 Id. at 1214. 18 Id. at 1217. 19 See id. 20 Phillips 11, 376 F.3d at 1382. 21 Id. at 1383 ("Is the public notice function of patent claims better served by referencing primarily to technical and general purpose dictionaries and similar sources to interpret the claim term or by looking primarily to the patentee's use of the term in the specification? If both sources are to be consulted, in what order? If dictionaries should serve as the primary source for claim interpretation, should the specification limit the full scope of claim language (as defined by the dictionaries) only when the patentee has acted as his own lexicographer or when the specification reflects a claim disclaimer of claim scope? If so, what language in the specification will satisfy those conditions? What use should be made of general as opposed to technical dictionaries? How does the concept of ordinary meaning apply if there are multiple dictionary definitions of the same term? If the dictionary provides multiple potentially applicable definitions for a term, is it appropriate to look to the specification to determine what definition or definitions should apply? 6 Chi.-Kent J. Intell. Prop. 44
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Copyright © 2006, Chicago-Kent Journal of Intellectual Property amicus briefs were submitted attempting to answer these questions. The general consensus was that dictionaries have been used too much and should be scaled back. Finally, the CAFC recently issued its en banc opinion, agreeing with the many amicus briefs. 2 However, scaling back would still not necessarily clarify patent claims. This article proposes to not scale back dictionary use, but instead to formalize and regulate their use by the USPTO, well before there is any chance of claim construction confusion by patentees, accused infringers, or federal courts. The background of construing claims will first be explained, followed by a comparison of intrinsic to extrinsic evidence, how dictionaries fall into this mix, the results of court decisions expanding the role of dictionaries, the advantages and disadvantages of using dictionaries, how dictionaries should be used in the future, and, finally, how the Phillips III decision effects the recommended dictionary use. I. Background of Construing Claims Before discussing the role of dictionaries in claim construction, the reasons for definite claims and the early case law describing how to construe claims will be presented. Once this background has been established, then the need for dictionaries and the confusion in using them will be readily apparent. A. Claim Definiteness Claims are an extremely import part of the patent, since they put the public on notice as to what is protected and what would infringe, 3 and must be definite Claim definiteness is described in statue and patent law policy, both of which will be summarized in this section. 35 U.S.C. § 112 describes the patent specification and states in the second paragraph that "[lt]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 5 This section is commonly referred to by both patent examiners and attorneys as § 112 2 and provides the entire basis for arguments around construing claims. As emphasized above, claims must particularly point out the invention subject matter and must also be distinct. The underlying reasons behind § 112 2 can be found in patent law public policy. The guideline for patent examiners, the Manual of Patent Examining Procedure ("MPEP"), states that "[lt]he primary purpose of [the 35 U.S.C. § 112 2] requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is If the primary source for claim construction should be the specification, what use should be made of dictionaries? Should the range of the ordinary meaning of claim language be limited to the scope of the invention disclosed in the specification, for example, when only a single embodiment is disclosed and no other indications of breadth are disclosed?"). 22 Phillips v. A WH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ("Phillips III"). 23 McClain v. Ortmayer, 141 U.S. 419, 424 (1891) ("The object of the patent law in requiring the patentee [to distinctly claim his invention] is not only to secure to him all to which he is entitled, but to apprise the public of what is still open to them.") 24 Medtronic, Inc. v. Catalyst Research Corp., 547 F.Supp 401, 407 (D. Minn. 1982) (citing 35 U.S.C. § 112 generally). 2' 35 U.S.C. § 112 (2000) (emphasis added). 6 Chi.-Kent J. Intell. Prop. 45
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Copyright © 2006, Chicago-Kent Journal of Intellectual Property informed of the boundaries of what constitutes infringement of the patent." 6 There are two key reasons why the public must know the claim boundaries. First, the public must be put on notice as to what is claimed so that they can design around or otherwise avoid infringement. Patents give the equivalent of monopolies to patent holders for the life of the patents, 8 and the rest of the public would be greatly harmed if they could only determine infringement after lawsuit. A goal of patent law is to allow the public to avoid infringement. 9 This can only be done if the claims are definite. Another related goal is to allow the public to design around existing patents. " This promotes scientific growth and leads to the second key reason: that patent law forces patentees to accurately divulge their secret as a trade off for their "monopoly." 1 Forcing patentees to divulge their secrets allows others to build off of those secrets, especially after the patent has expired. This also promotes growth and is the basic trade off that allows patentees to have a government- sanctioned "monopoly" in a free-market economy. Another reason for claim definiteness is because claims must "provide a clear measure of what applicants regard as the invention so that it can be determined whether the claimed invention meets all the criteria for patentability and whether the specification meets the criteria of 35 U.S.C. 112, first paragraph with respect to the claimed invention. 4 In other words, patent examiners must know what the applicant is claiming. An invention must be novel 5 and not obvious 6 to be granted a patent. Patent examiners must compare the application claims to the prior art 7 to determine if the patentability requirements have been met. 8 Patent examiners cannot perform this task without definite claims. Indefinite claims would lead, and have led, to inventions patented multiple times and patents granted for obvious extensions to existing patents. Therefore, patent claims must be definite. Once the patent has been granted and the public has been put on notice as to the claimed invention, then the patentee has the right to sue anyone who infringes their patent. 9 The process for determining infringement is complicated and starts with the claims, as laid out in the Markman case. 26 MPEP, Manual of Patent Examining Procedure, § 2173 (U.S.P.T.O. Feb. 2003). 27 See Athletic Alts., Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996). 28 See Aronson v. Quick Point Pencil Co., 440 U.S. 257, 264-265 (1979); Life of a patent is 20 years from the filing date. 35 U.S.C. § 154 (2000). 29 See Athletic Alts., 73 F.3d at 1581. 30 See Whitev. Dunbar, 119 U.S. 47, 52 (1886). 31 Universal Oil Prods. Co. v. Globe Oil & Refining Co., 322 U.S. 471, 484 (1944). 2 See id. at 484-85. 33 See id. 34 MPEP, Manual of Patent Examining Procedure, § 2173 (U.S.P.T.O. Feb. 2003). 3' 35 U.S.C. § 102 (2000). 36 35 U.S.C. § 103 (2000). 37 Prior art refers to anything that might prevent a patent from being granted, such as printed publications, prior patents, etc. MPEP, Manual of Patent Examining Procedure, §§ 901 901.09 (U.S.P.T.O. Feb. 2003). 38 MPEP, Manual of Patent Examining Procedure, § 2173.02 (U.S.P.T.O. Feb. 2003). 39 35 U.S.C. § 271 (2000). 40 52 F.3d at 976. 6 Chi.-Kent J. Intell. Prop. 46
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Copyright © 2006, Chicago-Kent Journal of Intellectual Property B. Markman case Markman is best known for its holding that the judge, and not the jury, "has the power and obligation to construe as a matter of law the meaning of the language used in the patent claims." 1 One potential reason for this holding is that judges are in a better position to determine the meaning for complicated and scientific claims based upon the variety of evidence presented at trial. Another potential reason is that juries might decide the entire infringement case based upon the claim construction arguments, which might lead to inaccurate results since juries might have already made their decision for infringement before ever listening to arguments comparing the construed claims to the accused infringing device. While the arguments surrounding this decision are beyond the scope of this paper, construing the claims as a matter of law is a factor in the use of dictionaries and will be discussed further infra. Markman also held that construing the claims, as stated supra, is only the first of a two- step process to determine patent infringement. 2 The second step is to apply the construed claims to the accused device or method, which is a question of fact. 3 Therefore, construing the claims is vital, since inaccuracy at the first step of infringement analysis could lead to the wrong results in the second step. A result of the Markman case is that Markman hearings usually precede the infringement trial. 4 The goal is to construe the claims, a matter of law, outside of the realm of the jury, which might be biased by any arguments they might hear. 5 Cases have been settled purely based upon claim construction before ever going to trial. 6 Therefore, determining the scope of the claims based upon term meaning is extremely important. Determining the meaning of the words used in the claim has caused a great deal of difficulty over the years and has resulted in the discrepancy over the use of dictionaries. C. Cybor Corp. case The CAFC confirmed in Cybor Corp. v. FAS Technologies, Inc. that any disputed questions concerning the meaning and scope of patent claims, including the meaning of technologic and other terms ('the totality of claim construction') are treated as questions of law and are determined de novo on appeal, without deference to the decision of the trial court. 8 This holding has two important effects. First, it confirms that construing the claims at the district court level is a matter of law for the judge to decide. 9 Second, the appellate court does not need 41 Id. at 979. 42 Id. at 976. 4, id. 44 David B. Pieper, The Appropriate Judicial A ctor for Patent Interpretation: A Commentary on the Supreme Court's decision in Markman v. Westview Instruments, Inc., 51 Ark. L. Rev. 159, 181 (1998) (citing Ethicon Endo- Surgery, Inc. v. United States Surgical Corp., 93 F.3d 1572 (Fed. Cir. 1996)). 45 See id at 185. Id at 184. 47 See supra footnote 3. 41 See 138 F.3d 1448, 1455-1456 (Fed. Cir. 1998). 49 id 6 Chi.-Kent J. Intell. Prop. 47
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Copyright © 2006, Chicago-Kent Journal of Intellectual Property to show any deference to the district court judge. 0 Therefore, the claims will be construed again at the CAFC, if necessary. 1 This second time construing the claims may result in even greater confusion, especially when an exact interpretation procedure is not clear. 2 Therefore, it is important to determine exactly what judges may consider when construing claims. II. Intrinsic vs. Extrinsic Evidence Evidence used for construing claim terms is generally put into one of two categories: intrinsic evidence or extrinsic evidence. The over-arching concern of evidence classification is notification to the public, similar to the notification through claim definiteness mentioned supra. 3 Intrinsic evidence refers to those sources that are part of the patent record and, thus, provide more public notice as to claim meanings. 4 Extrinsic evidence refers to any sources that are not part of the public record, such as expert testimony, and does not add to public notice for claim meaning. 5 Therefore, intrinsic evidence is stressed as the only kind of evidence to look at when construing patent claims, as long as any claim term ambiguity is resolved. 6 Only if claim term meaning is still not clear after considering the intrinsic evidence should extrinsic evidence be considered. 7 However, the question remains as to where dictionaries fall into this mix. A. Intrinsic Intrinsic evidence refers to evidence that is part of (or intrinsic to) the patent record, such as the claims, the specification, and the prosecution history. 8 In claim interpretation, the court "should look first to intrinsic evidence of record, i.e. the patent itself, including the claims, the specification and, if in evidence, the prosecution history," 9 and in that respective order. Additionally, in most situations the intrinsic evidence will resolve any ambiguity in disputed claim terms. 1 This is, in part, because the specification "acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication. The emphasis placed on using intrinsic evidence to construe claims goes back to the patent law public policy point regarding public notice. 3 The public must know from looking at the patent what is claimed so that they may invent around the patent and not infringe. 4 Along 0 [d. 51 It is often necessary. See supra footnote 3 citing reversal rates by the CAFC ranging from 33% to 47.3%, and climbing as of 2001. 52 See supra footnote 4. 53 See Markman, 52 F.3d at 980. 54 See id. at 978-79; See also Vitronics, 90 F.3d at 1583. 55 See Vitronics, 90 F.3d at 1583. 56 See id. 57 Id Id. 9 [d. at 1582. 60 [d. 61 Id. at 1583. 2 Id. at 1582. , See id. at 1583. 64 See Athletic Alts., 73 F.3d
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