Eliopoulos Intellectual Property Law
Eliopoulos Intellectual Property Law
Monday, September 27, 2004
Thursday, September 23, 2004
Phillips v. AWH: The Amicus Briefs
From the PatentlyObviousBlog.com weblog
Phillips v. AWH Corp. (Fed. Cir. 2004) (en banc).
Earlier this week briefs were due in the en banc appeal of Phillips v. AWH. The Federal Circuit is rehearing this case to resolve issues concerning the construction of patent claims and the use of dictionaries.
Here is a rundown of some of the Amicus Briefs:
1. United States Patent and Trademark Office (USPTO): The Patent Office took the position that dictionaries should not be a primary reference for claim construction, in part because they are not used by examiners during prosecution.
2. Intellectual Property Owners (IPO): The IPO brief, argues that the primary evidence of claim meaning should be found in the patent specification and prosecution history. If a court must resort to extrinsic evidence to determine claim meaning, there should be no predetermined hierarchy of importance. The Court should only consider claim construction evidence in the record on appeal.
3. Electronic Frontier Foundation (EFF): Judges should invalidate and Patent Office Examiners should reject ambiguous claims. Claims should be given their broadest possible construction during prosecution and narrowest reasonable meaning thereafter.
4. American Bar Association (ABA): Neither the specification nor dictionary should have primacy. Invalidity should play no role in claim construction, as that approach is contrary to the public notice function. The Appellate Court should defer to findings of fact made during claim construction.
5. American Intellectual Property Law Association (AIPLA): The fundamental standard that should govern claim construction is that a claim term must be construed from the perspective of a person of ordinary skill in the relevant art at the time the patent issued seeking to understand the term's meaning from a study of the entire intrinsic record.
6. Intel, IBM, Google, Micron, and Microsoft: Where those construing patent claims focus on dictionary meanings of claim terms without an appropriate grounding in the specification and prosecution history, there is a danger the interpretation of patent claims will differ markedly from the true scope of the invention they seek to define. Indeed, there are so many different dictionary definitions for any given word that it is impossible to predict with any confidence what meaning a court will choose.
7. Federal Circuit Bar Association (FCBA): Dictionaries should not be the primary focus of claim construction. Claim construction may require findings of fact, which should be reviewed for clear error.
8. International Trade Commission Trial Lawyers Association (ITCTLA): The specification and prosecution history should be relied upon first. When dictionaries are used, technical dictionaries should be relied upon for specialized terms. Expert testimony should also be allowed in limited cases.
9. Biotechnology Industry Organization (BIO): Specification first. Dictionaries second, when specification does not establish meaning of claim terms. Claims should never be narrowly construed for the sole purpose of avoiding invalidity.
10. DC Bar Association: The specification always provides context for the claims. The court should not determine the question of deference because it would be an advisory opinion.
There are about 10 more briefs floating around -- please send them over if you have copies: crouch@mbhb.com.
Read more about the en banc appeal.
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