US Court to Set Down Rule for Patent Claim Interpretation

In a case that will have far reaching implications for patent practitioners and owners, on July 21, 2004, the US Court of Appeals for the Federal Circuit ordered an en banc re-hearing of a previous three-member panel decision (Phillips v AWH Corp, 363 F 3d 1207 (Fed Cir 2004)). The plaintiff had sued the defendant for infringement of its patent (US Patent No 4,677,798) directed to vandalism-resistant building modules with internal baffles. The key issue concerned the way a claim in a patent is to be interpreted. The claims in a patent define the scope of the patent owner's rights. Further, determining the precise scope of claim rights permits other matters to be resolved: for example, is the patent infringed and are the claims invalid for lack of inventiveness or novelty or for not being supported by the patent specification? At trial, the parties had disagreed over the precise meaning of the term "baffle". The District Court and the majority of the appellate panel construed the term by focusing on the embodiments disclosed in the patent specification and the drawings; that is, for the purpose of the claims, a baffle was a structure deployed at an angle other than at 90 degrees to outer module walls. Since the defendant's baffle was positioned perpendicularly, it therefore fell outside the patent claims. The minority appellate judge took the view that there was no reason (such as a disclaimer set out in the specification or made to the Patent Office during the application process) to depart from the plain meaning of "baffle" by incorporating angles of positioning. In ordering a re-rehearing, the Appeals Court has signalled the importance of the issue. The Court has invited all interested parties, including the US Patent and Trademark Office, to submit briefs on construction of patent claims. In particular, the briefs should address a number of specified questions, covering the possible role of dictionaries, the language of the specification, prosecution history, and expert testimony. For another report of the case, see: http://www.law.com/jsp/article.jsp?id=1090180158353. For the three-panel Appeals Court decision, visit: http://makeashorterlink.com/?O28A525F8. For the Appeals Court re-hearing order, see: http://makeashorterlink.com/?Y5EB255F8. Summary by: Peter K. Wang