significant emphasis on Phillips case law by judge ward at PTSC Markman ruling
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Excerpts from PTSC 2007 Markman ruling
“A claim in a patent provides the metes and bounds of the right which the patent confers on
the patentee to exclude others from making, using or selling the protected invention.” Burke, Inc.
v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999). Claim construction is an
issue of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71
(Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).
To ascertain the meaning of claims, the court looks to three primary sources: the claims, the
specification, and the prosecution history. Markman, 52 F.3d at 979. Under the patent law, the
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specification must contain a written description of the invention that enables one of ordinary skill
in the art to make and use the invention. A patent’s claims must be read in view of the specification,
of which they are a part. Id. For claim construction purposes, the description may act as a sort of
dictionary, which explains the invention and may define terms used in the claims. Id. “One purpose
for examining the specification is to determine if the patentee has limited the scope of the claims.”
Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
the patentee’s claims. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
lexicographer, but any special definition given to a word must be clearly set forth in the
specification. Intellicall, Inc. v. Phonometrics, 952 F.2d 1384, 1388 (Fed. Cir. 1992). And, although
the specification may indicate that certain embodiments are preferred, particular embodiments
appearing in the specification will not be read into the claims when the claim language is broader
than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc., 34 F.3d 1048, 1054
(Fed. Cir. 1994).
This Court’s claim construction decision must be informed by the Federal Circuit’s decision
in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips, the court set
forth several guideposts that courts should follow when construing claims. In particular, the court
reiterated that “the claims of a patent define the invention to which the patentee is entitled the right
to exclude.” 415 F.3d at 1312 (emphasis added) (quoting Innova/Pure Water, Inc. v. Safari Water
Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used in a
claim are generally given their ordinary and customary meaning. Id. The ordinary and customary
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meaning of a claim term “is the meaning that the term would have to a person of ordinary skill in
the art in question at the time of the invention, i.e., as of the effective filing date of the patent
application.” Id. at 1313. This principle of patent law flows naturally from the recognition that
inventors are usually persons who are skilled in the field of the invention. The patent is addressed
to and intended to be read by others skilled in the particular art. Id.
The primacy of claim terms notwithstanding, Phillips made clear that “the person of ordinary
skill in the art is deemed to read the claim term not only in the context of the particular claim in
which the disputed term appears, but in the context of the entire patent, including the specification.”
Id. Although the claims themselves may provide guidance as to the meaning of particular terms,
those terms are part of “a fully integrated written instrument.” Id. at 1315 (quoting Markman, 52
F.3d at 978). Thus, the Phillips court emphasized the specification as being the primary basis for
construing the claims. Id. at 1314-17. As the Supreme Court stated long ago, “in case of doubt or
ambiguity it is proper in all cases to refer back to the descriptive portions of the specification to aid
in solving the doubt or in ascertaining the true intent and meaning of the language employed in the
claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In addressing the role of the specification, the Phillips
court quoted with approval its earlier observations from Renishaw PLC v. Marposs Societa’ per
Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998):
Ultimately, the interpretation to be given a term can only be determined and
confirmed with a full understanding of what the inventors actually invented and
intended to envelop with the claim. The construction that stays true to the claim
language and most naturally aligns with the patent’s description of the invention will
be, in the end, the correct construction.
Consequently, Phillips emphasized the important role the specification plays in the claim
construction process.
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The prosecution history also continues to play an important role in claim interpretation. The
prosecution history helps to demonstrate how the inventor and the PTO understood the patent.
Phillips, 415 F.3d at 1317. Because the file history, however, “represents an ongoing negotiation
between the PTO and the applicant,” it may lack the clarity of the specification and thus be less
useful in claim construction proceedings. Id. Nevertheless, the prosecution history is intrinsic
evidence. That evidence is relevant to the determination of how the inventor understood the
invention and whether the inventor limited the invention during prosecution by narrowing the scope
of the claims.
Phillips rejected any claim construction approach that sacrificed the intrinsic record in favor
of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
dictionaries or otherwise) before resorting to the specification for certain limited purposes. Id. at
1319-24. The approach suggested by Texas Digital–the assignment of a limited role to the
specification–was rejected as inconsistent with decisions holding the specification to be the best
guide to the meaning of a disputed term. Id. at 1320-21. According to Phillips, reliance on
dictionary definitions at the expense of the specification had the effect of “focus[ing] the inquiry on
the abstract meaning of words rather than on the meaning of the claim terms within the context of
the patent.” Id. at 1321. Phillips emphasized that the patent system is based on the proposition that
the claims cover only the invented subject matter. Id. What is described in the claims flows from
the statutory requirement imposed on the patentee to describe and particularly claim what he or she
has invented. Id. The definitions found in dictionaries, however, often flow from the editors’
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objective of assembling all of the possible definitions for a word. Id. at 1321-22.
Phillips does not preclude all uses of dictionaries in claim construction proceedings. Instead,
the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the court
emphasized that claim construction issues are not resolved by any magic formula. The court did not
impose any particular sequence of steps for a court to follow when it considers disputed claim
language. Id. at 1323-25. Rather, Phillips held that a court must attach the appropriate weight to
the intrinsic sources offered in support of a proposed claim construction, bearing in mind the general
rule that the claims measure the scope of the patent grant. The court now turns to a discussion of
the relevant claim terms.
* Emphasis added
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