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THE USE OF EXTRINSIC EVIDENCEFOR CLAIM CONSTRUCTION

Did PhillipsRemove Extrinsic Evidencefrom the Analysis?

Bruce C. Haas

New York, NY


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Use of Extrinsic Evidence Before Phillips

Dictionaries

Renishaw PLC v. Marposs Societa per Azioni, 158 F.3d. 1243,1251 (Fed. Cir. 1998); Rexnord Corp v. Laitram Corp., 274F.3d 1336, 1334 (Fed. Cir. 2001)

Expert EvidencePitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298

(Fed. Cir. 1998)

Treatises and Textbooks

Glaxo Wellcome Inc. v. Andrx Pharms., Inc., 344 F.3d 1226,

1229 (Fed. Cir. 2003)

Inventor Testimony

Kolmes v. World Elastic Corp., 1998 U.S. App. LEXIS 9407, 11(Fed. Cir. May 6, 1998)


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Intrinsic Evidence

Claim language

Specification

File history

Phillipshas made it clear that claim terms should beconstrued based upon intrinsic evidence whenever possible.


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To properly construe a claim term, a Court must first look to thetext of the patent claim:

It is a bedrock principle of patent law that the claims of a

patent define the invention . . . Phillips v. AWH Corporation,

415 F.3d. 1303, 1312 (Fed. Cir. 2005) (en banc). A court must look to the words of the claims themselves . . .

to define the scope of a patented invention. Markman v.Westview Instruments, Inc. 52 F.3d 967, 979-81 (Fed. Cir1995) (en banc).

When the meaning of a disputed term is clear from the text ofthe claim, that meaning should control absent a clear andunambiguous disclaimer. See Amgen Inc. v. Hoechst MarionRoussel, Inc., 2006 U.S. App. Lexis 19799 (Fed. Cir. Aug. 3,2006).


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Claim construction must begin with the words of the claim

themselves. Id. Therefore, a court must look at theordinary meaning of the words in the context of the writtendescription and the prosecution history. Phillipsat 1312

(citing Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313,1319 (Fed. Cir. 2005)).

The ordinary and customary meaning of a claim term is the

meaning that the term would have to a person of ordinaryskill in the art in question at the time of the invention

(effective filing date). Phillipsat 1313 (citing Innova/PureWater, Inc. v. Safari Water Filtration System, Inc., 381 F.3d.1111 (Fed. Cir. 2004)).


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How does the court determine a particular terms meaning to a

person of ordinary skill?

Learned Treatises

Technical Dictionaries

Expert Testimony

Often the meaning of claim term is clear to a lay judgeif so,that meaning should be used. See Phillipsat 1314.

If the meaning is not quite so clearwhat does a court look to?

The Specification The File Wrapper

Dictionaries


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The patent specification is the next best source after the claimitself:

1) Specification may define the term.

2) Specification may provide examples.3) Specification may reveal prior art.

4) The Background of the Invention may provide helpfulinformation.


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The file wrapper is less reliable than the claim language andthe specification:

1) The file wrapper may define the term.

2) The file wrapper may reveal a disclaimer.3) The file wrapper may reveal how the examiner or

inventor understood the term.


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Phillipsemphasized the importance of intrinsic evidence, but alsoauthorized district courts to rely on extrinsic evidence. Extrinsicevidence is, however, less significant than the intrinsic record.Phillipsat 1317.

The Federal Circuit still views extrinsic evidence as being lessreliable than the patent, and its prosecution history, in determininghow to construe claim terms. Phillipsat 1317 (citing C.R. Bard, Inc.v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)).

Undue reliance on extrinsic evidence poses the risk that it will be

used to change the meaning of claims in derogation of theindisputable public records and undermine the public noticefunction of patents.


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A clear and unambiguous disclaimer during patent prosecutionshould control.

Such a disclaimer provides direction to the court inconstruing claim terms, as the term should not be defined

inconsistently with the disclaimer. Disclaimer case law:

The prosecution history (or file wrapper) limits the

interpretation of claims so as to exclude any interpretationthat may have been disclaimed or disavowed during

prosecution in order to obtain claim allowance. Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448,

452, (Fed. Cir. 1985)


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Representations made during prosecution must beunambiguous and contain clear disavowals.

See Aquatex Industries Inc. v. Techniche Solutions, 419F.3d 1374, 1381 (Fed. Cir. 2005)

[C]laim terms take on their ordinary and accustomedmeanings unless the patentee demonstrated an intent todeviate from the ordinary and accustomed meaning . . . byredefining the term or by characterizing the invention in theintrinsic record using words or expressions of manifestexclusion or restriction, representing a clear disavowal ofclaim scope.

Teleflex Inc. v. Fisoca North America Corp., 299 F.3d1313, 1327 (Fed. Cir. 2002)


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Federal Circuit Decisions Since PhillipsThatRely on Extrinsic Evidence

Dictionaries

The Federal Circuit in the en banc Phillipsdecision statesthat in some circumstances, general purpose dictionaries

may still be helpful. Cases decided after Phillipswhere dictionaries were considered

in construing claim terms:

Paymaster Techs., Inc. v. United States, 2006 U.S. App.LEXIS 11325, 14-15 (Fed. Cir. May 4, 2006) (Determining

that a dictionary definition strengthens [the] distinctionbetween to and through, the Court upheld the Trial Courts

construction.)


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Federal Circuit Decisions Since PhillipsThatRely on Extrinsic Evidencecontd

Dictionariescontd

Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d1322, 13-15 (Fed. Cir. 2006) (The appellate court disagreed

with the trial courts definition of gap derived from Webster's IINew Riverside University Dictionary. Yet the appellate courtrelied on a dictionary definition of annular formulated in Int'lRectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1372-73 (Fed.Cir. 2004), which cited Webster's Third New International

Dictionary 88 (1966).)


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Dictionariescontd

Terlep v. Brinkmann Corp., 418 F.3d 1379, 1384 (Fed. Cir.2005) (Concluding that the district court correctly defined theterm clear, the court used a dictionary definition of "clear" as

"giving free passage to light or to the sight: easily seen through:not cloudy, turbid, or opaque," to confirm what was in the writtendescription and prosecution history.)

Old Town Canoe Co. v. Confluence Holdings Corp., 448 F.3d1309, 1316 (Fed. Cir. 2006) (The court determined that the useof a dictionary definition by the district court to define coalesce

and complete was not improper.)


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Dictionariescontd

Atofina v. Great Lakes Chem Corp., 441 F.3d 991 (Fed. Cir.2006) (Because dictionaries, and especially technical

dictionaries, endeavor to collect the accepted meanings ofterms used in various fields of science and technology, thoseresources have been recognized as among the many toolsthat can assist the court in determining the meaning ofparticular terminology to that of skill in the art of the

invention.)


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Learned Treatises/Textbooks

The Federal Circuit in the en banc Phillipsdecision states that acourt can look to those sources available to the public that show

what a person of skill in the art would have understood disputed

claim language to mean.

Cases decided after Phillipswhere learned treatises/textbooks wereconsidered in construing claim terms:

Pfizer, Inc. v. Teva Pharms.USA, Inc., 429 F.3d 1364, 1374-75

(Fed. Cir. 2005) (The court agreed with the district courtsdetermination that one of skill in the art would understandsaccharides to encompass more than sugars, and would include

polysaccharides. Extrinsic evidence in the form of technical

dictionaries, treatises, and expert testimony were used to supportthis conclusion drawn from the '450 patent.)


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Learned Treatises/Textbookscontd

AquaTex Indus. v. Techniche Solutions, 419 F.3d 1374, 1381-82(Fed. Cir. 2005) (Consistent interpretations in the industry

publications confirm one of ordinary skill in the textilemanufacturing industry would understand that commercial fiberfill

batting material is made of synthetic or polyester fibers.)

Nystrom v. Trex Co., 424 F.3d 1136 (Fed. Cir. 2005) (Indiscerning the meaning of claim terms, resort to dictionaries and

treatises also may be helpful.)


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Expert Testimony

The Federal Circuit in the en banc Phillipsdecision states thatexpert testimony can still be useful to a court interpreting

patent claims for a variety of purposes including: Understanding how the invention works

Establishing how a particular term has a specific meaningin the pertinent technical field

In contrast, Phillipswarns that expert testimony that is clearly

at odds with the claim construction mandated by the claimsthemselves should be discounted.


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Expert Testimonycontd

Also, expert testimony is usually generated at the time of and forthe purpose of litigation, and thus can suffer from bias that is

not present in intrinsic evidence. Phillipsat 1318.

Cases decided after Phillipswhere expert testimony was consideredin construing claim terms:

Conoco, Inc. v. Energy and Envtl. Intl, LC, 2006 U.S. App.LEXIS 21036 (Fed. Cir. Aug. 17, 2006) (The court consideredexpert testimony in concluding that the ordinary meaning of"stable nonagglomerating suspension," defined by the districtcourt as not agglomerating at the time that the [substance] is

introduced into the pipeline, was not in error.)


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Serio U.S. Indus v. Plastic Recovery Techs. Corp., 2006 U.S.App. LEXIS 20474 (Fed. Cir. Aug. 10, 2006) (Since it was

weighed against intrinsic evidence, the district court correctlyused expert testimony to provide background on the technologyat issue, to explain how an invention works, to ensure that thecourt's understanding of the technical aspects of the patent isconsistent with that of a person of skill in the art, or to establishthat a particular term in the patent or the prior art has a particularmeaning in the pertinent field. Citing Phillips, at 1318.)


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Varco, L.P. v. Pason Sys. USA Corp., 436 F.3d 1368, 1375(Fed. Cir. 2006) (Expert testimony confirmed, that the relayingstep is not limited to pneumatically operated valves. As a

result, the district court's interpretation of the relaying step wasconsidered unduly narrow.)

Global Maintech Corp. v. I/O Concepts, Inc., 2006 U.S. App.LEXIS 11017, 11-12 (Fed. Cir. May 2, 2006) (Fed Cir found the

district court made no error in supporting its claim construction

with expert testimony, which expressly defined a heterogenous

computer system as one that simultaneously controls multiple

computers that use different operating systems.)


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Snypro II Licensing, S.A.R.L. v. T-Mobile USA Inc., 450 F.3d

1350 (Fed. Cir. 2006) (This court has recognized that extrinsicevidence and expert testimony can help to educate the courtconcerning the invention and the knowledge of persons of skill inthe field of the invention.)


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Inventor Testimony

The Federal Court in the en banc Phillipsdecision states thatinventor testimony can still be useful to a court interpreting

patent claims. Warner-Lambert Co. v. Teva Pharms. USA, Inc., 418 F.3d

1326, 1347-48 (Fed. Cir. 2005) (Evaluating the district courtsuse of inventor testimony, the appellate court found there wasno error in concluding that the Warner-Lambert inventors

were concerned only with carbonate ions, had no intention ofclaiming bicarbonates, and consequently had no intent todeceive the PTO in not disclosing Vasotec[R].)


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Practical Approaches

1) Claim term meaning must be consistent with scope ofinvention.

2) Ordinary and customary meaning usually prevails.

3) Experts can help explain how a person of ordinary skill

understands a disputed term.4) Dictionaries can help a court understand how a person of

ordinary skill understands a disputed term.

5) Textbooks, treatises and technical dictionaries can help a courtunderstand how a person of ordinary skill understands a

disputed term.6) Inventor testimony can help explain how a person of ordinary

skill understands a disputed term.


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Has Phillipsclarified how courts should construe claims?

Is extrinsic evidence still useful in construing disputedterms?

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