Page 8 - Litigation

S8 | MONDAY, FEBRUARY 24, 2014 | Litigation
| NYLJ.COM

Question Will Linger
in the context of the entire patent, including
BY MARK J. ABATE
the speciication;” (4) claims must be read in
AND CALVIN E. WINGFIELD JR.
view of the speciication, of which they are
After En Banc Review
a part”; and (5) “the speciication ‘is always
The U.S. Court of Appeals for the Federal highly relevant to the claim construction
Circuit is currently considering en banc analysis. Usually, it is dispositive; it is the
the level of deference to which a dis- single best guide to the meaning of a disputed
trict court’s interpretation of patent claims ‘Lighting Ballast’ term.”9 The Federal Circuit also stated that it
Of
is entitled in Lighting Ballast Control v. Phil- had emphasized since its creation that “[t]he
ips Electronics North America, No. 2012-1014.1 speciication is . the primary basis for con-
Undoubtedly, a lot will be written on the impli- 10 struing the claims.”
cations of that decision, and it will inform how Unsurprisingly, those statements
practitioners craft their claim construction were uniformly viewed as an endorse-
arguments going forward. The Federal Cir- Claim construction issue remains uncertain.
ment of a specification-centric approach
cuit’s decision in Lighting Ballast, however, to claim interpretation.11 For example,
will not resolve a growing uncertainty about one post-Phillips decision stated that
the proper methodology for construing patent “[t]he most relevant source [to claim con-
claims in the irst place. Establishing a con- struction] is the patent’s speciication, which
sistent, predictable approach to claim con- is the single best guide to the meaning of
struction is perhaps of even more importance a disputed term.”12 To emphasize the point
than the standard of appellate review applied further, another decision originally stated that
to a district court’s construction.After all, “Phillips teaches that these sources should
2
“claim construction is the single most impor- be accorded relative weights in the order
tant event in the course of a patent litigation. listed, with the words of the claims them-
It deines the scope of the property being selves being the most relevant.”13 The Federal
enforced, and is often the difference between Circuit issued an errata sheet to delete that
infringement and non-infringement, or validity statement and instead emphasized that intrin-
and invalidity.”3
sic evidence is more relevant than extrinsic
evidence.14
Claim Construction Methodology in‘Phillips’
Emergence of Competing Methodologies
After the Supreme Court held in Markman
v. Westview Instruments4 that claim construc- Notwithstanding the clear statement in
tion was a task for the court, a split developed Phillips that the speciication should be the
in the Federal Circuit over whether it was “primary basis for construing the claims,”15
proper to interpret patent claims in view of recently some panels of the Federal Circuit

the description of the invention in the pat- have spawned a competing line of author-
ent speciication or to rely on the “ordinary” ity—one that is claim-centric and elevates
meaning of claim language as derived from the plain and ordinary meaning of a claim
dictionaries, expert testimony, and other term over all else. That methodology favors
extrinsic source. The Federal Circuit resolved giving claim terms their plain and ordinary
that split in its 2005 en banc decision in Phil- meaning to one of ordinary skill in the
lips v. AWH.5
art at the time of the invention unless the
In Phillips, the patent-in-suit claimed inventor acted as his own lexicographer or
“modular, steel-shell panels welded togeth- intentionally disclaimed or disavowed
er to form vandalism-resistant walls.”6 The claimed scope.16
district court construed the term “bafles” In addition to the competing factions in
restrictively to preclude bafles at 90-degree the Federal Circuit between the speciication-
angles based on a inding that the specii- centric camp and the claim-centric camp,
cation described only baffles at acute or there also appears to be another emerging

obtuse angles. A panel of the Federal Circuit competing methodology that focuses on what
afirmed the district court’s construction.7 the patentee identiied in the speciication as
The en banc court reversed the district court his/her “actual invention.”17
because neither the claims nor the specii- The announcement of these compet-
cation required placement of the bafles at ing methodologies by panels of the court
any particular angle, the district court had appear to be inappropriate because a panel
construed “bafles” too restrictively based cannot deviate from an en banc holding of the
on the speciication.8
court.18 To make matters worse, this past fall
The Federal Circuit began its en banc during oral argument in Juxtacomm-Texas
decision by stating what today have become Software v. Tibco Software. Chief Judge
standard refrains about claim construc- Randall Ray Rader referred to those Federal
tion: (1) “[I]t is a ‘bedrock principle’ of pat- Circuit decisions that rely upon the teach-
ent law that ‘the claims of a patent deine the ings of the speciication to construe claims CK
invention to which the patentee is entitled as an “off-shoot” or “branch” of the court’s STO
BIG
the right to exclude’”; (2) claims are generally jurisprudence:
given their ordinary and customary meaning We’ve got, admittedly somewhat, how
to one of ordinary skill in the art at the time do I characterize it, off-shoot of our
of the invention; (3) “the person of ordinary jurisprudence that says, you know, the
skill in the art is deemed to read the claim specification can be more important
term not only in the context of the particular than the claims in some instances. The
claim in which the disputed term appears, but
claims can be broad and we’re going to
bring all the speciics into the, into those
claims. . [Y]ou do know that branch of
MARK J. ABATE is a partner and CALVIN E. WINGFIELD JR. our cases. I wouldn’t say it is the trunk
is an associate in Goodwin Procter’s IP litigation of the tree, but it is, there is a branch
group.
»
Page S12