Hope this helps.

What Every Attorney Should Know About Claim Construction Before Having A Markman Hearing

(Michael Cukor)

I) Introduction

Since the spring of 1996, when the Supreme Court handed down its decision in Markman v. Westview, the vast majority of patent infringement actions have a Markman hearing sometime before trial. While the Supreme Court affirmed the Federal Circuit's decision that claim construction must be performed by a judge rather than a jury the actual process for performing a valid claim construction has been quite elusive. Consequently district courts continually struggle to ensure that their rulings are valid in that they are based on appropriate evidence, considered in the appropriate sequence. Questions have been raised about the future role of Markman hearings and the Federal Circuit itself has solicited and recently accepted amicus briefs in a case where the current method for claim construction could be completely revised.

Where is Claim Construction Going After Phillips

a) Phillips v. AWH Corporation, (Fed. Cir. 2004)

In what promises to be one of the most important decisions affecting claim construction, the Federal Circuit has decided to have an en banc rehearing of the Phillips appeal in order to firmly resolve many of the outstanding issues concerning claim construction and the use of dictionaries. Unlike the Supreme Court, the Federal Circuit does not seem to be terribly concerned with whether the underlying case actually requires a decision that will resolve the outstanding issues in claim construction. Interestingly, Chief Judge Mayer, who has consistently maintained that Markman was decided incorrectly, dissented from the court's decision to review the Phillips case en banc. He stated:

Until the court is willing to reconsider its holdings in Markman v. Westview... that claim construction is a pure question of law subject to de novo review in this court, any attempt to refine the process is futile. Nearly a decade of confusion has resulted from the fiction that claim construction is a matter of law, when it is obvious that it depends on underlying factual determinations which, like all factual questions if disputed, are the province of the trial court, reviewable on appeal for clear error. To pretend otherwise inspires cynicism. Therefore, and because I am convinced that shuffling our current precedent merely continues a charade, I dissent from the en banc order.

Despite Judge Mayer's strong feelings, the Federal Circuit will likely attempt to announce its ruling in a manner that harmonizes it with Markman's precedent. The following is a list of questions that the Federal Circuit asked the parties, the PTO, and anyone else interested, to brief:

1. Is the public notice function of patent claims better served by referencing primarily to dictionaries to interpret a claim term or by looking primarily to the patentee's use of the term in the specification?
2. If dictionaries should serve as the primary source for claim interpretation, should the specification limit the full scope of claim language (as defined by the dictionaries) only when the patentee has acted as his own lexicographer or when the specification reflects a clear disclaimer of claim scope? If so, what language will satisfy those conditions?
3. If the primary source for claim construction should be the specification, what use should be made of dictionaries?
4. Instead of viewing the claim construction methodologies in the majority and dissent of the now-vacated panel decision as alternative, conflicting approaches, should the two approaches be treated as complementary methodologies such that there is a dual restriction on claim scope, and a patentee must satisfy both limiting methodologies in order to establish the claim coverage it seeks?
5. When, if ever, should claim language be narrowly construed for the sole purpose of avoiding invalidity.
6. What role should prosecution history and expert testimony play in determining the claim term meaning?
7. Is it appropriate for this court to accord any deference to any aspect of trial court claim construction rulings? If so, on what aspects, in what circumstances, and to what extent?

As is evident from the questions the Federal Circuit put to the legal community, the scope of what is at stake is enormous.

More than 30 individuals and organizations took up the call and filed amicus briefs in this matter. The USPTO, ABA, AIPLA, Electronic Frontier Foundation and such companies as Microsoft Corp., IBM Corp. and Google Inc., were among those voicing their opinions. The following is a brief summary of some of the positions.

With regard to question one, dictionaries v. specification, most amice believed that, arguably contrary to the current state of the law, the dictionary should only be consulted after the specification. The PTO felt strongly that reliance on dictionary definitions as a foundation for claim meanings has generated inconsistent and unpredictable results and that the court instead should analyze terminology within the context of the patent application itself. Notably, the ABA argued that neither the dictionary nor the specification should control, but both should be equally weighted. The AIPLA brief focused more on the concept that courts should construe patent terms from the perspective of a person of ordinary skill in the relevant art at the time the patent issued, and that the intrinsic record is the best evidence of that perspective. The Intel, IBM, Google, Micron, and Microsoft brief advocated against relying too heavily on dictionaries and pointed out that the volume of different dictionary definitions available prevents the public from having any certainty as to the scope of a patent's claims. Most briefs also suggested that dictionary use should be limited to either confirming the construction achieved from the specification or augmenting the definition if the specification is ambiguous.

With regard to question seven, almost all of the briefs supported the idea that the Federal Circuit should give more deference than the current de novo standard allows to the decisions of the district courts. Many of the briefs argued that even though claim construction was a matter of law, since it still involved hearing argument and evaluating testimony, the trial judge is in a much better position than an appellate judge to evaluate the evidence. Accordingly, most of the briefs suggested that a trial courts decision, at least with regard to the factual determinations necessarily underlying a claim construction, should be entitled to some deference and reviewed under a different standard than de novo. All of the briefs expressed the hope that the Federal Circuit's decision will revise the current method for construing claim terms so that both the public and the courts can have the elusive certainty that everyone craves.