DM has been indicating several times on recent documents

re Phillips v. AWH corp as a case law. Usually court would

like to hear first the strength of Intrinsic evidence and later

on the dictionary as well as Treatises.

Early Discovery Claim Construction

¶ 35 At the point that claim construction is a matter of law whose determination is solely the province of the court, it is disingenuous to argue that substantial discovery is necessary to determine the meaning of claim terms. Before making the case for early discovery claim constructions, it is necessary to review the recent holding of the CAFC in Phillips v. AWH.

¶ 36 The CAFC's most recent examination of the procedural trials and tribulations of claim construction occurred in Phillips v. AWH Corp. In Phillips, the CAFC, sitting en banc, reviewed an earlier panel decision upholding a district court finding of infringement on "steel-shell panels that can be welded together to form vandalism resistant walls."67 The court granted the petition for rehearing "in order to resolve issues concerning the construction of patent claims."68 It certified seven questions for review, inviting amicus briefs from all interested parties.69

¶ 37 Relevant to this comment is the court's summary of the utility of certain types of evidence in the process of claim construction. Initially, the court divided cases requiring claim construction into two types: those where "the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges" and the controversies where "determining the ordinary and customary meaning of the claim requires examination of terms that have a particular meaning in a field of art."70 In resolving disputes over the meaning of terms in the first type of cases, the CAFC noted that "general purpose dictionaries may be helpful."71 In the instances of the second type, the court discussed the myriad of sources that a court may use to determine the ordinary meaning of claim language.72 Courts rely on both intrinsic and extrinsic evidence to aid in claim construction.73 Intrinsic evidence includes the patent claims, the specification, and the prosecution history.74 Extrinsic evidence is material that is external to the patent and includes inventor and expert testimony, general purpose and technical dictionaries, and learned treatises.75

¶ 38 In attempting to determine claim meaning, the en banc court observed that the inquiry begins with the context that the disputed words appear in the claims at issue.76 Additionally, "[b]ecause claim terms are normally used consistently throughout the patent," courts may also use other patent claims to aid in defining terms that are in issue.77 After reviewing the patent claims, the court next examines the patent specification. The court commented that the "importance of the specification . . . derives from its statutory role," specifically, the "statutory requirement that the specification describe the claimed invention in 'full, clear, concise, and exact terms.'"78 Addressing the utility of the specification in claim construction, the CAFC previously commented that, "[u]sually, it is dispositive; it is the single best guide to the meaning of a disputed term."79

¶ 39 The third type of intrinsic evidence that courts may consider is the patent prosecution history.80 The file history includes all correspondence between the inventor (specifically, the inventor's attorney) and the patent office, and is a complete record of all proceedings including any prior art disclosed to the USPTO.81 Because the "prosecution history represents an ongoing negotiation between the PTO and the applicant," and "lacks the clarity of the specification" it is at the bottom of the intrinsic evidence "hierarchy."82

¶ 40 Consistently, the CAFC has held that extrinsic evidence is "less significant than the intrinsic record in determining 'the legally operative meaning of claim language.'"83 The first branch of the extrinsic evidence hierarchy yields two types of evidence: the use of inventor/ expert testimony and the use of dictionaries and treatises on the subject matter at issue.

The Phillips court observed that expert testimony can be useful to a court for a variety of purposes, such as to provide background on the technology at issue, to explain how an invention works, to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field.84

¶ 41 However, the court stated that such testimony should be given little weight when it is contrary to the intrinsic evidence.85 Moreover, the CAFC summarized its view that "extrinsic evidence in general is less reliable than the patent and its prosecution history in determining how to read claim terms . . . ."86

¶ 42 General purpose and technical dictionaries as well as learned treatises may also be used to determine claim meaning.87 Judge Bryson noted that,

[b]ecause dictionaries, and especially technical dictionaries, endeavor to collect the accepted meanings of terms used in various fields of science and technology, those resources have been properly recognized as among the many tools than can assist the court . . . .88

¶ 43 Additionally, the Phillips court abandoned its earlier holding in Texas Digital Systems v. Telegenix, which upheld the use of dictionaries as a starting point in determining claim meaning.89 It criticized the Texas Digital holding as having "too much reliance on extrinsic sources."90 The CAFC held that a district court may consider any particular extrinsic sources "as long as those sources are not used to contradict claim meaning that is unambiguous in light of the intrinsic evidence."91

¶ 44 Based on the holding in Phillips, it is possible to conclude that there is a hierarchy of evidence that may be used to find the plain meaning of claim terms that are in issue. First, courts should look to intrinsic evidence for the plain meaning of the words in dispute, particularly the patent claims, the specification, and the prosecution history. Second, a court may evaluate extrinsic evidence to the extent this evidence accords with the intrinsic evidence.

¶ 45 At the point that claim construction is determined by the court as a matter of law, it is self-evident that substantial discovery is unnecessary to determine the plain meaning of claim terms. In Phillips, the CAFC discussed six types of intrinsic and extrinsic evidence that may be used to determine claim meaning, including the patent claims, specification, and prosecution history as well as testimony, dictionaries, and treatises.92 Each of these six sources is available to the court regardless of the level of discovery performed by the parties. As such, absent guidance from the CAFC to the contrary, substantial discovery is unnecessary to determine claim construction.

Conclusion

¶ 61 Markman brought promises of greater certainty and uniformity in patent claim construction. However, the high rate of reversal of district court claim construction orders by the CAFC evidences the uncertainty in claim construction. Furthermore, the prevalence of forum shopping showcases the need for greater uniformity. Although Markman was a good first step, the time has come for additional procedural changes to bring about both enhanced certainty and expanded uniformity.

¶ 62 To enhance uniformity of claim construction across the federal districts, a uniform rule should be adopted requiring early discovery claim construction. The local patent rules of the Northern District of California may be used as guide for such a rule. In light of the recent holding of the CAFC in Phillips v. AWH, district courts must use intrinsic evidence as the starting point for all claim constructions. In early discovery claim construction, the court can hear the same evidence that it would hear in post-discovery Markman hearings. The accompanying reduction in forum shopping provides greater efficiency to both the parties and the court system.

¶ 63 To maximize the certainty of claim construction at the earliest possible time, district courts should be encouraged to certify interlocutory appeals of their claim construction. Moreover, the CAFC must begin to accept these appeals. The resultant reduction in the level of uncertainty informs parties of their positions at an early stage and can induce parties to settle.

¶ 64