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Phillips Analysis, Part 1: The New Rule is There are No Rules
July 15, 2005
Some initial observations on the Phillips opinion from the Federal Circuit, issued earlier this week:
Obviously, given the amicus brief that Joe Miller and I filed, I'm disappointed with the outcome. In broad terms, the court decided to (in its own words) "return" to the claim construction doctrine exemplified in about one-third of the cases since Markman II, and do away with the dominant Texas Digital line of cases. (The court, unfortunately, does not mention that it has summarily overruled the vast majority of claim construction analyses of the past decade.) In doing so, the court follows rather clearly what I've called the "holistic" approach to claim construction analysis: patent claims are interpreted in light of an all-encompassing, open-ended reading of the claim language, patent disclosure, prosecution history, relevant dictionaries, and on-point expert testimony.
The Phillips opinion, well crafted by Judge Bryson, outlines its argument as follows (page cites are to the slip opinion, available here):
- 1. the claims alone define the scope of the invention (pp. 8-9)
- 2. the touchstone of claim construction is what a person having ordinary skill in the relevant art (a PHOSITA, to a patent nerd) would understand the claim language to mean (as of the filing date of the patent application) (pp. 9-10)
- 3. the PHOSITA is deemed to read the claim language in the context of the entire public record of the patent (including the claim language, the specification and prosecution history) as well as "extrinsic" sources, such as expert opinion, dictionaries, other references and the like (pp. 10-11)
As any reader familiar with patent claim construction will understand, items 1-3 above are universal principles. Unfortunately, they are also pretty much content-free. The devil in claim construction methodology is with respect to step 3: how, exactly, is one supposed to use this array of available information, especially since much of it will inevitably point in different directions and/or be subject to multiple (and yet reasonable) interpretations?
Is is here, I think, that the court begins to go badly awry, "holding" the following:
While claim language is often important (pp. 12-13), the specification is "usually . . . the single best guide to the meaning of a disputed term." (p. 13)The prosecution history is very important (p. 17), and yet unclear and less useful than other sources (p. 17), and yet (again!) "can demonstrate how the inventor understood the invention" (p. 17)
Dictionaries can be very useful (p. 19), as can on-point expert opinion (p. 19), though these sources are "in general less reliable" than the information noted above (p. 19), because this information was perhaps not created in light of the patent (p. 20), was perhaps created in light of the patent litigation (p. 20), can be gleaned from a "virtually unbounded" universe of information (p. 20), and might perhaps contradict the "indisputable public record" (p. 20).
"In weighing all the evidence bearing on claim construction, the court should keep in mind the flaws inherent in each type of evidence and assess that evidence accordingly." (p. 21)
After setting forth these 'guiding principles', the court goes on to set aside the use of dictionaries (or other objective reference sources, apparently) as a starting point for claim construction analysis:
"That approach .. improperly restricts the role of the specification in claim construction." (p. 24)"The Texas Digital line of cases focuses the inquiry on the abstract meaning of words rather than on the claim terms within the context of the patent." (p. 25)
Dictionaries can provide an array of definitions, some of which might be different than "the avowed understanding of the patentee." (p. 26)
Dictionaries often provide different definitions for the same words, which causes courts to have to choose among competing definitions. (p. 27)
"[H]owever, we do not intend to preclude the appropriate use of dictionaries. [They] are often useful in understanding the commonly understood meaning of words." (p. 28)
Finally, the court turns its focus to the important question: the relationship between the specification and the claims:
"The line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court's focus remains on understanding how a person of ordinary skill in the art would understand the claim terms." (p. 29)"Much of the time, upon reading the specification in that context, it will become clear whether the patentee is setting out specific examples of the invention to accomplish those [disclosure] goals, or whether the patentee instead intends for the claims and the embodiments in the specification to be strictly coextensive. The manner in which the patentee uses a term within the specification and claims usually will make the distinction apparent." (pp. 29-30)
And in conclusion, the court leaves us with the following:
"[T]here is no magic formula or catechism for conducting claim construction. Nor is the court barred from considering any particular sources or required to analyze sources in any specific sequence, as long as those sources are not used to contradict claim meaning that is unambiguous in light of the intrinsic evidence. ... The sequence of steps used by the judge in consulting various sources is not important; what matters is for the court to attach the appropriate weight to be assigned to those sources in light of the statutes and policies that inform patent law. In [prior caselaw], we did not attempt to provide a rigid algorithm for claim construction, but simply attempted to explain why, in general, certain types of evidence are more valuable than others." (pp. 30-31)
Then, in a rather interesting twist (and one which would seem to foreshadow some problems ahead), the court goes on to apply these guidelines to the facts of the case at hand -- and issues a construction that
(a) is the same one urged by Judge Dyk in a dissent to the original panel opinion -- even though he was using the now-discredited Texas Digital line of cases for support;(b) is the opposite one as that urged by the original panel majority (Judges Lourie and Newman), even though the same methodological approach was followed; and
(c) loses the agreement of Judges Lourie and Newman in the en banc decision.
So there you have it: Phillips in a nutshell. But what does it really mean? What is the effect of Phillips?
One possible (and perhaps comforting, depending on your view) observation is that Phillips might not change very much of anything. As is clear from the outline above, the court made serious efforts to ensure that no "rules" could be discerned. Perhaps it means for the status quo (a mess, by the way) to continue, with each panel deciding its own particular methodological approach in each case at hand, depending on a number of factors. Under this view, other than the "extreme" Texas Digital, business continues as usual. See The Claim Construction Project for an empirical analysis of the dubious success of the post-Markman status quo. From the judges' perspective, this approach might have the benefit of keeping attorneys, academics, and district courts "off their backs" about the messy claim construction jurisprudence: after Phillips it's SUPPOSED to be messy!
On the other hand, whether it thinks so or not, the Federal Circuit is in the business of appellate judging, and its opinions have a huge impact on the way the patent system operates. So although I can't discount the fact that the judges thought they were avoiding any real change in the doctrine, the reality of the matter is that Phillips has changed the landscape. At least initially, here are some thoughts about how:
The New Rule: No Rules. The court, as noted above, repeatedly makes assertions about the correct methodological approach or weighting of evidence and then withdraws or undermines them. Are dictionaries okay or not? What about inferences from the embodiments in the specification? Should experts weigh in? The best the court can bring itself to do is its final statement: there is no "magic formula", nor are there any limits to what information can be used and in what way. No rules.The Supreme Federal Circuit. As patent lawyers will quickly recognize, the "no rules" approach means that the Federal Circuit decision on claim construction is the only one that matters. Because the court did not constrain itself in any way, each claim construction dispute it receives will be analyzed in markedly different ways, based on the "context" of the particular case. In this way, Phillips is somewhat shocking in its transparent power allocation to the Federal Circuit: because only that court knows what particular mixture of information, its weighting, the use of inferences, and the like will be "appropriate" in each case, nobody else -- the PTO, lower courts, competitors, or even patentees themselves -- can be anywhere near reasonably confident in their own claim construction. Want a claim construction? That will cost you three years and several million dollars.
More Disputes, More Litigation. But the "no rules" approach laid down by Phillips has even broader effects. First, by raising the uncertainty about the enforceable scope of patents, we can expect more disputes. More disputes hurts all parties to the patent system -- it makes patents a less valuable tool in the marketplace, it can needlessly chill competitors and innovators who can't predict the effect of existing patents, and it adds pure social costs to the equation in terms of the costs of lawyers and litigation. Indeed, the only real winners in Phillips are the patent lawyers. And, of course, those who teach patent lawyers -- bonus!
Less Disclosure in Patents. Phillips' repeated exhortation of the patent document as "an integrated document," as the reason why the specification should play a potentially dominant role in claim construction is likely to reduce the amount of disclosure provided in the patent document. The reason is simple: if the "game" is that claim language can be easily altered (especially narrowed) via information provided in the specification, then savvy patent attorneys will simply provide less relevant information (subject, as always, to the statutory validity requirements). This "minimal disclosure" approach has a second major advantage in light of Phillips: because of the complete lack of guidance provided about how information, especially non-patent information, is to be regarded and weighted in the analysis, a patent with a very thin disclosure is far more likely to gain one interpretation (a narrow one, to enhance the chance of issuance) from the PTO and another for later litigation (a broader one, to expand scope). This is the holy grail for patent prosecutors, and Phillips has pretty clearly shown them the way.
So for now, those are my initial thoughts. Subject to revision; your mileage may vary; this is not legal advice. In all, I'm disappointed with Phillips -- both as an opportunity lost, and as an example of some things I think are wrong with the Federal Circuit. But more about that in subsequent posts . . .
I should note here (though it goes without saying) as well that my criticism of the court is in no way meant to be disrespectful of the judges themselves. Given the current relationship (or lack thereof) between the patent academic community and the court, this sort of disclaimer bears repeating. Phillips is a mistake -- maybe even a really big one -- but I have no doubt that the judges thought long and hard about it before coming to their conclusion.
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