Tcl - Phillips v. Awh Corp.: Reaffirming the Claim Construction Status Quo - November 2005 - Intellectual Property and Technology Law
| Publication year | 2005 |
| Pages | 55 |
| Citation | Vol. 34 No. 11 Pg. 55 |
2005, November, Pg. 55. TCL - Phillips v. AWH Corp.: Reaffirming the Claim Construction Status Quo - November 2005 - Intellectual Property and Technology Law
November 2005
Vol. 34, No. 11 [Page 55]
Intellectual Property and Technology Law
Phillips v. AWH Corp.: Reaffirming the Claim Construction Status Quo
by William Sloan Coats, Heidi L. Keefe, Wendi R. Schepler Mark R. Weinstein
This column is prepared by the CBA Intellectual Property and Technology Law and Policy Sections. The column provides information of interest to intellectual property and technology attorneys who advise clients on protecting and exploiting various forms of intellectual property in the marketplace.
Column Editors:
Nathaniel T. Trelease, WebCredenza, Inc., Denver - (720) 937-9930, ntrelease@webcredenza.com; Jim Brogan, Cooley Godward, LLP, Broomfield - (720) 566-4190,
About The Authors:
William Sloan Coats, Heidi L. Keefe, and Mark R. Weinstein, respectively, are partners in the Palo Alto office of White & Case LLP - wcoats@whitecase.com, hkeefe@whitecase.com, mweinstein@whitecase.com; Wendi R. Schepler is an associate at the same firm - wschepler@whitecase.com. All of the authors are members of the firm's IP litigation group and focus their practices on high-technology patent litigation. They can be reached through the firm at (650) 213-0300.
This article reviews the Federal Circuit's en banc decision in Phillips v. AWH Corp., in which the court reviewed the law of patent claim construction, a critical component of patent infringement litigation. The court reaffirmed its prior precedent that claim construction is purely a matter of law, and de-emphasized the role of extrinsic sources such as dictionaries in claim construction.
Claim construction is often the most critical component of a patent infringement action. However, in recent years, no single methodology for claim construction has been applied by the Federal Circuit. One line of cases stemming from the court's decision in Vitronics Corp. v. Conceptronic, Inc.1 emphasizes the role of a claim itself and the specification of the patent in determining the meaning of a claim term.
Another, more recent, line of cases, including Texas Digital Systems, Inc. v. Telegenix, Inc.2 and Nystrom v. Trex Co., Inc.,3 emphasizes the role of extrinsic sources such as dictionaries in determining the meaning of a claim term. In Nystrom, the majority focused on several dictionary definitions to show the ordinary meaning of the disputed term, and held that the specification of the patent did not exclude any of the dictionary definitions.4 The dissent in that case asserted that this approach is contrary to prior court precedent that when a dictionary definition shows two competing definitions, the court should look to the intrinsic evidence to determine which of the definitions should be applied to the claim term at issue.5
On July 12, 2005, the Federal Circuit issued its en banc decision in Phillips v. AWH Corp.6 to clarify the proper methodology for claim construction.7 The court specifically discussed to what extent a court should resort to and rely on the specification of a patent in determining the proper scope of its claims and what role extrinsic evidence such as dictionaries should play in claim construction. The majority opinion reaffirmed the roles of the specification and extrinsic evidence in construing patent claims, and reversed the district court's summary judgment of noninfringement.
This article provides a thorough account of the Phillips case, beginning with a brief overview of the suit, the district court's ruling, and the appeal to the Federal Circuit. It then focuses on the process the court used in making its en banc decision, as well as the factors it considered in its analysis, including the role of a patent's specification, extrinsic evidence, and the language of a claim. Lastly, it presents a concurring and dissenting opinion regarding the court's en banc decision and the methodology behind that decision.
Background of Phillips
In 1997, Edward Phillips brought a suit in the U.S. District Court for the District of Colorado, accusing AWH Corporation, Hopeman Brothers, Inc., and Lofton Corporation (collectively, "AWH") of misappropriation of trade secrets, as well as infringement of U.S. Patent No. 4,677,798 ("the '798 patent"). The '798 patent is directed to modular steel shell panels that can be welded together to form walls. The walls are load bearing, impact resistant, and insulating.
After issuance of the '798 patent, Phillips entered into an arrangement with AWH to market and sell the panels. The arrangement ended in 1990. The next year, Phillips received a brochure from AWH that suggested to him that AWH was continuing to use his trade secrets and patented technology without his consent. Phillips sent a series of letters to AWH in 1991 and 1992, accusing AWH of patent infringement and trade secret misappropriation. Correspondence between Phillips and AWH regarding the matter ceased after that time.8
The District Court Action
In ruling on AWH's motion for summary judgment of noninfringement, the district court focused on the language of claim 1, which recites "further means disposed inside the shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel shell walls."9 The district court interpreted this language as "a means . . . for performing a specified function" subject to 35 U.S.C. § 112, paragraph 6 ("Paragraph 6"), which states that such language "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof."10
After a review of the specification of the '798 patent, the court noted that the specification only disclosed baffles placed at other than 90 degrees to the wall faces, and thus ruled that a baffle must extend inward from the steel shell walls at an oblique or acute angle to the wall face. Because Phillips could not prove infringement under that claim construction, the district court granted summary judgment of noninfringement. The court also dismissed the trade secret...
To continue reading
Request your trial