Phillips v. AWH, Corp., a doctrine of equivalents case?

AuthorSturicz, Natalie

INTRODUCTION I. IMPORTANT LEGAL DOCTRINES IN KIRIN-AMGEN AND PHILLIPS A. History of Claim Interpretation in the United States B. The Development of Problems with the Doctrine of Equivalents II. THE CASES A. Phillips v. AWH, Corp. B. Kirin-Amgen, Inc. v. Hoechst, Inc. III. SIMILARITIES BETWEEN PHILLIPS AND KIRIN-AMGEN AND BENEFITS OF ELIMINATING THE DOCTRINE OF EQUIVALENTS A. Similarities between the Cases B. Benefits of Eliminating the Doctrine of Equivalents C. Other Options Available to Patentees for Broadening Claims D. Many Still Favor the Doctrine of Equivalents CONCLUSION INTRODUCTION

As noted by several U.S. courts, the doctrine of equivalents has been "unworkable" for a number of years. (1) However, as American courts move toward a more holistic approach to claim interpretation, the doctrine of equivalents will become unnecessary as a means of expanding patent scope. (2) The holistic approach to claim interpretation involves a contextual reading of the patent claims that takes into account the definitions used throughout the patent document, including the specification and prosecution history. (3) It places less emphasis on extrinsic sources, like dictionary definitions and treatises, and more emphasis on the patentee's intent when he drafted his claims. In this way, the holistic approach protects the intent of the patentee, while avoiding over-broad claim interpretation. (4)

U.S. courts have adopted the standard used by the House of Lords in the landmark claim interpretation case, Kirin-Amgen v. Hoechst, whereby the House of Lords defines claim language as would a person reasonably "'skilled in the art.'" (5) This standard for claim interpretation is consistent with the holistic approach recently favored by the Federal Circuit in Phillips v. AWH, Corp., and will push U.S. patent law further toward abolishing the doctrine of equivalents as a means of expanding claim scope. (6)

Claims delimit a patentee's intellectual property rights and notify the public of what information a patentee owns, so the claims and the way in which they are interpreted are very important in patent litigation. Some U.S. courts focus heavily on abstract dictionary definitions and other extrinsic sources in order to objectively interpret claim meaning. (7) Such abstract methods of claim interpretation lead to over-broad patent rights in some cases, and they also fail to account for the patentee's intentions when he wrote the claims. (8) The courts' reliance on abstract extrinsic definitions in claim interpretation has meant that patentees did not always receive the protection they expected when they drafted their patent claims; this interpretive method has also made it difficult for third parties to determine what information falls within the claims' scope. (9) In short, abstract claim interpretation provides very little predictability for concerned parties who are seeking to predict their rights or to avoid infringement.

Although abstract claim interpretation leads to unpredictable results, the results seem to be more objective, at least at first glance. (10) Dictionary definitions, treatises, and similar resources provide uniform definitions that are easy for most people to understand. However, patentees often draft claims using terminology that has special meaning to them and to other members of their professions. Dictionary definitions do not always adequately express what a patentee intended to convey, and this Comment will explore a new standard adopted by the Federal Circuit in Phillips v. AWH, Corp. that addresses this very issue. This Comment will also discuss the similarities between the standard adopted in Phillips with the standard adopted by the House of Lords in the United Kingdom case, Kirin-Amgen v. Hoechst, and its implications for U.S. doctrine of equivalents law.

While extrinsic sources remain an important part of claim interpretation in the United States, the context of the claims (including intrinsic evidence of meaning, contained in the specification and prosecution history, and the inventor's intent) should carry more weight in deciding the claims' meanings. Rather than relying too heavily on abstract, extrinsic sources, like dictionaries, U.S. courts are moving toward a standard similar to the one adopted by the House of Lords in Kirin-Amgen. (11) If courts continue to move away from abstract extrinsic patent claim interpretation, the doctrine of equivalents will become less necessary to ensure the rights of patentees, and will eventually become obsolete.

Adopting a "person reasonably skilled in the art," or "person having ordinary skill in the art" approach to claim interpretation and eliminating the doctrine of equivalents in patent infringement cases would benefit patent law in several ways: (1) when courts interpret patent claims from the perspective of a person reasonably skilled in the art, patentees would be better able to predict and control the scope of their intellectual property rights during patent prosecution; (12) (2) when courts eliminate the doctrine of equivalents in conjunction with the reasonableness standard, patents would better fulfill their notice function, and others skilled in the art will be better able to determine the scope of prior patents; (13) (3) when courts eliminate the doctrine of equivalents, competition would also improve because patentees will no longer receive protection for after-arising technologies, and other inventors will be better able to assess risk of infringement before they enter the market. (14)

  1. IMPORTANT LEGAL DOCTRINES IN KIRIN-AMGEN AND PHILLIPS

    1. History of Claim Interpretation in the United States

      In the earliest days of patent litigation in the United States, patent claims did not even receive mention in the statute--patent attorneys began including claim-type language in patent specifications prior to the Patent Act of 1836 to more clearly define their clients' inventions for the United States Patent and Trademark Office (USPTO). (15) A line of cases following enactment of the 1836 Act, beginning with Merrill v. Yeomans, establishes the claims of the patent as the most important interpretive tool. (16) "[T]he claims are 'of primary importance, in the effort to ascertain precisely what it is that is patented.'" (17) In order to provide the public with notice of what was protected in a given patent, claim interpretation based on the "plain meaning" of the words used, became the norm. "[I]t is 'unjust to the public, as well as an evasion of the law, to construe [the claim] in a manner different from the plain import of its terms.'" (18) Earlier cases focused on the use of extrinsic evidence like dictionaries, treatises, and encyclopedias to find the literal, objective meanings of claim terms; but use of sources unconnected and unrelated to the patent led to abstract, and sometimes absurd, claim interpretations. (19) Extrinsic interpretive tools are meant to provide consistency and objectivity in the process of claim interpretation, but they make it more difficult for those skilled in the art to determine how the court would interpret the patentee's specialized language. (20) Rather than relying on their own knowledge of such language, third parties have to attempt to predict which extrinsic sources courts will use, and then to determine which of the definitions held in those sources will be chosen. This system makes it very difficult to determine how patent claims will be interpreted, and how to avoid infringing those claims.

      In most recent claim interpretation cases, courts have looked instead to intrinsic information first, including the specification and prosecution history, which have been resurrected from the "secondary role" in which they were placed after Graver Tank. (21) Using intrinsic interpretive tools leads to less abstract, and often narrower, claim interpretation. (22) Narrower claim interpretations work to the detriment of patentees in the sense that they will not receive such broad protection against infringement, but this intrinsic approach provides everyone involved with a higher level of predictability as to what information is encompassed by a particular claim. (23) This should aid patentees in drafting claims and should also help third parties to better avoid infringement.

      Phillips v. AWH, Corp. suggests that U.S. courts should use a "person of ordinary skill in the art" standard, in which the court will interpret claims, in light of intrinsic evidence, from the perspective of a reasonable person skilled in the relevant art. (24) This modern standard is practically identical to the standard adopted by the House of Lords in Kirin-Amgen, except that in Kirin-Amgen, the House of Lords treated the person reasonably skilled in the art standard as a substitute for any doctrine of equivalents or similar claim-broadening device. (25)

      Prior to Phillips, in which the court attempts to clarify the importance of intrinsic versus extrinsic interpretive tools, conflict existed between the two methods of claim interpretation described above, and Phillips attempts to resolve this conflict. (26) The two conflicting canons of claim construction were as follows: "(a) that claims are to be interpreted in light of the specification or prosecution history, and (b) that claims may not be modified beyond their actual language by reference to the specification or prosecution history." (27) The two methods were polarized, and there was little certainty or consistency with respect to which standard the court would choose in a particular case. (28) This inconsistency hindered the notice function of patent claims and was a source of confusion for inventors trying to draft patent claims that would best protect their work. Under the standards used in either Kirin-Amgen or Phillips, the first canon receives precedence over the second, thus eliminating any tension between them. This canon of construction is consistent with the holistic approach...

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