Move over pajama-clad “Rathergate” bloggers, the real action this week was (as always) on the patent litigation front. September 20, 2004 marked the DUE DATE for various “Friends of the Court” to file their Amicus Briefs in Phillips v. AWH Corp., a case now before the entire panel of Federal Circuit judges.

The Phillips case is terribly important because it might well define how patent claims are interpreted in decades to follow. That is, or should be, of interest to those of us who enforce patent rights, particularly on behalf of the “little guy.” Dennis Crouch’s excellent Patently Obvious contains links to at least eleven of the briefs and summarizes the basic arguments they make. They make for fascinating reading.

Claim interpretation – basically the process of figuring out what the heck a patent actually covers – is often the whole ball game in a patent suit. That’s why it gets the attention of both patent owners and accused infringers alike. Typically, patent owners argue broad coverage for their patents. Accused infringers (not surprisingly) argue the patents are far narrower in scope. If “interesting” prior art materializes however, their positions often switch with a speed that makes flip-flopping politicians look like amateurs. The courts (who are caught in the middle but, what the heck, that’s their job) get to decide.

The basic question in Phillips is what procedure must courts follow in construing patent claims? What role, if any, should dictionaries play in the claim construction process? Should claims be construed to preserve their validity if possible? Should claims be subject to whatever procedure results in the narrowest construction? What deference, if any, should be given to determinations made by the lower court? These are some of the questions raised in Phillips. Not surprisingly, the Amicus Briefs reflect a number of views.

What strikes me most in reviewing these briefs is that they all seem to avoid confronting what I think is the real issue and problem: The courts are attempting the impossible. They are trying to reduce claim construction to a mechanical process that can be completed simply by inputting data and turning the crank without performing the essential role of Judging – a task defined by the very title their principal officers hold. Like it or not, any rational resolution of honest disputes requires judgment on the part of someone.

Traditionally, juries have decided the tough questions. Not so, here. When it comes to claim construction, the courts have staked out that territory strictly for themselves. In their view, claim construction is a question of law – a question they, and they alone, are “uniquely qualified” to answer. Why then, all the trouble?

The trouble comes because this whole idea that claims can be construed as a matter of law is a fiction. The thought that judges can accurately figure out what a claim term means to “one skilled in the art” without actually hearing from people “skilled in the art” is the elephant in the room everyone has apparently agreed not to notice. What’s that you say? Aren’t experts routinely used in Markman hearings? Of course they are. And of course judges rely on them in reaching their supposed “conclusions of law.” But why maintain the fiction that conflicting testimony from battling experts is not an issue of fact? If the question is “what does this word in a claim mean?” and if the patent or its file history does not say, and if one expert says it means “A” while another expert says it means “B,” why, then, do we say the district judge, and only the district judge, must decide? And why, after he does so, do the judges of the Federal Circuit get to say, “Oh No. You got it wrong. It actually means ‘C‘”?

What’s amusing about this process is that these are (to me anyway) just thinly disguised and perhaps desperate efforts to seek answers to the relevant questions by reference to everything EXCEPT reason, common sense and judgment. It appears the judges are running from their essential role of judging.

Time was, inventors had only to describe their inventions in their patents. Detailed claims weren’t required. That came later, after it proved too difficult for courts to figure out what, for example, a “frat-o-stat, substantially as shown and described” actually was. The legal requirement that patentees “point out and distinctly claim” what they regard as their inventions was meant to solve that problem. Apparently, even this solution has proved too difficult. Now, simply requiring a patentee to put into words what he considers to be his invention is not enough. The courts (egged on by eager defendants) are free to second guess him. They can look to remarks and arguments made during prosecution to read additional terms into the claims. They can rely on offhand and inadvertent comments in the patent specification to do the same. They can look to definitions in dictionaries to find additional words to argue over. And there is nothing to stop them from looking even to definitions of the definitions in their hopeless quest to find the right answer on paper rather than in their own minds. Where will it end? With litigants calling competing historical experts in to opine whether Daniel Webster really knew what he was talking about when he wrote that dictionary?

In a sense, we have now come full circle. Rather than simplify the problem of determining what was actually invented, claims today serve principally as a starting point, not an end. It is no longer sufficient merely to read the claims – it is necessary to look carefully at the specification and elsewhere for any possible hint what the inventor might REALLLY have meant when he claimed his invention. How this is any different from, or better than, the old system before detailed claims came into being escapes me.

My radical solution to this mess is not really my own and is inspired “chiefly” (heh, heh) by Chief Judge Mayer’s dissent from the en banc Order in Phillips. He is right. It is a fiction that claim construction is a matter of law. He is also right that this fiction has given rise to “nearly a decade of confusion.” And he is right that, unless this “fiction” is reconsidered, “any attempt to refine the process is futile.”

The solution is to once again give juries a say in what an inventor actually invented and what his patent actually covers. (Yes, I’m well aware that the Supreme Court in Markman takes a different view, but they’ve been wrong about other things too.)

Given that the Federal Circuit rejects a lower court’s claim construction in nearly half the cases it considers, and given that the outcome on appeal depends largely on the judges making up the panel, how can it be said that judges are any better at this claim construction business than juries? This is not meant as an indictment of district and Federal Circuit judges. It is meant as recognition that interpreting claims is difficult, uncertain and far more subjective than most of us “scientific types” would care to admit. But that’s nothing new. Concepts of “fairness,” “truth” and “justice” are even harder to define and apply, yet the legal system is called upon to do just that every day. And it does so largely by submitting such tough questions to juries – questions, in my opinion, that are far more difficult, profound and consequential than merely determining patent scope.

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Photo of Philip P. Mann Philip P. Mann

Philip P. Mann is a trial lawyer with over twenty years experience litigating patent, trademark, trade secret, and other intellectual property matters throughout the country.

Mann’s trial work has taken him to various federal and state courts where he’s tried both cases to…

Philip P. Mann is a trial lawyer with over twenty years experience litigating patent, trademark, trade secret, and other intellectual property matters throughout the country.

Mann’s trial work has taken him to various federal and state courts where he’s tried both cases to the court (a judge) as well as before juries. In addition to trial court work, Mann has performed appellate work before the United States Court of Appeals for the Federal Circuit.

Mann began his legal career in Chicago and Milwaukee before heading to Seattle where some of America’s most innovative companies were developing new technologies at breakneck speed. Before founding his own firm, he was a member of the Seattle Intellectual Property Law Firm, Christensen O’Connor Johnson Kindness.

Mann is an “AV” rated lawyer by Martindale Hubbell, indicative that he has reached the height of professional excellence and is recognized for the highest levels of skill and integrity.

He holds a degree in Electrical Engineering from the University of Illinois (Urbana) and received his law degree from the Washington University School of Law in St. Louis, Missouri. He is admitted to practice in the States of Illinois and Washington, as well as before the United States Patent and Trademark Office, and in various courts around the country.