We say all the time that in a patent application you can define the terms you want to use in the claims to give them the meaning you intend; the meaning that will apply during any claim interpretation. But what happens when you do not define a term in the specification? Well, that really all depends. As a general rule the ordinary plan meaning of the term will be used. This issue of defined meaning arose recently in a high profile case, giving us a chance to review the ruling and discuss defining terms more generally.
Recently in the ongoing patent war between Apple and Motorola, Judge Richard Posner of the United States Court of Appeals for the Seventh Circuit issued a ruling, while sitting by designation as a trial judge. See Apple v. Motorola No. 1:11-cv-08540 (N.D. IL., Jan. 17, 2012). Motorola had argued that Apple’s U.S. Patent No. 7,479,949 was invalid because it used the term “heuristic,” thereby rendering the claims invalid as being indefinite and in violation of 35 U.S.C. 112, ¶ 2.
Motorola’s primary evidence of indefiniteness consisted of statements in various depositions taken during discover. The nine listed inventors were deposed and most of them conceded that the term “heuristics” is “sort of a vague word.” They were also unable to suggest an appropriate definition. Nevertheless, Judge Posner agreed that the definition of heuristics provided by Apple for purpose of claim construction was appropriate and keeping with the patent disclosure. Apple defined “heuristics” to mean “one or more rules to be applied to data to assist in drawing inferences from the data.”
Judge Posner, citing Solomon v. Kimberly-Clark Corp., 216 Fe.3d 1372, 1379 (Fed. Cir. 2000), explained that it is inappropriate to consider inventor testimony when assessing validity under section 112, ¶ 2. For the uninitiated that may seem odd, but it really has to be that way. The question isn’t whether inventors or even someone of skill in the art can define any particular term, but rather whether the invention is particularly defined and whether someone of skill in the art would understand the invention and be able to both make and use the invention. In essence, the inquiry is one of a totality of circumstances.
The question of whether a term is defined adequately is really a legal question, so the views and opinions of those who are not well versed in the law are hardly probative. Inventors invent and patent attorneys describe those inventions to satisfy the legal requirements. If inventors could describe their inventions to meet the legal requirements they wouldn’t need patent attorneys, but we all know that inventors who represent themselves make numerous errors and always obtain far more narrow protection than they would have been entitled to receive. They just don’t understand the law well enough and are not qualified to offer opinions on matters of law.
Generally speaking, the Manual of Patent Examining Procedures explains that an applicant is entitled to be his or her own lexicographer, giving their ordinary and customary meaning by clearly setting forth a definition of the term. This can allow the applicant to even give meanings to terms that are somewhat different from the ordinary and customary meaning(s), although you can’t define terms so that they are diametrically opposite to their ordinary meaning. See e.g. MPEP 2111.01. So you couldn’t say “when I say ‘up’ I mean ‘down’ and when I say ‘down’ I mean ‘up’.” This up/down example is a favorite example of John White when he lectures in the PLI Patent Bar Review Course.
One of the seminal cases dealing with defining terms in a patent application is the Federal Circuit’s decision in Phillips v. AWH Corporation. Beginning with the Phillips ruling the Federal Circuit ushered in a new era of clarity in so far as interpreting patent claims is concerned. Remarkable is the fact that the Federal Circuit was able to do so without any monumental sifts in the fundamental core principles of patent law. In fact, the decision discussed at length tried and true principles of claim construction, and seems to have even been able to come up with an end result that makes sense and can be applied evenly by district courts.
It is not overstating the matter to say that to both Phillips and AWH Corporation the entire case rested upon the meaning of the term “baffle.” For the rest of us the thing that made this case noteworthy was the hope that the entire court sitting as one might be able to make some sense out of the hopelessly conflicting precedent surrounding the appropriate use of the specification, dictionaries and treatises when engaging in the hardly scientific analysis of construing claims.
As a result of what can only be characterized as confusing and conflicting precedent relating to the appropriate use of extrinsic evidence, the entire Federal Circuit decided to rehear Phillips v. AWH Corporation case en banc in order to resolve issues concerning the construction of patent claims. In what turned out to be a rather lengthy decision the Federal Circuit, apparently to make sure that the confusing nature of the law was properly clarified, explained the fundamental principles associated with interpreting patent claims, from the very beginning. Those looking for a primer on the issue should really read the entire decision.
To some extent, the experience of reading the decision was akin to asking someone “how was your day” and the answer beginning with “I woke up at 5:30am and then showered and brushed my teeth …” In defense of the Federal Circuit, however, certain lines of cases had so confused what should have been easy to understand, well-established law that starting at the beginning was not a half-bad idea. Then, just as this page turner got to the point where it was starting to get good it ended in a quick, sensible decision. Good for patent law, bad for commentators.
Rather than dance around the issue of erroneous previous decision as so many courts so often do, the Federal Circuit acknowledged that some of its previous decisions have suggested an approach to claim construction whereby greater emphasis was given to dictionary definitions of claim terms and a less prominent role given to the specification and the prosecution history. The Federal Circuit then identified Texas Digital Systems, Inc. v. Telegnix (2002) as the leading case in this now defunct line and summarily executed it in an Terminator kind of way, minus of course any of the excitement.
The Texas Digital Systems court had determined that it was improper to consult the written description and prosecution history as a threshold step in the claim construction process, before any effort is made to discern the ordinary and customary meanings attributed to the words themselves. The fact that this so clearly deviated from accepted reasoning didn’t seem to matter at the time, but sanity once again prevailed. After all, if the patentee is to be his or her own lexicographer and that the patent is to be written for those skilled in the art, shouldn’t we first read the entire patent file, including the claims, specification and the prosecution history?
The Federal Circuit was not, however, ready to completely throw the Texas Digital court under the bus. The Phillips decision went to lengths to empathize with what the Texas Digital court was trying to do, which was prevent the importation of limitations from the specification into the claims. Notwithstanding this olive branch, the Phillips decision clearly explains that the methodology adopted by the Texas Digital court simply placed too much reliance on extrinsic sources such as dictionaries, treatises, and encyclopedias and too little on intrinsic sources, in particular the specification and prosecution history.
After dismissing the Texas Digital line of cases the Federal Circuit congratulated the decision in Vitronics Corp. v. Conceptronic, Inc. (1996) as striking the appropriate methodology for claim construction. The Federal Circuit recognized in Vitronics, there is no magic formula for conducting claim construction. A district court is not 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.
As a result of the Phillips case and more recent decisions, dictionaries and treatises will still be able to be used in interpreting claims, but intrinsic evidence, namely the claims, the specification and the prosecution history, are of primary importance. The focus must always be on what one skilled in the art would understand, which is certainly in line with other patent law requirements, particularly the requirements set forth in 35 U.S.C. 112.
Notwithstanding, the focus on one of skill in the art does not mean that inventors or those skilled in the art are thrown into the deep end as they struggle to understand the meaning of the terms used. Claim construction is a question of law that requires careful understanding of the many nuanced legal rules. The fact that one of skill in the art, or even the inventor, cannot articulate the meaning of a term used by a patent attorney in context does not render a claim invalid.