Claim Construction

Petition for rehearing en banc is granted in action in which appellate panel construed term “baffle,” in claims directed to impact-resistant building modules, as limited to modules providing impact or projectile resistance oriented at angles other than 90 degrees; parties are invited to submit briefs directed to seven very important questions concerning a claim construction.  The seven questions are as follows:

1.         Is the public notice function of patent claims better served by referencing primarily to technical and general purpose dictionaries and similar sources to interpret a claim term or by looking primarily to the patentee’s use of the term in the specification?  If both sources are to be consulted, in what order?

2.         If dictionaries should serve as the primary source for claim interpretation, should the specification limit the full scope of claim language (as defined by the dictionaries) only when the patentee has acted as his own lexicographer or when the specification reflects a clear disclaimer of claim scope?  If so, what language in the specification will satisfy those conditions?  What use should be made of general as opposed to technical dictionaries?  How does the concept of ordinary meaning apply if there are multiple dictionary definitions of the same term?  If the dictionary provides multiple potentially applicable definitions for a term, is it appropriate to look to the specification to determine what definition or definitions should apply?

3.         If the primary source for claim construction should be the specification, what use should be made of dictionaries?  Should the range of the ordinary meaning of claim language be limited to the scope of the invention disclosed in the specification, for example, when only a single embodiment is disclosed and no other indications of breadth are disclosed?

4.         Instead of viewing the claim construction methodologies in the majority and dissent of the now-vacated panel decision as alternative, conflicting approaches, should the two approaches be treated as complementary methodologies such that there is a dual restriction on claim scope, and patentee must satisfy both limiting methodologies in order to establish the claim coverage it seeks?

5.         When, if ever, should claim language be narrowly construed for the sole purpose of avoiding invalidity under, e.g., 35 U.S.C. §§ 102, 103 and 112?

6.         What role should prosecution history and expert testimony by one of ordinary skill in the art play in determining the meaning of the disputed claim terms?

7.         Consistent with the Supreme Court’s decision in Markman v. Westview Instruments, Inc., 517 U.S. 370, 134 L. Ed. 2d 577, 116 S. Ct. (1996) and our en banc decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed Cir. 1998), is it appropriate for this court to accord any deference to any aspect of trial court claim construction rulings?  If so, on what aspects, in what circumstances, and to what extent?

In a very unusual procedure, the Federal Circuit requested that many major intellectual property organizations provide amicus briefs setting forth their respective positions in this integral case regarding claim construction.  (Phillips v. AWH Corp., 71 USPQ2d 1765, CA FC, 7/21/04).

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