THE USE OF EXTRINSIC EVIDENCE FOR CLAIM CONSTRUCTION Did Phillips Remove Extrinsic Evidence from the Analysis?

1. THE USE OF EXTRINSIC EVIDENCE FOR CLAIM CONSTRUCTIONDid Phillips Remove Extrinsic Evidence from the Analysis? Bruce C. Haas New York, NY

2. Use of Extrinsic Evidence Before Phillips • Dictionaries Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d. 1243, 1251 (Fed. Cir. 1998); Rexnord Corp v. Laitram Corp., 274 F.3d 1336, 1334 (Fed. Cir. 2001) • Expert Evidence Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298(Fed. Cir. 1998) • Treatises and Textbooks Glaxo Wellcome Inc. v. Andrx Pharms., Inc., 344 F.3d 1226, 1229 (Fed. Cir. 2003) • Inventor Testimony Kolmes v. World Elastic Corp., 1998 U.S. App. LEXIS 9407, 11 (Fed. Cir. May 6, 1998)

3. Intrinsic Evidence • Claim language • Specification • File history Phillips has made it clear that claim terms should be construed based upon intrinsic evidence whenever possible.

4. To properly construe a claim term, a Court must first look to the text of the patent claim: • “It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention . . .’” Phillips v. AWH Corporation, 415 F.3d. 1303, 1312 (Fed. Cir. 2005) (en banc). • A court must look to the words of the claims themselves . . . to define the scope of a patented invention. Markman v. Westview Instruments, Inc. 52 F.3d 967, 979-81 (Fed. Cir 1995) (en banc). • When the meaning of a disputed term is clear from the text of the claim, that meaning should control absent a clear and unambiguous disclaimer. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 2006 U.S. App. Lexis 19799 (Fed. Cir. Aug. 3, 2006).

5. “Claim construction must begin with the words of the claim themselves.” Id. Therefore, a court “must look at the ordinary meaning of the words in the context of the written description and the prosecution history.” Phillips at 1312 (citing Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005)). • “The ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention” (effective filing date). Phillips at 1313 (citing Innova/Pure Water, Inc. v. Safari Water Filtration System, Inc., 381 F.3d. 1111 (Fed. Cir. 2004)).

6. How does the court determine a particular term’s meaning to a person of ordinary skill? • Learned Treatises • Technical Dictionaries • Expert Testimony • Often the meaning of claim term is clear to a lay judge—if so, that meaning should be used. See Phillips at 1314. • If the meaning is not quite so clear—what does a court look to? • The Specification • The File Wrapper • Dictionaries

7. The patent specification is the next best source after the claim itself: • Specification may define the term. • Specification may provide examples. • Specification may reveal prior art. • The Background of the Invention may provide helpful information.

8. The file wrapper is less reliable than the claim language and the specification: • The file wrapper may define the term. • The file wrapper may reveal a disclaimer. • The file wrapper may reveal how the examiner or inventor understood the term.

9. Phillips emphasized the importance of intrinsic evidence, but also authorized district courts to rely on extrinsic evidence. Extrinsic evidence is, however, less significant than the intrinsic record. Phillips at 1317. • The Federal Circuit still views extrinsic evidence as being less reliable than the patent, and its prosecution history, in determining how to construe claim terms. Phillips at 1317 (citing C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)). • Undue reliance on extrinsic evidence poses the risk that it will be used to change the meaning of claims in derogation of the indisputable public records and undermine the public notice function of patents.

10. A clear and unambiguous disclaimer during patent prosecution should control. • Such a disclaimer provides direction to the court in construing claim terms, as the term should not be defined inconsistently with the disclaimer. • Disclaimer case law: • “The prosecution history (or file wrapper) limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance.” • Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452, (Fed. Cir. 1985)

11. Representations made during prosecution must be unambiguous and contain clear disavowals. • See Aquatex Industries Inc. v. Techniche Solutions, 419 F.3d 1374, 1381 (Fed. Cir. 2005) • “[C]laim terms take on their ordinary and accustomed meanings unless the patentee demonstrated an intent to deviate from the ordinary and accustomed meaning . . . by redefining the term or by characterizing the invention in the intrinsic record using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” • Teleflex Inc. v. Fisoca North America Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002)

12. Federal Circuit Decisions Since Phillips That Rely on Extrinsic Evidence • Dictionaries • The Federal Circuit in the en banc Phillips decision states that in some circumstances, general purpose dictionaries may still be helpful. • Cases decided after Phillips where dictionaries were considered in construing claim terms: • Paymaster Techs., Inc. v. United States, 2006 U.S. App. LEXIS 11325, 14-15 (Fed. Cir. May 4, 2006) (Determining that a dictionary definition “strengthens [the] distinction between ‘to’ and ‘through’,” the Court upheld the Trial Court’s construction.)

13. Federal Circuit Decisions Since Phillips That Rely on Extrinsic Evidence – cont’d • Dictionaries – cont’d • Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 13-15 (Fed. Cir. 2006) (The appellate court disagreed with the trial court’s definition of “gap” derived from Webster's II New Riverside University Dictionary. Yet the appellate court relied on a dictionary definition of “annular” formulated in Int'l Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1372-73 (Fed. Cir. 2004), which cited Webster's Third New International Dictionary 88 (1966).)

14. Federal Circuit Decisions Since Phillips That Rely on Extrinsic Evidence – cont’d • Dictionaries – cont’d • Terlep v. Brinkmann Corp., 418 F.3d 1379, 1384 (Fed. Cir. 2005) (Concluding that the district court correctly defined the term “clear”, the court used a dictionary definition of "clear" as "giving free passage to light or to the sight: easily seen through: not cloudy, turbid, or opaque," to confirm what was in the written description and prosecution history.) • Old Town Canoe Co. v. Confluence Holdings Corp., 448 F.3d 1309, 1316 (Fed. Cir. 2006) (The court determined that the use of a dictionary definition by the district court to define “coalesce” and “complete” was not improper.)

15. Federal Circuit Decisions Since Phillips That Rely on Extrinsic Evidence – cont’d • Dictionaries – cont’d • Atofina v. Great Lakes Chem Corp., 441 F.3d 991 (Fed. Cir. 2006) (“Because dictionaries, and especially technical dictionaries, endeavor to collect the accepted meanings of terms used in various fields of science and technology, those resources have been recognized as among the many tools that can assist the court in determining the meaning of particular terminology to that of skill in the art of the invention.”)

16. Federal Circuit Decisions Since Phillips That Rely on Extrinsic Evidence – cont’d • Learned Treatises/Textbooks • The Federal Circuit in the en banc Phillips decision states that a court can look to “those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean.” • Cases decided after Phillips where learned treatises/textbooks were considered in construing claim terms: • Pfizer, Inc. v. Teva Pharms.USA, Inc., 429 F.3d 1364, 1374-75 (Fed. Cir. 2005) (The court agreed with the district court’s determination that “one of skill in the art would understand ‘saccharides’ to encompass more than sugars,” and would include “polysaccharides”. Extrinsic evidence in the form of technical dictionaries, treatises, and expert testimony were used to support this conclusion drawn from the '450 patent.)

17. Federal Circuit Decisions Since Phillips That Rely on Extrinsic Evidence – cont’d • Learned Treatises/Textbooks – cont’d • AquaTex Indus. v. Techniche Solutions, 419 F.3d 1374, 1381-82 (Fed. Cir. 2005) (“Consistent interpretations in the industry publications” confirm “one of ordinary skill in the textile manufacturing industry would understand that commercial ‘fiberfill batting material’ is made of synthetic or polyester fibers.”) • Nystrom v. Trex Co., 424 F.3d 1136 (Fed. Cir. 2005) (“In discerning the meaning of claim terms, resort to dictionaries and treatises also may be helpful.”)

18. Federal Circuit Decisions Since Phillips That Rely on Extrinsic Evidence – cont’d • Expert Testimony • The Federal Circuit in the en banc Phillips decision states that expert testimony can still be useful to a court interpreting patent claims for a variety of purposes including: • Understanding how the invention works • Establishing how a particular term has a specific meaning in the pertinent technical field • In contrast, Phillips warns that expert testimony that is clearly at odds with the claim construction mandated by the claims themselves should be discounted.

19. Federal Circuit Decisions Since Phillips That Rely on Extrinsic Evidence – cont’d • Expert Testimony – cont’d • Also, expert testimony is usually generated at the time of and for the purpose of litigation, “and thus can suffer from bias that is not present in intrinsic evidence.” Phillips at 1318. • Cases decided after Phillips where expert testimony was considered in construing claim terms: • Conoco, Inc. v. Energy and Envtl. Int’l, LC, 2006 U.S. App. LEXIS 21036 (Fed. Cir. Aug. 17, 2006) (The court considered expert testimony in concluding that the ordinary meaning of "stable nonagglomerating suspension," defined by the district court as “not agglomerating at the time that the [substance] is introduced into the pipeline,” was not in error.)

20. Federal Circuit Decisions Since Phillips That Rely on Extrinsic Evidence – cont’d • Expert Testimony – cont’d • Serio – U.S. Indus v. Plastic Recovery Techs. Corp., 2006 U.S. App. LEXIS 20474 (Fed. Cir. Aug. 10, 2006) (Since it was weighed against intrinsic evidence, the district court correctly used expert testimony “to provide background on the technology at issue, to explain how an invention works, to ensure that the court's understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field.” Citing Phillips, at 1318.)

21. Federal Circuit Decisions Since Phillips That Rely on Extrinsic Evidence – cont’d • Expert Testimony – cont’d • Varco, L.P. v. Pason Sys. USA Corp., 436 F.3d 1368, 1375 (Fed. Cir. 2006) (Expert testimony confirmed, “that the relaying step is not limited to pneumatically operated valves.” As a result, the district court's interpretation of the relaying step was considered “unduly narrow”.) • Global Maintech Corp. v. I/O Concepts, Inc., 2006 U.S. App. LEXIS 11017, 11-12 (Fed. Cir. May 2, 2006) (Fed Cir found the district court made “no error” in supporting its claim construction with expert testimony, which “expressly defined a ‘heterogenous computer system’ as one that simultaneously controls multiple computers that use different operating systems.”)

22. Federal Circuit Decisions Since Phillips That Rely on Extrinsic Evidence – cont’d • Expert Testimony – cont’d • Snypro II Licensing, S.A.R.L. v. T-Mobile USA Inc., 450 F.3d 1350 (Fed. Cir. 2006) (“This court has recognized that extrinsic evidence and expert testimony can help to educate the court concerning the invention and the knowledge of persons of skill in the field of the invention.”)

23. Federal Circuit Decisions Since Phillips That Rely on Extrinsic Evidence – cont’d • Inventor Testimony • The Federal Court in the en banc Phillips decision states that inventor testimony can still be useful to a court interpreting patent claims. • Warner-Lambert Co. v. Teva Pharms. USA, Inc., 418 F.3d 1326, 1347-48 (Fed. Cir. 2005) (Evaluating the district court’s use of inventor testimony, the appellate court found there was no error in concluding that “the Warner-Lambert inventors were concerned only with carbonate ions, had no intention of claiming bicarbonates, and consequently had no intent to deceive the PTO in not disclosing Vasotec[R].”)

24. Practical Approaches • Claim term meaning must be consistent with scope of invention. • Ordinary and customary meaning usually prevails. • Experts can help explain how a person of ordinary skill understands a disputed term. • Dictionaries can help a court understand how a person of ordinary skill understands a disputed term. • Textbooks, treatises and technical dictionaries can help a court understand how a person of ordinary skill understands a disputed term. • Inventor testimony can help explain how a person of ordinary skill understands a disputed term.

25. Has Phillips clarified how courts should construe claims? • Is extrinsic evidence still useful in construing disputed terms?